DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, claims 23-33 in the reply filed on 17 July 2026 is acknowledged. The traversal is on the ground(s) that the European examiner did not require restriction, and that the review of all claims would not pose an undue burden. This is not found persuasive because the actions of the European patent office are not dispositive. Further, lack of undue burden is not a requirement for restriction under the unity of invention standard.
The requirement is still deemed proper and is therefore made FINAL.
Claims 34-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 17 July 2026.
Claim Objections
Claims 23-33 are objected to because of the following informalities: “thirdpolyisocyanate” in line 10 requires a space. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 23-26, 28, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 2341110 A1 (“Itoya”).
As to claim 23-26 and 28, Itoya teaches a polyurethane synthesis by reacting IPDI, isophorone diisocyanate, which is an aliphatic polyisocyanate having NCO functionality of 2 as required by claims 23 and 25, with DMPA, dimethyolpropionic acid, an aliphatic polyol having OH functionality of 2 and one COOH group and average molecular weight below 500 g/mol as required by claims 23 and 26, to form a reaction product, with a reaction index of 0.760 as required by claims 23 and 24 (Itoya, para. 0071, 0074, showing calculation of reaction index in same manner as recited for claim 23), and therefore teaches step (i) producing first composition C1.
Itoya teaches reacting this composition with poly(oxatetramethylene)glycol, a polyether polyol carrying no COOH groups (para. 0087) as required by claims 23 and 28. The resulting product is a polyurethane having COOH groups, which is subsequently formed into an aqueous composition (para. 0087). Step (iii) is optional.
As to claim 31, in the first step of Itoya, it is calculated that 1 mol OH is obtained from dimethyolpropionic acid (para. 0071), and in the second step, 243 g of poly(tetramethylene)glycol havin OH equivalent weight of 173 is added (para. 0087), and thus the ratio of hydroxyl groups of BX to hydroxyl groups of B2 is calculated as 1.4/1, which Is within the recited range.
Claim(s) 23-28 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2007/0265389 (“Dorr”).
As to claims 23-26, Dorr teaches a process for preparing an aqueous dispersion of a polyurethane (abstract). Example 3 of Dorr teaches a first step or reacting reacting a polyisocyanate with a hydroxycarboxylic acid, preferably dimethylolpropionic acid, and optionally other polyols (paras. 0040-0043), which meets step (i) forming a first composition C1 as recited.
Dorr further teaches reacting this composition with at least one second polyol and optionally polyisocyanates (paras. 0043-0047), which meets step (ii) to form second composition C2. Dorr further teaches converting by reacting with a polyisocyanate (paras. 0047-0049), thus forming composition C3.
Dorr teaches the resulting polyurethane is carboxyl functional (para. 0037).
Example 3 of Dorr (para. 0106) teaches as a first step reacting 40.2 g dimethyolpropionic acid, an aliphatic polyol having OH functionality of 2 and one COOH group and a number average molecular weight below 500 g/mol as required by claim 26, with 44.21 g isophorone diisocyanate, a polyisocyanate as required by claim 1, having a functionality of 2 as required by claim 25. It is calculated that the ratio of initial NCO groups to OH groups of this reaction mixture is 0.6667. Dorr teaches the first reaction goes to completion, such that no NCO groups are detected, such that the reaction rate is calculated as 1.000. As such, the reaction index of the first step of Example 3 is calculated as 0.6667, which is within the range of claims 23 and 24.
As to claims 27 and 28, example 3 of Dorr teaches a second polyol B2 a polyester of adipic acid and 1,6-hexanediol (para. 0106), which would be expected to provide polyesters having OH functionality of 2, no COOH group, and molecular weight of 840.
As to claim 33, example 3 of Dorr teaches three step synthesis, where the recited ratio is calculated as 1/1.47, which is within the recited range.
Claim(s) 29 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2007/0265389 (“Dorr”) as evidenced by US 2007/0004856 (“Mazanek”) and US 2014/0295724 (“Sworen”).
The second references are used to show that a recited limitation is inherent in the primary reference. See MPEP 2131.01.
As to claim 29, the discussion of Dorr with respect to claim 23 is incorporated by reference. Dorr teaches a third step of reacting with a polyisocyanate, and in example 3 uses Desmodur Z 4470 M/X (para. 0106), which is an aliphatic polyisocyanate (para. 0099). While the functionality is not explicitly stated by Dorr, it is known that this material is a trimer of isophorone diisocyanate, which would be expected to have an isocyanate functionality of 3, as evidenced by Mazanek, para. 0072, and Sworen, paras. 0061-0062.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0265389 (“Dorr”).
As to claim 30, the discussion of Dorr with respect to claim 23 is incorporated by reference. Example 3 of Dorr does not exemplify the recited ratio in step 1. However, Dorr generally teaches throughout the process of maintaining a ratio of isocyanate to hydroxyl group of 0.5 to 5:1 (para. 0050), which includes values within the recited range, in particular 0.9 to 0.94, which would provide the recited reaction ratio when reacted fully. As such, modifying the method of Dorr, including in the recited NCO/OH ratio and reaction index, is an obvious modification within the ranges suggested by Dorr.
Allowable Subject Matter
Claim 32 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, including Dorr, does not teach or suggest the recited relationship between initial NCO content in step 1 and NCO content in a third step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
