Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Indefiniteness Rejection
2. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 5 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 5, to the extent disclosed and claimed, the examiner has been unable to determine the metes and bounds of polycarboxylates further characterized by the ether language.
With respect to claim 6, applicant has failed to define the asterisk symbol at each end of the claimed structural units and has further failed to define variable M, appearing within structural unit S1 and the definition of variable Rv. Furthermore, the language denoted by “especially” and “preferably” renders the claim indefinite, because it is unclear if or to what extent this language further modifies the corresponding language not denoted by “especially” or “preferably”.
Prior Art Rejection
4. 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.
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.
5. Claims 1-3, 7-11, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burckhardt (US 2010/0015450 A1).
Burckhardt discloses a step-wise method, wherein an isocyanate functional prepolymer composition is firstly produced by reacting a polyol with a polyisocyanate, and secondly, the prepolymer is reacted with an aldimine in the presence of water in order thereby to obtain a prepolymer composition having a low content of monomeric polyisocyanate. Within Example 1, 50 parts of a prepolymer, derived from the reaction of MDI and a crystalline polyester polyol are provided (meeting instant claims 2 and 10) and heated to 100°C, then 7.57 parts (15% relative to the prepolymer, meeting instant claim 7) of a dialdimine A-1, and 0.19 part (0.38% relative to the prepolymer, meeting instant claim 8; 2.48% relative to the dialdimine, meeting instant claim 9) of water, and 0.2 part of an additive (meeting instant claim 11) are reacted. The resulting composition of Example 1 has a residual content of monomeric MDI of 0.23% (see Table 2), meeting instant claim 3. Regarding the instantly claimed polycarboxylate, to the extent claimed, since the dialdimine of Example 1 has two lauryl ester groups, it constitutes a polycarboxylate. Applicant’s attention is further drawn to the disclosures within paragraphs [0153]-[0157], [0163]-[0179].
6. Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Burckhardt (US 2010/0015450 A1).
Burckhardt discloses a step-wise method, wherein an isocyanate functional prepolymer composition is firstly produced by reacting a polyol with a polyisocyanate, and secondly, the prepolymer is reacted with an aldimine in the presence of water in order thereby to obtain a prepolymer composition having a low content of monomeric polyisocyanate. Within Example 1, 50 parts of a prepolymer, derived from the reaction of MDI and a crystalline polyester polyol are provided and heated to 100°C, then 7.57 parts (15% relative to the prepolymer) of a dialdimine A-1, and 0.19 part (0.38% relative to the prepolymer; 2.48% relative to the dialdimine) of water, and 0.2 part of an additive are reacted. The resulting composition of Example 1 has a residual content of monomeric MDI of 0.23% (see Table 2). Regarding the instantly claimed polycarboxylate, to the extent claimed, since the dialdimine of Example 1 has two lauryl ester groups, it constitutes a polycarboxylate. Applicant’s attention is further drawn to the disclosures within paragraphs [0153]-[0157], [0163]-[0179].
7. Regarding claim 4, though the reference is largely silent regarding the claimed reaction time, the position is taken that determining an optimal or suitable reaction time frame, such as a time corresponding to that claimed, would have been obvious and well within the abilities of the to the skilled artisan, given that the objective of decreasing excess isocyanate monomer is common to both the reference and the instant invention.
8. Regarding claim 12, though the reference discloses within paragraph [0170] that catalysts may be employed to accelerate the reaction of isocyanate groups, the reference fails to disclose that the catalyst is added prior to step b); however, the position is taken in light of this disclosure and the disclosed reaction of polyisocyanates and polyols to produce the prepolymer that one would have been motivated to incorporate such catalysts prior to step b), so as to promote initial reaction of the isocyanates to form the prepolymer.
Allowable Subject Matter
9. Claims 5 and 6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The prior art fails to disclose polymer P of claim 6, and to the extent the examiner has been able to interpret the polycarboxylate ether of claim 5, the prior art is silent with respect to a polycarboxylate having ether groups used as claimed.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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