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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because the drawings are blurry and illegible.. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claims 8 and 9 use the term “backbone” which is not found in the as-filed specification, the term “skeleton” is used instead. In claim 9 the term “polyalkoxylene” is not in the as-filed specification, the term “polyalkylene” is used in ¶[0055] to describe the polyether skeleton; although this is factually incorrect, as polyether polyols have a polyalkylene oxide or polyoxyalkylene backbone/skeleton.
Claim Rejections - 35 USC § 102
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.
Claims 1, 10, 12-13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanai et al US20190367662A1.
Regarding claims 1, and 13, Kanai teaches polyurethane resin compositions comprising a hydroxyl group containing compound and an isocyanate compound, abstract. Specifically, Kanai teaches in the examples that a castor oil polyol URIC-57 (A2) and castor oil, Castor oil D, (A3) ¶¶[0056-0058], are used with polyisocyanates such as polymeric MDI, (B1) ¶[0060], and inorganic fillers such as aluminum hydroxide and alumina, (D1-D4) ¶¶[0072-0079]. For instance, see examples 2 and 3 table 1 ¶[0093], where the castor oil polyol is the only polyol for example 2 and the castor oil is the only polyol in example 3. Castor oil is a polyol with hydrocarbon groups containing more than three carbon atoms at its terminals, shown below, and satisfies the limitation that this type of polyol is present in an amount of 50 wt.% or more relative to the total weight of the polyols in the composition.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Terminal hydrocarbons)]
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Regarding claim 10, Kanai teaches castor oil D is one of the components in the examples, ¶[0058], the molecular weight of castor oil is 933.43 g/mol which falls within the claimed range.
Regarding claim 12, Kanai teaches the compositions may further comprise plasticizers, ¶[0046] and see example 9 table 1 ¶[0093].
Regarding claim 16, Kanai teaches the composition is a sealant for electronic components which are high temperature environments, abstract, and teaches a sealed article, ¶[0017], such as an electronic component sealed with the composition ¶[0051], which is known to generate heat, and is why Kanai measures heat resistance of the compositions ¶¶[0084-0087].
Claims 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanai et al US20190367662A1 as evidenced by the Uric H Series Castor Oil based Polyol Datasheet.
Regarding claims 7-10, Kanai teaches the castor oil polyol Uric H-57 is used in the examples, ¶[0057] and table 1. The Uric Series Castor Oil based Polyol Datasheet describes H-57 as a polyether modified castor oil, table on page 3, which satisfies the polyether backbone and polyoxyalkylene backbone limitations. The castor oil portion of the polyol after transesterification with the polyether polyol contains the substituent of claim 7 where R is the hydrocarbon group with more than three carbons, see structure below. Applicant states that the hydrocarbon can have alkenyl groups and substituents, ¶[44] of the instant specification, of which the substituents are not limited, therefore the substituents allowed by applicant encompass the hydroxyl group coming off the hydrocarbon chain.
PNG
media_image2.png
200
400
media_image2.png
Greyscale
The molecular weight of H-57 is calculated as (56,100/100) X 3 = 1,683 g/mol which falls within the claimed range. This is calculated from the MW of KOH in mg divided by the OH value of H-57 found on page 3 of the datasheet which is in units of mg KOH/g; then it is multiplied by the functionality of H-57 found on page 3 of the datasheet, this results in the MW of the polyol.
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.
Claims 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kanai et al US20190367662A1.
Regarding claim 14, Kanai teaches the compositions comprising the claimed polyol component as explained above, and is shown in the examples as castor oil polyol and castor oil, ¶¶[0056-0058], are used with polyisocyanates such as polymeric MDI, (B1) ¶[0060], and inorganic fillers such as aluminum hydroxide and alumina, (D1-D4) ¶¶[0072-0079]. For instance, see examples 2 and 3 table 1 ¶[0093], where the castor oil polyol is the only polyol for example 2 and the castor oil is the only polyol in example 3. Kanai teaches in the preparation of the compositions that all the raw materials, excluding the isocyanate compound, are mixed together and then the isocyanate compound is added last and mixed, ¶[0083]. This is equivalent to a two-component system because the curing agent is added separately. The difference between Kanai and the claim is that the claim states the curing agent part also has filler. But because Kanai teaches including filler in the composition in any way and does not explicitly limit it to being mixed only with the polyol component, it would be obvious to the skilled artisan to divide up any non-reactive ingredients between the two reactive parts. It is common practice to divide non-reactive ingredients between the reactive components for the purposes of balancing mixing ratios or making similar the viscosities of each component.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate at least a portion of the filler into the polyisocyanate curing agent part and into the main part comprising the polyol because it is the distribution of a known component of the composition between the two parts which when mixed would do no more than produce the predictable result of a polyurethane resin.
Regarding claim 17, Kanai teaches the composition is a sealant for electronic components which are high temperature environments, abstract, and teaches a sealed article, ¶[0017], such as an electronic component sealed with the composition ¶[0051], which is known to generate heat, and is why Kanai measures heat resistance of the compositions ¶¶[0084-0087]. The sealed article will have the electronic component adjacent to the cured composition because the composition is in place over the component, sealing it for protection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5, 7-10, 12-13, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10-12, 14 of U.S. Patent No. 12359013. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented invention produces the claimed invention in the instant application.
The combination of claims 1 and 10 of ‘013 read on the instant claims 1 and 7. The difference being that the patent claims do not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, it would be obvious to combine claim 10 with claim 1 because claim 10 depends from claim 1 and is a variant thereof.
Claims 2-7, 11-12, and 14 of ‘013 further limit claim 1 in the same manner instant claims 3-5, 8-10, 12-13, and 16 further limit instant claim 1.
Claims 14 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 15 of U.S. Patent No. 12359013 as evidenced by Kanai et al US20190367662A1.
Claim 13 of ‘013 reads on instant claim 14 the difference being claim 13 recites a curing agent but does not recite a polyisocyanate, however, polyisocyanates are common crosslinkers for polymers bearing active hydrogens, as evidenced by Kanai, which discloses polyurethane compositions comprising castor oil polyols and polyisocyanate curing agents, abstract and ¶[0030].
Claim 13 does not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Reference claim 15 claims the same product produced from the two-component composition of claim 13, the same way instant claim 17 is to a product formed from the two-component system of instant claim 14.
Claims 1, 3-5, 7-9, 11-14, 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-8, 10, 15-20 of copending Application No. 18/283,574 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘574 produces the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Reference claim 1 reads on instant claim 1. The difference being that the reference claims do not specify the first polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the first polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Additionally, the instant claims are silent as to the presence of a polyol with no terminal hydrocarbon group or the use of filler in a quantity of 70% or more but, nevertheless embraces these aspects given (i) that the word “comprising” is used (and thus other components such as a polyol with no terminal hydrocarbon group may be present) and (ii) the filler may be present in any quantity in the instant claims.
Reference claim 2 further limits claim 1 the same way instant claims 3 and 4 limit instant claim 1.
Reference claims 3, 4, 6, 7, 8, 10, 16, 17, and 19 further limit in the same way instant claims 5, 6, 7, 8, 9, 11, 12, 13, and 16 further limit claim 1.
Reference claim 18 reads on instant claim 14. The difference being that the reference claims do not specify the first polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the first polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Reference claim 20 reads on the product of instant claim 17.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 14 of copending Application No. 18/283,393 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘393 produces the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The combination of reference claims 1, 5, and 11 read on the instant claims 1 and 6. The difference being that the reference claims do not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore it would be obvious to combine reference claims 5 and 11 with claim 1 because they depend from claim 1 and are variants thereof.
Reference claims 2, 3, 4, 6, 7, 8, 9, 10, 12, and 14 further limit claim 1 in the same way instant claims 3, 4, 5, 7, 8, 9, 10, 11, 12, and 13 further limit claim 1.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-9, 11-13, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 11-13, 15 of copending Application No. 18/283,113 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘113 produces the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The combination of reference claims 1 and 11 read on the instant claims 1 and 8. The difference being that the reference claims do not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore it would be obvious to combine reference claim 11 with claim 1 because it depends from claim 1 and is a variant thereof.
Reference claims 2, 3, 4, 5, 6, 7, 8, 12, 13, and 15 further limit claim 1 the same way instant claims 3, 4, 5, 6, 7, 9, 11, 12, 13 and 16 further limit instant claim 1.
This is a provisional nonstatutory double patenting rejection.
Claims 14 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 16 of copending Application No. 18/283,113 as evidenced by Kanai et al US20190367662A1.
Reference claim 14 reads on instant claim 14, the difference being it recites a curing agent but does not recite a polyisocyanate, however, polyisocyanates are common crosslinkers for polymers bearing active hydrogens, as evidenced by Kanai, which discloses polyurethane compositions comprising castor oil polyols and polyisocyanate curing agents, abstract and ¶[0030].
Reference claim 14 does not specify the first polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the first polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Reference claim 16 claims the same product produced from the two-component composition of claim 14, the same way instant claim 17 is to a product formed from the two-component system of instant claim 14.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-5, 7-13, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 14-16, 18 of copending Application No. 18/276,358 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘358 produces the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The combination of reference claims 1, 4, and 14 read on instant claims 1 and 4. The difference being that the reference claims do not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore it would be obvious to combine reference claims 4 and 14 with claim 1 because they depend from claim 1 and are variants thereof.
Reference claims 2, 3, 5, 6, 7, 8, 9, 15, 16, and 18 further limit claim 1 the same way instant claims 3, 5, 7, 8, 9, 10, 11, 12, 13, and 16 further limit instant claim 1.
This is a provisional nonstatutory double patenting rejection.
Claims 14 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 and 19 of copending Application No. 18/276,358 as evidenced by Kanai et al US20190367662A1.
Reference claim 17 reads on instant claim 14, the difference being it recites a curing agent but does not recite a polyisocyanate, however, polyisocyanates are common crosslinkers for polymers bearing active hydrogens, as evidenced by Kanai, which discloses polyurethane compositions comprising castor oil polyols and polyisocyanate curing agents, abstract and ¶[0030].
Reference claim 17 does not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Reference claim 19 claims the same product produced from the two-component composition of claim 17, the same way instant claim 17 is to a product formed from the two-component system of instant claim 14.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3-6, 7-13, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7-10, 14-16, 18 of copending Application No. 18/276,352 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘352 produces the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The combination of reference claims 1 and 14 read on instant claims 1, 3, and 7. The difference being that the reference claims do not specify the first polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the first polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore it would be obvious to combine reference claim 14 with claim 1 because it depends from claim 1 and is a variant thereof.
Reference claims 3, 4, 5, 7,8, 9, 10, 15, 16, 18 further limit claim 1 the same way instant claims 4, 5, 6, 8, 9, 10, 11, 12, 13, 16 further limit instant claim 1.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/276,352 as evidenced by Kanai et al US20190367662A1.
Reference claim 17 reads on instant claim 14, the difference being it recites a curing agent but does not recite a polyisocyanate, however, polyisocyanates are common crosslinkers for polymers bearing active hydrogens, as evidenced by Kanai, which discloses polyurethane compositions comprising castor oil polyols and polyisocyanate curing agents, abstract and ¶[0030].
Reference claim 17 does not specify the polyol is 50 wt.% or greater in the polyol component but because it does not specify any percent, the polyol can be present in any amount with respect to the total polyols present which encompasses the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 2-6, 11, and 15 are 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: Kanai does not teach, suggest, or disclose adding a mono-hydroxy functional alcohol to the composition, all of the alcohols mentioned are poly-functional ¶[0019] and the plasticizers listed in ¶[0046] are not mono-hydroxy functional. There would be no reason for adding a mono functional alcohol to the composition.
Regarding claims 2 and 15, the claimed equivalent ratio for OH/NCO of 80-300 is very high with excess OH groups. Kanai teaches the examples have a molar ratio NCO/OH of 1.1 ¶[0083], and in the broader disclosure the ratio may be as low as 0.6, ¶[0038]. But based on the hydroxyl values of the H-57 polyol, the castor oil from ITO Oil Chemical (see ITO refined castor oil catalog), and the NCO content of the exemplified isocyanates Millionate MR-200, Lupranat MM103, and Duranate TLA-100 (see manufacturer datasheets), the calculated OH/NCO equivalent ratio is still well below the claimed 80-300 range and it would not be obvious to have this amount of hydroxyl groups in excess. For example the equivalent weight of the H-57 polyol is 56,100/100 = 561 g/eq. The equivalent weight of the Millionate MR-200 is 4202/30.5 = 138 g/eq. For a 1:1 ratio it is OH/NCO = 561/138 = 4.06. For the lowest amount of NCO, 0.6:1, it is 561/ (0.6*138) = 6.78.
Claims 3-6 directed to the physical properties are allowable because Kanai does not teach or suggest what the adhesive strength, durometer, or curvature radius would be for the compositions, nor is it inherent because, while the curable composition of Kanai reads on the claimed composition, it does not use the same components as in applicant’s examples. It would also not be immediately obvious to the skilled artisan because the composition of Kanai is a sealant for electronics and therefore is more likely to require a higher adhesive strength. The durometer and curvature (related to flexibility) of common polyurethane sealants are available in a broad range of hardnesses and resulting flexibilities, therefore there is no obvious reason to select the claimed durometer and curvature radius.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
Prosecution Insights