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 .
Response to Amendment
Applicant’s claim amendments and remarks filed April 27, 2026 are entered and have been fully considered. Applicant has amended claim 15 to overcome the 101 and 112b rejections therefore they are withdrawn.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Europe on 6/08/2022. It is noted, however, that applicant has not filed a certified copy of the EP22177717 application as required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract is objected to because it includes the implied phrase “The present invention relates to” in line 3.
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 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 1-2, 4, 6-7, 10-14, 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kelso et al, US4439593.
Regarding claims 1-2, 4, 6, 10-14, 16, Kelso teaches a one-component system comprising the polyurethane composition in example 5, Col. 13 line 25, where a prepolymer is made by reacting polypropylene glycol with a molecular weight of 1,000 g/mol, diethylene glycol (reads on claims 1, 6, 10, 11) and trimethylolpropane with a mixture of 2,4- and 2,6-diisocyanatotoluene (reads on claims 1, 2, and 4). The remaining isocyanate groups are blocked with diethyl malonate (reads on claims 12-13). Then this is mixed with bis-(4-amino-3-methyl-cyclohexyl)-methane, which reads on the diamine of claim 1, and is another name for the claimed diamine 4,4’-methylenebis(2-methylcyclohexanamine) of claim 14.
Kelso teaches the prepolymer process in Col. 8 lines 9-18, and teaches the diethyl malonate is for blocking the isocyanate groups, Col. 3 lines 45-46.
The process of making the polyurethane in example 5 anticipates the process of claim 16. Kelso teaches making the prepolymer based on the polypropylene glycol with a molecular weight of 1000 g/mol and the diisocyanate, where the unreacted NCO groups are blocked with diethyl malonate, and then mixing the prepolymer with a diamine, Col. 13 lines 25-49.
Regarding claim 7, Kelso teaches in example 5 that the prepolymer comprises 14.1 g DEG and 132.5 g PPG which totals 146.6 g. Therefore the PPG, which is the first diol, is 90.4 wt.% based on the total mass of the diols.
Regarding claim 15, this claim is directed to an intended use of the coating system and as the only required component is the system of claim 1, Kelso teaches claim 1 and therefore inherently satisfies the future intended use of the system as an artificial leather or leather coating. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Regarding claim 17, Kelso teaches a process wherein the polyurethane composition is coated onto a substrate (reads on carrier) and thermally cured, Col. 10 lines 42-55. Kelso does not state the process is for producing an artificial leather but insofar as Kelso discloses the application of anticipatory polyurethanes to a substrate, they will inherently be leather-like based on applicant’s meaning of artificial leather on page 1 lines 15-16 of the instant specification. Furthermore, Kelso teaches the coating is suitable for a variety of substrates, Col 10 line 52, which includes flexible substrates for leather-like material.
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 3, 5, 8, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kelso et al, US4439593.
Regarding claims 3 and 5, Kelso teaches the invention according to claim 1, explained above. Kelso does not use isophorone diisocyanate (IPDI) in example 5, but it is taught in the broader disclosure as 1-isocyanato-3,3,5-trimethyl-5-isocyanatomethyl cyclohexane, Col. 2 line 51-52, which is a cycloaliphatic diisocyanate. It is prima facie obvious to substitute one material for another to obtain predictable results when the materials fulfill the same use and function. “[I]t is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances.” In re Ruff 118 USPQ 343; In re Jezel 158 USPQ 99; “the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious.” In re Font, 213 USPQ 532.
Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the TDI in Kelso’s example 5 with IPDI to obtain another permutation of a blocked isocyanate stable under ambient conditions but capable of being de-blocked at more moderate temperatures (column 1, lines 43-47).
Regarding claim 8, Kelso teaches the invention according to claim 1, as explained above. Kelso does not use polytetramethylene ether glycol in example 5, but it is taught in the broader disclosure. Where Kelso describes the high molecular weight polyether polyols, it is disclosed that they can be made by the known reactions using starting compounds such as 1,4-butanediol and tetrahydrofuran, Col. 5 lines 31-36, both of which are known to produce PTMEG, also known as polyTHF, and therefore renders obvious the use of PTMEG for the polyurethane composition.
Therefore it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the PPG in Kelso’s example 5 with PTMEG to obtain another permutation of a blocked isocyanate stable under ambient conditions but capable of being de-blocked at more moderate temperatures.
Regarding claim 19, Kelso teaches the invention according to claim 1, as explained above. Kelso does not use polyoxypropylenediamine or 1,3-bis(aminomethyl)cyclohexane in example 5, but in the broader disclosure Kelso lists suitable polyamines such as polyoxypropylene amines, Col. 7 line 20, which reads on the claimed polyoxypropylenediamine.
Claims 1-8, 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Thoma et al, US4507413.
Regarding claims 1, 12-13, 16, Thoma teaches an aqueous polyurethane reactive coating composition comprising a blocked isocyanate prepolymer and a polyamine, abstract. The urethane prepolymer is derived from the reaction of polyisocyanates (Col. 5 lines 54-67) and straight or branched chain compounds with 2-4 reactive groups which is preferably selected from polyether polyols, with molecular weights of 400-10,000 g/mol, preferably 1,000-4,000 g/mol, which overlaps with the claimed range, Col. 4 lines 30-37. 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).
The blocking agent for the isocyanate prepolymer can be selected as diethyl malonate, Col. 6 line 34, which reads on claims 12 and 13.
Thoma also teaches the process of claim 16, producing the one-component aqueous dispersion by mixing the urethane prepolymer with blocked isocyanate groups with a polyamine or diamine crosslinker, see example 1 where the prepolymer is first made in 1.1, then mixed with a diamine crosslinker in 1.2 to create a top coating paste, Col. 10 lines 5-50.
The fact that Thoma discloses numerous types of reactive compounds and isocyanate blocking agents which can be suitably selected to form a blocked isocyanate prepolymer does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made a blocked isocyanate prepolymer with a polyether polyol because it is the preferred reactive compound and diethyl malonate as the blocking agent with the motivation of producing the predictable result of a permutation of the blocked isocyanate prepolymer for an aqueous leather coating as taught by Thoma.
Regarding claims 2-5, Thoma teaches the isocyanates for the prepolymer are aliphatic, cycloaliphatic, or aromatic diisocyanates such as hexamethylene diisocyanate (HDI), isophorone diisocyanate (IPDI), and toluene diisocyanate (TDI), Col. 5 lines 56-64 and Col. 6 line 13, which reads on the claimed isocyanates.
Regarding claims 6, 8, 10-11, Thoma teaches the prepolymer can be derived from one or more polyols, such as dihydric alcohols which are diols, and are derived from ethylene oxide, propylene oxide, butylene oxide or tetrahydrofuran, Col. 4 lines 29 and 44-50, of which, THF is used to make PTMEG and reads on claim 8. Low molecular weight diols can also be included, such as 1,4-butanediol, Col. 4 lines 62-66, which reads on claims 10-11.
Regarding claim 7, Thoma does not explicitely give a ratio of a first diol and second diol in the prepolymer, but in example 1.3, Col. 10 lines 54-60, the isocyanate prepolymer is produced from 4,000 g of a high molecular weight hydroxyl polyether and 275 g of a lower molecular weight hydroxyl polyether. The ratio of these two polyols is then 6.43% of the low molecular weight diol and 93.57% of the higher molecular weight polyol, which fall within the claimed ranges for the two diols.
Regarding claims 14 and 19, Thoma teaches the polyamines for the crosslinking agent in the aqueous dispersion are selected from 1,6-hexanediamine, and cycloaliphatic diamines of formula I, Col. 8 lines 18-30, which in formula I where R1 and R2 or R3 and R4 are methyl groups reads on 4,4’methylenebis(2-methylcyclohexanamine) of claim 14. Additionally, the diamine of formula III, Col. 8 line 52, is the structure for polyoxypropylenediamine of claim 19.
Regarding claims 15, 17-18, Thoma teaches the aqueous dispersion is for coating artificial leather, abstract and Col. 9 lines 19-25. The process for producing the artificial leather comprises applying the dispersion to a substrate (carrier) and heat curing in an oven, additionally the dispersion can be applied to leather as a top coat paste, Col. 9 lines 26-52 and 55. Also see the process of 2.2 Transfer coating of example 2 Col. 12 lines 44-56 where an artificial leather product is made with the aqueous dispersion containing the blocked isocyanate prepolymer and diamine.
Response to Arguments
Applicant’s arguments filed 4/27/2026 with respect to the 103 rejection over Irnich has been fully considered and is persuasive. The rejection over Irnich has been withdrawn because Irnich teaches the polyalkylene glycols have an Mn of 2,000-8,000 g/mol which is well above the claimed molecular weight range.
Applicant's arguments filed 4/27/2026 with respect to the rejection over Kelso have been fully considered but they are not persuasive.
In response to applicant’s argument that Kelso does not teach a one-component system comprising at least one di or polyol that is a polyalkylene glycol with a Mn of 950-1200 g/mol, examiner points to Kelso’s example 5, Col. 13 line 25, where a prepolymer is made by reacting polypropylene glycol (a polyalkylene glycol) with a molecular weight of 1,000 g/mol, which is in the middle of the claimed range.
In response to applicant’s argument that the Mn of the polyalkylene glycol provides exceptional physical properties for the artificial leather, examiner points out an argument of unexpected results does not overcome a 102 rejection of anticipation.
For the reasons given above, the 102 and 103 rejections over Kelso are maintained and claims 15 and 19 are additionally rejected over Kelso.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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