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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-10 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.
Claim 1 recites “parts by equivalent” which causes confusion. The term “parts by equivalent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, the examiner interprets “parts by equivalent” as the formula shown below:
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in view of the instant specification Table 1. The examiner invites the applicant to clarify.
Claims 2-10 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A polyurethane acrylate resin, being formed by reacting
6 to 30 parts by equivalent of (A) imine diol;
6 to 30 parts by equivalent of (B) polyester diol, polycarbonate diol, or a combination thereof;
10 to 30 parts by equivalent of (C) hydroxyalkyl acrylate, hydroxyalkyl methacrylate, or a combination thereof; and
50 parts by equivalent of (D) diisocyanate,
wherein (A) imine diol has a chemical structure of
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60
360
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, wherein R1 is
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108
284
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,
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104
240
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,
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94
180
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, linear –(CnH2n)- or branched –(CnH2n)-, wherein m=2 to 40, n=2 to 16, and each of R3 is independently C1-6 alkyl group;
and each of R2 is independently substituted or unsubstituted C2-24 alkylene group or C3-24 cycloalkylene group, or substituted or unsubstituted C6-24 monocyclic or bicyclic arylene group.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 114539481 as listed on IDS dated 12/28/2023).
The examiner refers to the English translation of Zhang et al. provided in this office action.
Regarding claim 1, Zhang et al. disclose a polyurethane acrylate polymer that is obtained by reacting an isocyanate terminated compound, a (meth)acrylate hydroxyalkyl ester), abd an imine chain extender of the formula shown below (claim 1), thereby reading on the hydroxyalkyl acrylate (C) and diisocyanate (D) of the instant claim.
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30
286
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32
288
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Zhang et al. further disclose in Example 1 a polyurethane acrylate polymer is formed from 63.2 g of an imine diol formed from reacting p-phenylenediamine and p-hydroxybenzaldehyde, 1000 g of polytetrahydrofuran diol, 336 g of hexamethylene isocyanate, and 23.2 g of hydroxyethyl acrylate [0058-0063].
Zhang et al. does not disclose the polyurethane acrylate of Example 1 comprises an imine diol having the chemical structure as recited in the instant claim.
However, Zhang et al. teach the imine diol may be formed from a 4,4’diaminodiphenylmethane [0026]. Reacting 4,4’diaminodiphenylmethane with the p-hydroxybenzaldehyde of Example 1 results in an imine diol having a structure that reads on component (A) of the instant claim wherein R1 is
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106
282
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, R3 is hydrogen, R2 is an unsubstituted C6 monocyclic arylene group. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the p-phenylenediamine of Example 1 with the 4,4’diaminodiphenylmethane as broadly taught by Zhang et al.
Zhang et al. do not disclose a polyester diol as recited in the instant claim.
However, Zhang et al. broadly teach the diol may be a polyester polyol or a polycarbonate polyol among others [0032]. Polyol is interpreted to include diol and thereby reads on component [B] of the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the polytetrahydrofuran diol of Example 1 with the polyester polyol as broadly taught by Zhang et al.
Regarding the amounts of component (A), (B), (C), and (D), Zhang et al. teach in Example 1 comprises 63.2 g of imine diol, 1000 g of polyether diol, 336 g of hexamethylene diisocyanate, and 23.2 g of hydroxyethyl acrylate, equivalent to 6 parts by equivalent of imine diol, 30 parts by equivalent of polyether diol, 3 parts by equivalent of hydroxyethyl acrylate, and 60 parts by equivalent of dissocyanate, thereby lying within the claimed range of (A) and (B) but lying outside the ranges of (C) and (D).
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of hydroxyalkyl (meth)acrylate and diisocyanate to achieve the desired mechanical properties.
Regarding claim 2, Zhang et al. disclose in Example 1 R2 is
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96
124
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as formed from the p-hydroxybenzaldehyde (Example 1).
Regarding claim 5, Zhang et al. disclose Example 1 comprises hydroxyethyl acrylate [0058-0063], thereby reading on the instant claim.
Regarding claim 6, Zhang et al. disclose Example 1 comprises hexamethylene isocyanate [0058-0063].
Zhang et al. do not disclose Example 1 comprises a diisocyanate as recited in the instant claim.
However, Zhang et al. broadly teaches isocyanates such as diphenylmethane diisocyanate may be used to form the polyurethane acrylate polymer [0033], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the hexamethylene isocyanate in Example 1 with diphenylmethane diisocyanate as broadly taught by Zhang et al.
Regarding claim 7, Zhang et al. disclose Example 1 comprises 6 parts by equivalent of imine diol, 30 parts by equivalent of polyether diol, 3 parts by equivalent of hydroxyethyl acrylate, and 60 parts by equivalent of diissocyanate as rejected above.
Zhang et al. do not disclose the total parts by equivalent of (A) imine diol, (B) polyester diol, and (C) hydroxyalkyl acrylate is equal to the parts by equivalent of (D) diissocyanate.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of component A, B , C and D to achieve the desired mechanical properties.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 114539481 as listed on IDS dated 12/28/2023) in view of Yu et al. (CN 113717324).
The examiner refers to the English translation of Yu et al. provide in this Office Action.
The polyurethane acrylate of claim 1 is incorporated herein by reference.
Regarding claim 3, Zhang et al. is silent on the polyester diol as recited in the instant claim.
Yu et al. teach a polyurethane (meth)acrylate resin formed from at least one of polyether polyol, polyester polyol, or polyolefin polyol (claim 2). Yu et al. further teach suitable polyols include polytetrahydrofuran glycol and polycaprolactone diol among others (claim 3), thereby reading on the polycaprolactone diol of the instant claim. The examiner notes that the substitution of equivalents (i.e., polytetrahydrofuran glycol and polycaprolactone diol) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore it is prima facie obvious that polytetrahydrofuran glycol and polycaprolactone diol are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN114539481 as listed on IDS dated 12/28/2023) in view of Green et al. (US 20180208704).
The examiner refers to the English translation of Chen et al. provided in this Office Action.
The polyurethane acrylate of claim 1 is incorporated herein by reference.
Regarding claim 4, Zhang et al. is silent on the polycarbonate diol as recited in the instant claim.
Green et al. teach a polyurethane formed from a polyol component such as poly(propylene) glycol and poly(hexamethylene carbonate) glycol among others (claim 1, [0057]). Yu et al. also teach poly(propylene) glycol is a suitable polyol to form the polyurethane acrylate (see Example 2 and 3). Therefore, Green et al. teach poly(propylene) glycol and poly(hexamethylene carbonate) glycol are equivalent and the examiner notes that the substitution of equivalents (i.e., poly(propylene) glycol and poly(hexamethylene carbonate) glycol) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore it is prima facie obvious that poly(propylene) glycol and poly(hexamethylene carbonate) glycol are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 114539481 as listed on IDS dated 12/28/2023) in view of Klun et al. (US 20210163664).
The polyurethane acrylate of claim 1 is incorporated herein by reference.
Regarding claim 8, Zhang et al. is silent on the molecular weight of the polyurethane acrylate resin.
Klun et al. teach a polyurethane (meth)acrylate polymer having a weight average molecular weight of 3,000 g/mol or greater and 50,000 g/mol or less [0095], thereby overlapping the claimed range. Klun et al. offer the motivation that higher molecular weight will result in high viscosity and affects flowability while lower molecular weight will reduce the toughening effect [0095]. Zhang et al. is also concerned with the mechanical properties of the resin [0051]. Therefore, it would have been obvious to one of ordinary skill in the art to use the weight average molecular weight taught by Klun et al. with the polyurethane (meth)acrylate polymer of Zhang et al. with reasonable expectation that the mechanical properties would be balanced.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 114539481 as listed on IDS dated 12/28/2023) in view of Chen et al. (CN 107880223).
The examiner refers to the English translation of Chen et al. provided in this Office Action.
The polyurethane acrylate of claim 1 is incorporated herein by reference.
Regarding claims 9 and 10, Zhang et al. disclose in Example 1, 80 g of polyurethane acrylate, 20 g of tetrahydrofuran methacrylate (the reactive diluent), and 3 g of Irgacure 819 (photoinitiator) are combined to form the resin composition, equivalent to 100 parts by weight of polyurethane acrylate, 25 parts by weight of an acrylate compound, and 3.75 parts by weight of a radical initiator.
Zhang et al. is silent on a multi acrylate compound as recited in the instant claim.
Chen et al. teach a composition comprising 40-50 parts of polyurethane acrylate polymer, 10-30 parts by weight of reactive diluent that is tripropylene glycol diacrylate, 1-5 parts of a photoinitiator, and 0.1 to 10 parts by weight of (claim 2), equivalent to 20 to 60 parts by weight of multiacrylate compound based on 100 parts by weight of polyurethane acrylate and thereby reading on the multiacrylate compound of instant claim 9 and 10. Chen et al. offer the motivation that adding the reactive diluent improves physical and mechanical properties of the product [0057]. Zhang et al. is also concerned with the mechanical properties of the resin composition [0051]. Therefore, it would have been obvious to one of ordinary skill in the art to add the multiacrylate of Chen et al. to the resin composition of Zhang et al. with reasonable expectation that the mechanical properties of the resin composition would improve.
Zhang et al. disclose Example 1 comprises 100 parts by weight of polyurethane acrylate and 25 parts by weight of an acrylate compound as rejected above, thereby lying within the claimed ranges.
Zhang et al. disclose Example 1 comprises 3.75 parts by weight of a radical initiator, thereby lying outside the claimed range.
However, Zhang et al. broadly teach the amount of radical initiator is 0.1 to 5 parts to 50 to 80 parts of polyurethane acrylate polymer (claim 6), equivalent to a range based on 100 parts by resin of polyurethane acrylate polymer of 0.125 to 10 parts by weight, thereby overlapping 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Zhang et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights