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 of Group I in the reply filed on 7/2/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). While Applicant states the election is with traverse, Applicant fails to provide any arguments as to why the election/restriction requirement is improper. This does not constitute a proper traversal.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
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.
Claims 1 and 3-8 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Schonfeld (USP 3980595).
Claims 1 and 4: Schonfeld et al. teach a material comprising polyurethane (abstract) at 95-65% by weight (col. 3, lines 29-32), polyisoprene (col. 3, lines 59-63) at 5-35% (col. 4, lines 21-23; i.e. 1:0.55). Each has a curing agent (col. 4, lines 33-35). Crosslinking agents "diamine, diol, or amino alcohol types" are considered "epoxy-based agents" (col. 4, lines 40-50); MOCA is an aromatic diamine. The vulcanizing agent is sulfur (col. 4, line 60; Claim 9). The preamble states a “moisture-permeable composite membrane”. However, this is intended use of the material and is not structurally limiting. The prior art teaches the same claimed materials and method of making the material. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 3: the polar functional group is a hydroxymethyl group (Example 1, col. 6, Formulation (a) “poly(tertramethylene glycol)”).
Claim 5: Schonfeld et al. teach that the vulcanizing agent is a “sulfur vulcanizing agent” (claim 9) but not specifically “sulfinylamine-based”. However, the chemical function of the sulfur is the primary reaction for vulcanizing the material. One of ordinary skill in the art would presume that a “sulfur vulcanizing agent” would perform the same function and have substantially the same chemical behavior as the claimed “sulfinylamine-based” vulcanizing agent. According to MPEP 2144.09, a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities. This is because when compounds that have sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978). In this case, the sulfur group in both compounds performs the vulcanizing function and one of ordinary still in the art would expect the similar function of both.
Claims 6 and 7: Shonfeld et al. teach that the amount of cure agent is based on the amount of polyurethane and polyisoprene (col. 4, lines 33-69). They don’t teach the amount percentage by weight. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 8: Shonfeld et al. do not teach adding water to the mixture. However, in polymerization reactions water is often added as a solvent. It is preferred as it is considered a “green” solvent. Claim 8 is a product-by-process type claim wherein Shonfeld et al. teach the same material as claimed. The claim is to a material and is not limited by the process of making. Water is not part of the final material and, therefore, is not limiting to the material.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Shonfeld et. al. as applied to claim 1 above, and further in view of Dauenhauer et al. (2017, 10.1021/acscatal.6b03335, 20170037 www.license.umn.edu).
Shonfeld et al. do not teach the biomass percentage of the polyisoprene.
Dauenhauer teaches that isoprene can be made of 100% biomass. This is a more environmentally friendly way to produce isoprene, apart from the traditional petroleum based method. See the entire article. One of ordinary skill in the art at the time of the invention would have found it obvious to use isoprene having more than 20% biomass, including 100% biomass, for the benefit of reducing dependence on petroleum and being a more environmentally friendly process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cao et al. (“A thermal self-healing polyurethane thermoset based on phenolic urethane”, Polymer Journal (2017) 49, 775–781) discuss thermosetting polyurethane formation using isocyanates.
Kent (2023, Kent Elastomer, The Development of Synthetic Polyisoprene) describes the difference between natural and synthetic polyisoprene.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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