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 16 is 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 16 recites the limitation "the leather" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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)(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.
(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.
Claims 1-6, 8, 10, 11, 12, 15, 17-24, 28, 29, 30, 34, 35, 37 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Jana et al (US 2021/0024698 A1).
Regarding claims 1, 15, 17-19, 34, and 35, Jana teaches a bio-based non-isocyanate poly(hydroxyl urethane) (NIPU) (e.g., polyhydroxyurethane polymer coating or adhesive) and therein method of preparing comprising a combination of polymerized materials selected from one or more biobased cyclic carbonate (CC) monomers; and one or more biobased polyamines (abstract, para 2, 7, 17-19, 44, 97, 140, 177).
The limitation “for a flexible substrate” is intended use as does not further add structural or manipulative limitations. However, Jana teaches the use of a fabric substrate; and the use of a coating on a product and therein the application of the coating to a textile (e.g., fabric), wood, or metal substrate (para 33, 124, 140).
Regarding claims 2 and 20, Jana teaches the use of plant oils (i.e., synthesizing one or more plant oils (para 94).
Regarding claims 3-6 and 21-24, these claims depend upon optional limitations of claim 2 and need not be taught by the prior art of record.
Regarding claims 8 and 11, the limitations of the instant claims are product by process limitations and do not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim Jana and the product of the instant claims. Furthermore, Jana teaches using water as a solvent for its polyhydroxyurethane polymer coating (i.e., wherein the coating is formed by the process of dispersing bio-based NIPU prepolymers in water as a solvent to form a waterborne dispersion; and curing the waterborne dispersion to form the coating) (para 55).
Regarding claim 10, 28, and 37, Jana teaches the use of a biobased or green solvent (e.g., water) (para 55).
Regarding claims 12 and 30, Jana teaches or would have allowed one of ordinary skill in the art at the time of invention to at once envisage its polyhydroxyurethane further comprises end functional groups (e.g., functionalizing the PHU polymer) comprising fatty acids (i.e., carboxylic acid end groups) (para 20, 58-60, scheme 1).
Regarding claim 29, Jana teaches using water as a solvent for its polyhydroxyurethane polymer coating (i.e., wherein the coating is formed by the process of dispersing bio-based NIPU prepolymers in water as a solvent to form a waterborne dispersion; and curing the waterborne dispersion to form the coating) (para 55).
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.
Claims 7 and 25 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jana.
Jana teaches the use of plant based oils (para 37, 92, 94), and specifically it was known in the art at the time of invention to use that of di-cyclic (i.e., two functional groups) carbonates and poly-cyclic (i.e., two or greater functional groups) carbonates. Therefore, Jana would have allowed one of ordinary skill in the art at the time of invention to at once envisage or would have rendered obvious to one of ordinary skill in the art at the time of invention a first cyclic carbonate having a first degree of functionality and a second cyclic carbonate having a second degree of functionality higher than the first degree.
Claims 14 and 32 are rejected under 35 U.S.C. 103 as obvious over Jana.
Jana would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention that of amine-terminated NIPU prepolymers (para 60, scheme 1). Jana further teaches functionalizing the PHU polymer with one or more substituents selected from the group consisting of fatty acid, amino acid, lactic acid, and polylactic acid (i.e., acids) to form a functionalized polyhydroxyurethane (PHU) polymer (para 20, 60, scheme 1) which would have allowed one of ordinary skill in the art at the time of invention to at once envisage or would have rendered obvious to one of ordinary skill in the art at the time of invention chain extending acid-terminated NIPU prepolymers.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to use that of an chain extending itaconate-terminated (i.e., itaconic acid terminated) NIPU prepolymer since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 8 (as an alternative rejection to above) and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Jana in view of Gee et al (US 2004/0091982 A1).
Jana teaches the coating of claim 1 and the method of 19.
Jana fails to suggest wherein the biobased polyamines are synthesized by 1) reacting biobased diamine with biobased carboxylic acids; or 2) reacting biobased diamine with biobased carbonate; and synthesizing the biobased polyamines by 1) reacting biobased diamine with biobased carboxylic acids; and 2) reacting biobased diamine with biobased carbonate for use in polyurethane coatings (para 69-33, 68-90, 100-103)
Gee teaches it was known in the art at the time of invention synthesize the polyamines by reacting diamine with carboxylic acids; and diamine with carbonate.
Therefore, it would have been obvious to combine the synthesized polyamines and the synthesizing process of polyamines of Gee with the method and process of making the polyhydroxyurethane (PHU) of Jana, since would of ordinary skill in the art at the time of invention would have merely been combining prior art elements according to known methods (e.g., the synthesized polyamines and the synthesizing process of polyamines of Gee) to yield predictable results (e.g., the polyamines needed for the coating and process of making the coating of Jana).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to use that of biobased diamine, biobased carboxylic acids, and biobased carbonate since Jana gives express motivation for using bio-based constituents (para 19, 37); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 9, 13, 15 (as an alternative rejection to above), 16, 27, 31, 33, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Teglia et al (US 2020/0231805 A1) in view of Jana.
Regarding claims 15, 16, and 33, Teglia teaches a replacement for natural leather and its process of making comprising a collagen/polymer matrix layer attached to a surface of a substrate layer; wherein the polymer matrix comprises bio-polyurethane and the substrate comprises a fabric layer (i.e., flexible substrate) of natural fibers such as cotton, bamboo, or hemp (i.e., plant based fabrics) (para 4, 5, 18, 19, 108, 109, 124).
Teglia fails to suggest the coating of claim 1 or the process of claim 19.
Jana is relied upon for the coating of claim 1 and the process of claim 19.
Therefore, It would have been obvious to one of ordinary skill in the art at the time of invention to substitute the bio-polyurethane of Jana for the bio-polyurethane of Teglia, because Teglia gives express motivation; and, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II) and it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). Furthermore, it would have been obvious to incorporate the process of Jana into the process of Teglia, since Teglia gives express motivation for the use of a bio-polyurethane and therein its process of making.
Teglia further suggests the collagen/polymer matrix is dried in an oven (i.e., oven cured and directly attached or adhered to the substrate layer (i.e., bonding a plant-based backing fabric on top of an oven-cured biobased NIPU coating).
Regarding the limitation “thereby yielding a carbon negative bio-based leather alternative having specific mass ratio carbon dioxide incorporation;” the product and process of Teglia as modified by Jana is inherently deemed to meet this limitation. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Regarding claims 9 and 27, Teglia suggests the collagen/polymer blend may comprise a lake pigment (para 170-176) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention that of a plant or bio-based pigment, since many lake pigments are plant or bio-based pigments.
Regarding claim 13 and 31, Teglia teaches the basecoat polyurethane layer (i.e., the polyurethane solvent dispersion of Jana) may comprise carbodiimide as a crosslinker (para 153).
Regarding claim 36, Teglia teaches its replacement for natural leather further comprises a basecoat and top-coat of polyurethane (para 153, 157, 166, 167) which are applied by spraying. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to spray deposit the coating made by the process of Jana as the basecoat and/or topcoat, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II) and it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783