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 .
Status of the Claims
Claims 1-31 are currently pending.
Claims 12-31 are withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 01/09/2026 is acknowledged.
Claims 12-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/09/2026.
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 1-11 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.
Regarding claims 1 and 9,
The phrase in components (i) to be one or more biobased “(meth)acrlyamide/itaconate functional” and (ii) to be composed of one or more biobased (meth)acrylate functional “polyesters/polyethers/polycarbonates/polyamides prepolymers” is indefinite. For example, it is unclear if the claim is requiring the (meth)acrylate functional component to contain all of the listed polymers (i.e. the polyesters, polyethers, polycarbonates, and polyamides prepolymers) or if the one or more biobased (meth)acrylate functional compounds are selected from one or more of the polyesters/polyethers/polycarbonates/polyamides prepolymers grouping. That is, it is unclear if the “/” indicate they are all part of the same biobased (meth)acrylate functional compound or part of the “one or more” modifier for the biobased (meth)acrylate functional compound. For examination purposes, the “/” will be interpreted in light of the Examples in the specification as part of the “one or more” modifier as (meth)acrylamide or itaconate functional NIPU prepolymers in component (i) and in the biobased (meth)acrylate functional compound may be a functional polyester, polyether, polycarbonate, or polyamide prepolymers for component (ii).
Regarding claims 8 and 10,
Claims 8 and 10 contains various tradenames (Vestamin, Croda Priamine, Velvetol, EMROX, BiOH, and Aptalon). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe compositional components and, accordingly, the identification/description is indefinite.
Regarding claims 2-11,
Claims 2-11 are rendered indefinite due to their dependency on claim 1.
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.
Claim(s) 1-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2017/0260518 A1) in view of Gomez-Lopez et al. (“poly(hydroxyurethane) adhesives and coatings: state-of-the-Art and Future Directions” ACS Sustainable Chem. Eng., 2021, 9, 9541-9562 provided in the IDS).
Regarding claims 1 and 11,
Wu teaches a radiation curable formula with high biocompatibility (bio-based) (Wu: abstract; par. 0005, 0048, and 0093). The phrase requiring the formula to be “for a flexible substrate coating” is intended use of the claimed biobased radiation curable formula. The preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II. The claim limitation will be met if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
The formula comprises a combination of materials selected from: (i) a non-isocyanate polyurethane (NIPU) prepolymer as the polymer or oligomer is formed from cyclic carbonate reacted with an amine to form the prepolymer (Wu: title; par. 0007); one or more (meth)acrylate functional polyesters (Wu: par. 0055); and (iii) a (meth)acrylate monomer as a reactive diluent such as lauryl acrylate or an isobornyl acrylate (Wu: par. 0053, 0124, and 0138).
Wu does not explicitly teach the NIPU prepolymers are biobased (meth)acrylamide functionalized or that component (ii) and (iii) are “biobased”.
Gomez-Lopez teaches a biobased radiation curable formula for use as a coating on a substrate (Gomez-Lopez: abstract; pg. 9541-9552). The formula comprising a combination of materials selected from: (i) a biobased (meth)acrylamide functional non-isocyanate polyurethane (NIPU) prepolymer which yielded improved adhesion to substrates (Gomez-Lopez: Scheme 3; pg. 9549-9550). Additionally, biobased components may be utilized to reduce the carbon footprint (Gomez-Lopez: pg. 9550).
Wu and Gomez-Lopez are in the corresponding field of coatings or adhesives composed of NIPU prepolymers. Therefore, it would be obvious to one of ordinary skill in the art to utilize (meth)acrylamide functionalized NIPU prepolymers with biobased components in the formula of Wu to provide improved adhesion while reducing the carbon footprint as taught by Gomez-Lopez.
Regarding claims 2, 4-5 and 8,
Wu in view of Gomez-Lopez teaches the biobased radiation curable formula required by claim 1. Wu does not explicitly teach the NIPU prepolymer of claim 1 is formed by reacting one or more plant oils-based carbonates with an amount of biobased diamine monomers to produce amino functional NIPU prepolymers in which the plant-oils-based carbonates are synthesized by carbon dioxide insertion in epoxidized modified plant-based oils that are biobased and carbon negative.
Gomez-Lopez further teaches formation of NIPU with plant oil-based carbonates that may be synthesized by carbon dioxide insertion in epoxidized modified plant-based oils, such as epoxidized soybean or vegetable oils (Gomez-Lopez: pg. 9550, col. 1-2; 9556, col. 2). Diamine that may be biobased diamine monomers such as isophorone diamine are also known to be utilized for reacting with cyclic carbonates (Gomez-Lopez: pg. 9546, col. 2). As epoxidized soybean oil is a material utilized in Applicant’s specification, the plant oils-based carbonates may be considered biobased and carbon negative.
Wu and Gomez-Lopez are in the corresponding field of coatings or adhesives composed of NIPU prepolymers. Therefore, it would be obvious to one of ordinary skill in the art to utilize (meth)acrylamide functionalized NIPU prepolymers with biobased components in the formula of Wu that is formed from plant oils-based carbonates that are synthesized by carbon dioxide insertion in epoxidized modified plant-based oils to provide improved adhesion while reducing the carbon footprint as taught by Gomez-Lopez.
Regarding claim 3,
Wu in view of Gomez-Lopez teaches the biobased radiation curable formula required by claim 2. Wu further teaches the NIPU prepolymers may have a molecular weight of from 400 to 10,000 which overlaps with the claimed range of from 1000 to 10,000 (Wu: par. 0052). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding claims 9 and 10,
Wu in view of Gomez-Lopez teaches the biobased radiation curable formula required by claim 1. The limitation requiring the one or more biobased (meth)acrylate functional compounds to “be formed through a one-step reaction with biobased acrylic acid or methacrylic acid” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, Wu teaches a (meth)acrylate functional polyester and thus teaches the final claimed structure required by claims 9. As the trademarks are deemed indefinite, see the Section 112(b) above, the Wu reads on the claims as it teaches a (meth)acrylate functional polyester.
Claim(s) 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Gomez-Lopez and in further view of Denoux et al. (US 2008/0132712 A1).
Regarding claims 6 and 7,
Wu in view of Gomez-Lopez teaches the biobased radiation curable formula required by claim 4. Wu and Gomez-Lopez are silent towards the plant-based oils having a degree of functionality of 2 and comprise epoxidized propylene glycol dioleate.
Denoux teaches epoxidized vegetable oils used in inks and coatings (Denoux: abstract; par. 0001-0002). Denoux teaches that epoxidized soybean oil is the most commonly utilized but teaches the functional equivalence for use in inks and coatings with epoxidized propylene glycol dioleate, which has a degree of functionality of 2 (Denoux: par. 0026 and 0038; claim 32).
Wu and Denoux are in the corresponding field of epoxidized oils for use in coatings and inks. Therefore, it would be obvious to one of ordinary skill in the art to recognize the functional equivalence of epoxidized soybean oil with epoxidized propylene glycol dioleate, which has a degree of functionality of 2, to be suitable for use as a plant-based oil for use in inks and coatings as taught by Denoux.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783