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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 10 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See, for example, Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). The claimed invention which recited ‘use’ is directed to non-statutory subject matter.
Claims 10 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Allowable Subject Matter
Claims 1-9, 11-20 are allowed.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach, suggest, or disclose the claimed method for preparing a fatigue-resistant supramolecular polyurethane. Specifically, the prior art does not teach or suggest the addition reaction of a polyurethane chain extension product with an organic imine cage (the total organic carbon structure) of formula I to form the fatigue resistant PU.
A relevant prior art is the journal article “Organic Imine Cages: Molecular Marriage and Applications” by Acharyya et al, which teaches self-sorting reactions between dialdehydes and amines to form organic imine cages (OIC) through imine condensation, abstract. OIC are porous solids with applications in proton conductors, sensors, and as solid supports, see sec. 1 introduction. Acharyya further teaches the self-sorting reactions of aldehydes and amines forming cages, such as in figure 3. In figure 4, (b) it shows a reaction of the claimed tris(2-aminoethyl)amine (TREN) and 4,6-dihydroxy-5-methylisophthaldehyde of claim 3, which are labeled Y and G respectively. These components form the cage G3Y2 which matches the claimed TOC of claim 1. Despite Acharyya teaching this OIC that matches applicant’s, there is no suggestion by Acharyya to utilize these cages in polyurethane compositions or in an addition reaction thereof. It is taught that these cages are used in the detection of organic pollutants, sec. 4.1, as templates for the controlled synthesis of metal nanoparticles, sec. 4.2, and proton conducting materials such as in sensors, sec. 4.3. The cage of G3Y2 is one of many that is taught by Acharyya and there is no guidance or motivation that would prompt a person skilled in the art to combine this specific OIC with a polyurethane in an addition reaction to form the supramolecular PU.
Another relevant prior art is US20070202342 to Whiteford et al, which teaches an antimicrobial coating composition comprising bridged polycyclic compounds, abstract. The bridged polycyclic compounds are similar to the organic imine cage of claim 1, and have a general structure of (I) ¶[0038]. Whiteford exemplifies the amine TREN for one of the compounds to form the polycyclic compound, ¶[0317], but it is reacted with a trifunctional aldehyde, not a dialdehyde as is needed to form the TOC of claim 1. See also schemes 5 and 5a where Schiff base condensations using a tri-functional amine (which could be TREN) and a dialdehyde, ¶¶[0320-0322] are depicted. The dialdehyde has the group R4 in the center, which Whiteford teaches the options for R4 are shown in ¶[0270], and does not include the dihydroxy methylisophthaldehyde group required to form the claimed TOC. Whiteford additionally teaches that the bridged polycyclic compound can be mixed within a matrix polymer, such as polyurethane ¶¶[0077, 0115, 0369], but does not suggest the polycyclic compound is to react in an addition reaction with the polyurethane, only that it is dispersed within the polymer composition, ¶¶[0108, 0212]. The bridged polycyclic compounds are used for their antimicrobial behavior (see abstract) not for increasing strength in a polymer. Therefore, it would not be obvious to a person skilled in the art to make the claimed TOC and further react it with the polyurethane chain extension product of claim 1 based on the teachings of Whiteford.
A relevant prior art concerning the polyurethane formation of claim 1 is WO2017112521A1 to McCall, W. which teaches the production of a flexible product comprising a polyurethane which may have shape memory, and is therefore in the same field as applicant, see title, abstract and page 62 line 19. McCall teaches the thermoplastic polyurethane is made from a polyether diol, diisocyanate, and a chain extender, see example 16 page 108, where polytetramethylene oxide is reacted with HDI in the presence of tin and t-butylaminoethyl methacrylate (TBAEMA), and then this product is reacted with PACM (4,4'-diaminodicyclohexylmethane) as a chain extender, shown in Table 4, page 111. McCall does not teach adding an organic imine cage to the polyurethane product and furthermore does not teach reacting an organic imine cage with the chain extended PU to form a supramolecular PU. The invention of McCall already has shape-memory capabilities, high modulus, and tensile strength, and does not suggest a motivation for including the claimed TOC compound in the polyurethane reaction, and is therefore non-obvious. The combination of the OIC of Acharyya with the polyurethane of McCall would not produce a predictable result and would require hindsight to produce the claimed invention.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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