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 § 102
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.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SCHMITT et al. (U.S. Patent No. 4,212,962, hereinafter SCHMITT).
Regarding claims 1 and 6, SCHMITT teaches the preparation of isocyanates blocked with ε-caprolactam (Example 1 and Claim 1). The reaction product of the cycloaliphatic polyisocyanate and polyol contains at least 2 isocyanate groups (Col. 2, lines 22-29). Note: ε-caprolactam reads on a cyclic amine comprises at least one NH- group and from four to six carbon atoms.
Claims 1, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/129939.
To further advance the prosecution of this invention, SUZUKI (U.S. Publication No. 2022/0073687, hereinafter SUZUKI) which is an English equivalent of WO 2020/129939 will be used in the rejection.
Regarding claims 1, 6, and 7, SUZUKI teaches an addition reaction product of a polyisocyanate compound and a blocking agent [0016]. Examples of polyisocyanate compounds include polyisocyanate such as tolylene diisocyanate, metaphenylene diisocyanate, diphenylmethane diisocyanate, hexamethylene diisocyanate, and etc. [0017]. The blocked polyisocyanate has two or more blocked isocyanate components per molecule [0019] (which reads on a polyisocyanate has at least two NCO groups per molecule as claimed). Examples of blocking agents include aromatic secondary amines such as dimethylpyrazole (also known as 3,5-dimethylpyrazole); lactams including caprolactam [0018] (which reads on cyclic amine comprises at least one NH- group and from four to six carbon atoms).
Claims 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GURTLER et al. (U.S. Publication No. 2003/0236360, hereinafter GURTLER).
Regarding claims 1, 5, 6, and 7, GURTLER teaches the preparation of blocked polyisocyanates comprising amine blocking agents including ε-caprolactam [0010] and dimethylpyrazole (DMP) [0014 and 0056] and solvent including naphtha [0027], xylene [0035], and etc. The preparation is produced by a reaction of polyisocyanates with the amine (Abstract).
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.
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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over CARPENTER et al. (U.S. Patent No. 4,946, 876, hereinafter CARPENTER) in view of GURTLER et al. (U.S. Publication No. 2003/0236360, hereinafter GURTLER).
Regarding claims 8 and 9, CARPENTER teaches polyurethane-forming foundry binders comprising in admixture: (a) a phenolic resole resin component; (b) a polyisocyanate hardener component; and (c) polyester polyol. The polyester is part of the phenolic resin component (Col. 1, lines 50-56; Col. 2, lines 9-53). The invention relates to foundry aggregates and shapes made with the foundry binders (Col. 1, lines 67-68). The isocyanate hardener component of the binder composition is a polyisocyanate having a functionality of two or more. These are formed by reacting excess polyisocyanates with compounds having two or more active hydrogen atoms (Col. 4, lines 44-65). The binder composition comprises solvents including xylene (Col. 5, lines 7-32).
However, CARPENTER does not teach a polyurethane binder system comprising the isocyanate component of claim 1.
In the same field of endeavor of polyurethane binder [0015 and 0032] comprising polyester polyol [0041], GURTLER teaches the preparation of blocked polyisocyanates comprising amine blocking agents including ε-caprolactam [0010] and dimethylpyrazole (DMP) [0014 and 0056] and solvent including naphtha [0027], xylene [0035], and etc. The preparation is produced by a reaction of polyisocyanates with the amine (Abstract).
It would have been obvious to a person of ordinary skill in the art to have provided the reaction product of polyisocyanate and blocking agents (i.e., ε-caprolactam and dimethylpyrazole) of GURTLER with the polyurethane foundry binders of CARPENTER for the benefit of obtaining desired properties.
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, see In re Kerkhoven, 626 F.2d 846,850,205 USPQ 1069, 1072 (CCPA 1980).
Pertinent Art
GEOFFREY (U.S. Patent No. 5,981,622) fails to teach the isocyanate component comprising a reaction product of at least one polyisocyanate and at least one cyclic amine wherein each cyclic amine comprises at least one NH- group and from four to six carbon atoms.
Allowable Subject Matter
Claims 2-4 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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