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, 5-6, 8-14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2006307000 to Koide et al.
As to claims 1, 5, 8-9, 11-12, and 14, Koide discloses a polycarbonate diol represented by the following formula derived from 3-methyl-1,5-pentanediol and 1,6-hexanediol (0035, 0097):
PNG
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100
538
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Koide discloses a polycarbonate wherein 100 mol% of the repeating units are derived from 3-methyl-1,5-pentanediol and 1,6-hexanediol. The molecular weight of the polycarbonate diol is 2,000 g/mol (0095). Koide does not expressly disclose an LC spectrum of the polycarbonate diol. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are present in the claimed amounts, the claimed physical properties relating to the compositions molecular weight LC spectrum are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
As to claims 6, 10, 13, and 16, with regards to the viscosity ratio, because the reference teaches the same polycarbonate diol the claimed physical properties relating to the viscosity are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
As to claims 17-18, Koide discloses a urethane resin comprising the reaction product of the polycarbonate diol and a polyisocyanate used in wet-coat applications (0052-0053).
Claims 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2005/054034 to Isokami.
As to claims 1-5, 7-9, 11-12, and 14, Isokami discloses a polycarbonate diol comprising the reaction product of diethyl carbonate, 15.0 mols of 3-methyl-1,5-pentanediol, and 1.7 moles 1,6-hexanediol, wherein the reactants are mixed with tetraisopropyl titanate catalyst, gradually heated to 200°C under atmospheric pressure and a nitrogen atmosphere, followed by distillation of the by-product ethanol. The number average molecular weight of the polyol is 1990 (0023). Isokami does not expressly disclose an LC spectrum of the polycarbonate diol. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are present in the claimed amounts, the claimed physical properties relating to the compositions molecular weight LC spectrum are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
As to claims 6, 10, 13, and 16, with regards to the viscosity ratio, because the reference teaches the same polycarbonate diol the claimed physical properties relating to the viscosity are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
As to claims 17-18, discloses reacting the polycarbonate diol with a diisocyanate used in coating applications (0022, 0033, Examples).
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2005/054034 to Isokami.
As to claims 1-5, 7-9, 11-12, and 14, Isokami discloses a polycarbonate diol comprising the reaction product of diethyl carbonate, 15.0 mols of 3-methyl-1,5-pentanediol, and 1.7 moles 1,6-hexanediol, wherein the reactants are mixed with tetraisopropyl titanate catalyst, gradually heated to 200°C under atmospheric pressure and a nitrogen atmosphere, followed by distillation of the by-product ethanol. The number average molecular weight of the polyol is 1990 (0023). With regard to the LC spectrum limitations, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. LC spectrum values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claims 6, 10, 13, and 16, with regards to the viscosity ratio, because the reference teaches the same polycarbonate diol the claimed physical properties relating to the viscosity are present in the prior art. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claims 17-18, discloses reacting the polycarbonate diol with a diisocyanate used in coating applications (0022, 0033, Examples).
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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