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 § 101
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a asserted utility or a well-established utility. The claim provides for the use of the polyurethane but does not include steps or methods of using or how to use the polyurethane. Claim 18 provides for the use of the polyurethane but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 18 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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 1-2, 4-8, 11, 13, 15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 3,438,916 to Davis.
As to claims 1-2, 4-8, 11, 13, and 15, Davis discloses a millable polyurethane comprising 1757 grams of polyester diol with a molecular weight of 2,000 prepared by the condensation of adipic acid with a 90:10 ratio of ethylene glycol and 1,2-propanediol, 388 (17.2%) grams of tolylene diisocyanate, 98 (4.3%) grams of glycerol allyl ether (diol with MW of 132 g/mol) containing 0.5 grams of 2,2-methylene bis (4-methyl, 6-tertiary butyl phenol) as antioxidant, 1.0 parts of sulfur, 0.5 parts of stearic acid and other additives including other types of activators such as 0.10 to 1.2 parts of chlorinate melamine (Examples, Table I).
As to claim 18, Davis discloses uses of the millable polyurethanes in tires, tubing, wire coatings, thread, footwear, and mechanical goods (1:50-55).
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,760,158 to Schroeter in view of U.S. Patent Pub. No. 2019/0144735 to Fu et al. and U.S. Patent Pub. No. 2019/0071535 to Poeselt et al.
As to claims 1-14, Schroeter discloses vulcanizable by peroxide and/or sulfur polyurethane rubbers comprising 1.0 mols of a polyester diol having a molecular weight of 1500 to 7,000 g/mol comprising a condensation reaction of adipic acid and 2,-methylpropanediol-1,3 in combination with cyclohexyldimethanol and/or propanediol in a ratio of 70:30 to 30:70, 0.95 to 3.5 mols of diisocyanate such as TDI or MDI (2:30-35) , and 0.3 to 0.5 mols of a diol such as 1,4-butanediol having a molecular weight of 60 to 200 g/mol (Abstract, 2:7-43, Production of the Polymers A-1 to A-5, col. 3).
Schroeter does not expressly disclose the use of antioxidant.
However, within the same field of endeavor Fu discloses millable polyurethanes comprising 0.5 to 5 parts of antioxidant. At the time of filing it would have been obvious to add the antioxidant within the claimed amounts as taught in Fu within the composition of Schroeter to improve stability and increase shelf life (0056).
With regards to the content of sulfur and peroxide, Schroeter in view of Fu teach 1 to 10 parts of peroxide and 0.1 to 10 parts of sulfur (0047, 0051). At the time of filing it would have been obvious to include the curing agents to the composition of Schroeter within the amounts taught in Fu to improve degrees of crosslinking and improve mechanical properties (0048, 0051).
Schroeter does not expressly disclose the use of catalyst.
However, within the same field of endeavor Poeselt discloses crosslinked polyurethanes wherein catalysts such as bismuth carboxylates or dibutyltin dilaurate are added in amounts of 0.0001 to 5% by weight to increase reaction rate (0041, 0042).
At the time of filing it would have been obvious to add the catalyst taught in Poeselt to the composition of Schroeter to strongly accelerate the reaction of urethane polymeric components (0040).
As to claim 15, Schroeter in view of Fu teach additional additives to control hydroytical degradation may be used to modify the compositions for specifically desired environments (Fu, 0057).
As to claims 16-17, Schroeter discloses dehydrating polyester diol comprising a condensation reaction of adipic acid and 2,-methylpropanediol-1,3 in combination with cyclohexyldimethanol and/or propanediol in a ratio of 70:30 to 30:70 and chain extender followed by the addition of diisocyanate and other components to prepare the polyurethane, the products can be molded (See Poselt or Fu) and then milled or vulcanized with sulfur or peroxide using normal rubber temperature, pressures, and times (Production of Test Pieces, Schroter, 0015 and 0059, Poeselt).
As to claim 18, the references disclose suitable uses for the millable polyurethanes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763