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 Claims
Claims 1, 3-6, 10, 12-16, 21, 22, 24, 25, 27, 29-31, 33-34, 36-38, 92, and 153 are pending in the present application.
Claims 2, 7-9, 11, 17-20, 23, 26, 28, 32, 35, 39-91, and 93-152 are canceled in the present application.
Claim Interpretation
Claims 1, 13, 14, 21, 22, 31, 92, 153 recite the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A. The specification as originally filed at [0033] defined the term “about” as including ±10% of the value provided. For the purpose of examination, limitations preceded by the term “about” are interpreted as including ±10% of the value provided.
Claims 1, 3-6, 10, 13, 30, 34, 92, and 153 recite the term “biobased.” The specification as originally filed at [0022] defined the term “biobased” as referring to material sourced from biological products or renewable agricultural material, including plant, animal, and marine materials, forestry materials, or an intermediate feedstock.
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 31, 33, 34, 36-38, and 153 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.
Claim 31 recites “an amount of about 1% to about 30%” that renders the claim indefinite. The range is not defined relative to a basis, no specific units are provided (such as weight %, volume %, or mole %), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the claim is interpreted as instead reciting “an amount of about 1% to about 30% on a weight-by-weight basis of the reaction mixture.”
Claim 153 recites “of at least about 65%” that renders the claim indefinite. The range is not defined relative to a basis, no specific units are provided (such as weight %, volume %, or mole %), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the claim is interpreted as instead reciting “of at least about 65% on a weight-by-weight basis relative to all polyols.”
Claims 33, 34, and 36-38 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 nonobviousness.
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 1, 3-6, 10, 12-16, 21, 22, 24, 25, 27, 29-31, 33, and 153 are rejected under 35 U.S.C. 103 as being unpatentable over Kelch (US 2020/0017627 A1) in view of Petrovic et al. (WO 2020/047216 A1).
Regarding Claim 1, Kelch teaches a reaction mixture of a polyurethane composition comprising a polyol component K1 and a polyisocyanate component K2, where the polyol component K1 includes a castor oil-based polyol and a polybutadiene polyol (i.e., a macrodiol) (Kelch, Abstract, [0011]-[0018]). Kelch teaches embodiments comprising 64 parts by weight of the castor oil-based polyol (Setathane 1150), 100 parts by weight of the polyisocyanate (Desmodur VL), 0.3 parts by weight of a catalyst, 2 parts by weight of a zeolite (Sylosiv), and 20-32 parts by weight of a polybutadiene macrodiol (Polyvest HT) relative to 190.3 to 206.3 total parts by weight of total reaction mixture (Kelch, [0157]-[0163], Tables 1-7). Kelch’s embodiments yield weight% ranges of [64/206.3]*100 = 31.0 wt% to [64/190.3]*100 = 33.6 wt% of the castor oil-based polyol (Setathane 1150), [100/206.3]*100 = 48.5 wt% to [100/190.3]*100 = 52.5 wt% of the polyisocyanate (Desmodur VL), [0.3/206.3]*100 = 0.15 wt% to [0.3/190.3]*100 = 0.16 wt% of a catalyst, [2/206.3]*100 = 0.97 wt% to [2/190.3]*100 = 1.05 wt% of a zeolite (Sylosiv), and [20/198.3]*100 = 10.0 wt% to [32/202.3]*100 = 15.8 wt% of a polybutadiene macrodiol (Polyvest HT) relative to total parts by weight of the respective reaction mixtures. Kelch’s castor oil-based polyol range falls within the claimed range of about 30-70 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s polyisocyanate range falls within the claimed range of about 15-60 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s catalyst range falls within the claimed range of about 0.1-2 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s zeolite range falls within the claimed range of about 0.1-5 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s macrodiol range overlaps the claimed range of about 1-15 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Kelch remains silent regarding the castor oil-based polyol being a biobased polyol.
Petrovic, however, teaches chemical modification of triglyceride oils for producing versatile polymers (Petrovic, Abstract, [37]-[40]). Petrovic teaches the triglyceride oils are natural/biobased oils that are then modified to yield natural/biobased polyols for producing polyurethane polymers (Petrovic, [37], [47]-[62], [89], [93]-[104]). Petrovic teaches the natural/biobased polyols have similar hydroxyl numbers to castor oil, and are an interesting alternative to castor oil with higher oxidative stability (Petrovic, [218]-[220]).
Since Kelch and Petrovic both disclose polyurethane compositions comprising oil-based polyols and polyisocyanates and Petrovic suggests natural/biobased polyols are an interesting alternative to castor oil-based polyols, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Petrovic’s natural/biobased polyols instead of Kelch’s castor oil-based polyol to yield a polyurethane composition that exhibits improved production efficiency; improved sustainability; improved stability, durability, hydrophobicity, and rigidity; and higher oxidative stability as taught by Petrovic (Petrovic, [93], [99], [159], [220]).
Regarding Claim 3, modified Kelch teaches the natural/biobased polyol is a triglyceride oil-based polyol (Petrovic, [37], [47]-[62], [89], [93]-[104]).
Regarding Claim 4, modified Kelch teaches the natural/biobased polyol is derived from a microbial triglyceride oil (Petrovic, [37]-[50], [93]-[140]).
Regarding Claim 5, modified Kelch teaches the natural/biobased polyol is derived from an algal triglyceride oil (Petrovic, [47], [50], [71], [181], [185]-[189]).
Regarding Claim 6, modified Kelch teaches the natural/biobased polyol is derived from epoxidation and ring opening of a natural/biobased triglyceride oil (Petrovic, [93]-[99]).
Regarding Claim 10, modified Kelch teaches the natural/biobased polyol has a hydroxyl number of 110 to 200 mg KOH/g (Kelch, [0012]-[0013], [0028]; Petrovic, [52], [154]). Modified Kelch’s hydroxyl number range encompasses the claimed range of 150 to 165, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 12, modified Kelch teaches the isocyanate is a polyisocyanate (Kelch, Abstract, [0011]-[0017], [0047]-[0053]).
Regarding Claim 13, modified Kelch teaches the catalyst is included in an amount of 0-5 wt% (Kelch, [0068], [0084], [0092], Table 1). Modified Kelch teaches examples having 0.3 parts by weight of catalyst relative to 64 parts by weight of natural/biobased polyol A1 (Kelch, Table 1), where this yields a catalyst amount of [0.3]/[64]*100 = 0.47 wt% relative to natural/biobased polyol A1. Modified Kelch’s catalyst amount falls within the claimed range of about 0.1% to about 0.5% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 14, modified Kelch teaches the catalyst is included in an amount of 0-5 wt% (Kelch, [0068], [0084], [0092], Table 1). Modified Kelch’s catalyst amount encompasses the claimed range of about 1% by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 15, modified Kelch teaches the catalyst is an amine catalyst (Kelch, [0068]).
Regarding Claim 16, modified Kelch teaches the catalyst is a dibutyltin dilaurate catalyst (Kelch, [0068]).
Regarding Claim 21, modified Kelch teaches the zeolite is included in an amount of 0-5 wt% (Kelch, [0085], [0093]). Modified Kelch’s zeolite amount overlaps the claimed range of about 1% to about 10% by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 22, modified Kelch teaches examples having 20-32 parts by weight of polybutadiene macrodiol relative to [64+4+8+20+0.3+2+100] = 198.3 to [64+4+4+32+0.3+2+100] = 206.3 parts by weight of total reactive mixture (Kelch, [0157]-[0163], Table 1), where this yields a macrodiol amount of [20]/[198.3]*100 = 10.0 wt% to [32]/[202.3]*100 = 15.8 wt%. Modified Kelch’s macrodiol amount overlaps the claimed range of about 1% to about 10% by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 24, modified Kelch teaches the macrodiol has an average molecular weight of about 2000 to 4000 g/mol (Kelch, [0042]-[0043], [0157]). Modified Kelch’s macrodiol molecular weight range falls within the claimed range of greater than 500, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 25, modified Kelch teaches the macrodiol has an average molecular weight of about 2000 to 4000 g/mol (Kelch, [0042]-[0043], [0157]). Modified Kelch’s macrodiol molecular weight range falls within the claimed range of greater than 1000, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claims 27 and 29, modified Kelch teaches the macrodiol is a polybutadiene polyol (Kelch, [0042]-[0046], [0157]).
Regarding Claim 30, modified Kelch teaches natural/biobased polyols having molecular weight between 1000 to 2000 (i.e., a macrodiol) (Kelch, [0017], [0042]; Petrovic, [192]-[208]). It would have been obvious to one of ordinary skill in the art to have included a natural/biobased polyol as at least one macrodiol to achieve a reaction mixture that exhibits improved production efficiency; improved sustainability; improved stability, durability, hydrophobicity, and rigidity; and higher oxidative stability with a predictable and reasonable expectation of success (MPEP 2143; Petrovic, [93], [99], [159], [220]).
Regarding Claim 31, modified Kelch teaches an additive/filler can be included in an amount of 20-60 wt% (Kelch, [0070]-[0073], [0077], [0083], [0091]). Modified Kelch’s additive/filler range overlaps the claimed range of about 1% to about 30% by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 33, modified Kelch teaches the additive/filler can be a plasticizer (Kelch, [0073]).
Regarding Claim 153, modified Kelch teaches examples having 64 parts by weight of natural/biobased polyol A1 relative to [64+4+4+32] = 104 parts by weight to [64+4+20] = 88 parts by weight of all polyols (Kelch, [0157]-[0163], Table 1), where this yields a natural/biobased polyol A1 amount of [64]/[104]*100 = 61.5 wt% to [64]/[88]*100 = 72.7 wt%. Modified Kelch’s natural/biobased polyol A1 amount overlaps with the claimed range of at least about 65%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Claims 34, 36, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Kelch (US 2020/0017627 A1) in view of Petrovic et al. (WO 2020/047216 A1) as applied to claims 1, 31, and 33 above, and further in view of Gross (US 2013/0131222 A1).
Regarding Claim 34, modified Kelch teaches the reaction mixture of the polyurethane composition as discussed above for claims 1, 31, and 33. Modified Kelch teaches the composition includes an additive/filler that can be a plasticizer (Kelch, [0070]-[0073]).
Modified Kelch remains silent regarding a biobased plasticizer.
Gross, however, teaches polyurethane polymer formed from compositions comprising biobased precursors (Gross, Abstract, [0001], [0025]-[0029]). Gross teaches the compositions also include plasticizers to improve processing and final mechanical properties, where the plasticizers include soybean oil, epoxidized soybean oil, corn oil, castor oil, linseed oil and others that are non-toxic, biodegradable, and bio-derived (Gross, [0116]).
Since modified Kelch and Gross both disclose polyurethane compositions comprising natural/bio-based precursors and plasticizer additives, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Gross’s bio-derived plasticizers as Kelch’s plasticizers to yield a polyurethane composition that exhibits improved processing, exhibits improved final mechanical properties, achieves reduced rattle and rustle, is non-toxic, and is biodegradable as taught by Gross (Gross, [0116]).
Regarding Claim 36, modified Kelch teaches the bio-derived plasticizers are formed from natural oils (such as soybean oil and corn oil) than can be formed from various processes that include microbial processes and sources (Gross, [0116], [0006]-[0007], [0031]-[0036]). It would have been obvious to one of ordinary skill in the art to have included a natural/biobased plasticizer formed from a microbial process from the finite number of disclosed plasticizers to achieve a polyurethane composition that exhibits improved processing, exhibits improved final mechanical properties, achieves reduced rattle and rustle, is non-toxic, is biodegradable, and improves sustainability with a predictable and reasonable expectation of success (MPEP 2143; Gross, [0116]; Petrovic, [99]-[102], [229]-[231]).
Regarding Claim 37, modified Kelch teaches the bio-derived plasticizers are formed from natural oils (such as soybean oil and corn oil) than can be formed from various processes that include algal processes and sources (Gross, [0116], [0006]-[0007], [0031]-[0036]; Petrovic, [47], [71], [88], [99]-[102], [110], [229]-[231]). It would have been obvious to one of ordinary skill in the art to have included a natural/biobased plasticizer formed from an algal source from the finite number of disclosed plasticizers to achieve a polyurethane composition that exhibits improved processing, exhibits improved final mechanical properties, achieves reduced rattle and rustle, is non-toxic, is biodegradable, and improves sustainability with a predictable and reasonable expectation of success (MPEP 2143; Gross, [0116]; Petrovic, [99]-[102], [229]-[231]).
Regarding Claim 38, modified Kelch teaches the bio-derived plasticizers are formed from natural oils such as vegetable oils that include soybean oil and corn oil (Gross, [0116]).
Claim 92 is rejected under 35 U.S.C. 103 as being unpatentable over Emge et al. (US 2020/0399418 A1), in view of Kelch (US 2020/0017627 A1), and in view of Petrovic et al. (WO 2020/047216 A1).
Regarding Claim 92, Emge teaches a polyurethane material for molding (i.e., casting) into structural components that is formed from natural/bio-based oil polyols, other polyols containing at least one carbon-carbon double bond (such as butadiene-based polyols), polyisocyantes, catalysts, and aids and/or additives (Emge, Abstract, [0009]-[0032], [0036]-[0037], [0040]-[0043], [0048], [0064]). Emge teaches the polyurethane material can include fibers to yield a composite that exhibits impact strength of over 25 kJ/m2 as measured by Charpy testing (Emge, [0055]). Emge’s impact strength range falls within the claimed range of greater than 20 25 kJ/m2, and therefore, satisfies the claimed range (MPEP 2131.03).
Emge remains silent regarding a specific polyurethane resin composition as recited by claim 92.
Kelch, however, teaches a reaction mixture of a polyurethane composition suitable for fiber-reinforced plastics comprising a polyol component K1 and a polyisocyanate component K2, where the polyol component K1 includes a castor oil-based polyol and a polybutadiene polyol (i.e., a macrodiol) (Kelch, Abstract, [0001], [0011]-[0018]). Kelch teaches embodiments comprising 64 parts by weight of the castor oil-based polyol (Setathane 1150), 100 parts by weight of the polyisocyanate (Desmodur VL), 0.3 parts by weight of a catalyst, 2 parts by weight of a zeolite (Sylosiv), and 20-32 parts by weight of a polybutadiene macrodiol (Polyvest HT) relative to 190.3 to 206.3 total parts by weight of total reaction mixture (Kelch, [0157]-[0163], Tables 1-7). Kelch’s embodiments yield weight% ranges of [64/206.3]*100 = 31.0 wt% to [64/190.3]*100 = 33.6 wt% of the castor oil-based polyol (Setathane 1150), [100/206.3]*100 = 48.5 wt% to [100/190.3]*100 = 52.5 wt% of the polyisocyanate (Desmodur VL), [0.3/206.3]*100 = 0.15 wt% to [0.3/190.3]*100 = 0.16 wt% of a catalyst, [2/206.3]*100 = 0.97 wt% to [2/190.3]*100 = 1.05 wt% of a zeolite (Sylosiv), and [20/198.3]*100 = 10.0 wt% to [32/202.3]*100 = 15.8 wt% of a polybutadiene macrodiol (Polyvest HT) relative to total parts by weight of the respective reaction mixtures. Kelch’s castor oil-based polyol range falls within the claimed range of about 30-70 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s polyisocyanate range falls within the claimed range of about 15-60 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s catalyst range falls within the claimed range of about 0.1-2 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s zeolite range falls within the claimed range of about 0.1-5 wt%, and therefore, satisfies the claimed range (MPEP 2131.03). Kelch’s macrodiol range overlaps the claimed range of about 1-15 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Emge and Kelch both disclose polyurethane compositions comprising polyols, other polyols (such as butadiene-based polyols), polyisocyantes, catalysts, and other additives and Kelch teaches a polyurethane that is suitable for fiber-reinforced plastics, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Kelch’s polyurethane composition as Emge’s polyurethane material to yield a composition that exhibits high strength, high tensile strength, high moduli of elasticity, minor dependence of mechanical properties within a temperature range of -60oC to 60oC, and resistant to air humidity and residual moisture as taught by Kelch (Kelch, Abstract, [0004]-[0009]).
Modified Emge remains silent regarding the castor oil-based polyol being a biobased polyol.
Petrovic, however, teaches chemical modification of triglyceride oils for producing versatile polymers (Petrovic, Abstract, [37]-[40]). Petrovic teaches the triglyceride oils are natural/biobased oils that are then modified to yield natural/biobased polyols for producing polyurethane polymers (Petrovic, [37], [47]-[62], [89], [93]-[104]). Petrovic teaches the natural/biobased polyols have similar hydroxyl numbers to castor oil, and are an interesting alternative to castor oil with higher oxidative stability (Petrovic, [218]-[220]).
Since modified Emge and Petrovic both disclose polyurethane compositions comprising oil-based polyols and polyisocyanates and Petrovic suggests natural/biobased polyols are an interesting alternative to castor oil-based polyols, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Petrovic’s natural/biobased polyols instead of Kelch’s castor oil-based polyol to yield a polyurethane composition that exhibits improved production efficiency; improved sustainability; improved stability, durability, hydrophobicity, and rigidity; and higher oxidative stability as taught by Petrovic (Petrovic, [93], [99], [159], [220]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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