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 .
Rejections
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-22 are 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.
It is unclear if the instant claims require more than one caprolactone monomer or if only one caprolactone monomer reads on the instant claims because the claims recite a combination of the singular “a” with the plural “caprolactone monomers” or similar language. This creates confusion as to whether the claims require more than one caprolactone monomer or not. This applies to all of the claims.
It is not clear what type of average polymer molecular weight is required by the instantly claimed polycaprolactone polyol molecular weights of the instant claim 8, e.g. number, weight, z, viscosity, or some other type of average molecular weight. These types of polymer average molecular weights are described in polymer chemistry textbooks in the beginning sections, i.e. the basic polymer chemistry teachings. The scope of the claim is therefore not clear.
It is unclear what is required by the instant claim 14. It recites “dimethylmethane-4,4’-diisocyanate” and “(MDI)”. MDI is diphenylmethane diisocyanate. It is therefore not clear if “dimethylmethane-4,4’-diisocyanate” should read “diphenylmethane-4,4’-diisocyanate”.
Claim Rejections - 35 USC § 102
3. 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.
4. Claims 1-4, 7-13, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiong et al., “Synthesis and Properties of Polyurethane Acrylate Oligomer Based on Polycaprolactone diol”, e-Polymers, Vol. 22, January 28, 2022, pages 147-155.
Xiong discloses a polycaprolactone polyol made by the process of the instant claims and initiated with hydroquinone bis(2-hydroxyethyl)ether which gives the polycaprolactone polyols of the instant claims 1-4. It is not seen that any process steps or parameters of the instant claims which are not specified by Xiong, such as the temperatures and times and additional adding of catalyst of the instant claims 2-4, give a different polycaprolactone polyol than that of the instant claims and Xiong. See MPEP 2113.
The instantly claimed recitation of “a” prior to “caprolactone monomers” is taken as requiring only one caprolactone monomer in the instantly claimed polycaprolactone polyols.
See Xiong, the abstract, the Introduction, Experiment, Discussion on synthetic conditions of PCL diol, noting the reaction temperature of 150℃ which falls within the scope of the instant claim 3, Figure 3, noting the temperatures and molecular weights which fall within the scope of the instant claims 3 and 8, the Conclusion, and the remainder of the document.
The polyurethanes of Xiong made with their polycaprolactone polyols discussed above fall within the scope of the instant claims 9-13 and 15-17, noting that the instant claim 17 is directed to the material and not the use as adhesive and the composition of Xiong has high adhesion (page 147, second column, third full paragraph) such that it falls within the scope of the instant claim 17.
The methods of making the polycaprolactone polyol and polyurethane of Xiong fall within the scope of the instant claims 18-19.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 5, 6, 14, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over CN 113736414, Zhang et al., the machine English translation provided by the examiner being referenced below unless otherwise noted, in view of Xiong et al., “Synthesis and Properties of Polyurethane Acrylate Oligomer Based on Polycaprolactone diol”, e-Polymers, Vol. 22, January 28, 2022, pages 147-155.
The discussion of Xiong of paragraph 4 above is repeated here in its entirety.
Zhang discloses using polyurethane hot melt adhesives made with polycaprolactone polyol, MDI, stabilizers, and antioxidants as adhesives in processes falling within the scope of the instant claims 20-22. See Zhang, page 4, lines 2-23, noting the acrylourethane, page 7, lines 11-19, noting the antioxidant and polymerization inhibitor which stabilizes the composition, page 9, lines 2-9, particularly line 6, noting the polycaprolactone diol, page 13, lines 4-9, noting the antioxidant, page 17, lines 9-12, noting the polycaprolactone diol, page 21, lines 15-21, noting the MDI of lines 17-18 which can be used in place of the IPDI of line 20, page 48, lines 10-18, particularly lines 10-12, noting the glue application temperature of 110 ℃ and the bonding of two substrates and curing with UV, page 57, line 22, noting that the adhesives of Zhang can withstand temperatures of 120-160 ℃, and the remainder of the document.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the inventions of the instant claims 5, 6, 14, and 20-22 from the disclosures of Zhang in view of Xiong because Zhang encompasses the instantly claimed inventions except for the use of the instantly claimed polycaprolactone polyol, Xiong shows the instantly claimed polycaprolactone polyol to give highly adhesive polyurethanes, and one of ordinary skill in the art would have expected the properties of Zhang plus those of the polycaprolactone polyols of Xiong in the inventions of Zhang using the polycaprolactone polyols of Xiong.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the adhesive application temperatures of the instant claim 21 in the adhesive methods of Zhang in view of Xiong because Zhang does not limit these temperatures, they use a close glue application temperature of 110 ℃, and show their polyurethanes to be able to tolerate higher temperatures and the higher application temperatures would have been expected to lower adhesive viscosity thereby allowing better wetting of the substrates. See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], particularly “I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS” and “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).”
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
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