Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Indefiniteness Rejection
2. 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.
3. Claims 30 and 34-38 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.
Firstly, with respect to claim 30, the language, “selected from the group of”, constitutes improper Markush language; accepted Markush language requires that the species of the group be denoted by “selected from the group consisting of”. Also, the species of a Markush group should not be set forth in the alternative.
Secondly, with respect to claims 34-37, as drafted, the claims refer to the process according to claim 32; however, claim 32 is not drawn to a process; therefore, the claims lack antecedent basis. Furthermore, regarding claim 38, it is unclear if the claim should depend from claim 32, as claimed, or claim 33, drawn to a process of producing a polyurethane.
Thirdly, with respect to claim 38, it is unclear what constitutes a “roller main body”; specifically, it is unclear what limitation is conveyed by “main”.
Fourthly, with respect to claim 38, in the context of the claimed invention, it is unclear what limitation is being conveyed by “vulcanizing”, since vulcanizing essentially pertains to crosslinking; however, the reactants of claim 25 are difunctional, non-crosslinking or non-vulcanizing reactants.
Prior Art Rejections
4. 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.
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.
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.
5. Claims 25, 27, 30, 31, 33, 35, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1632514 A1.
EP 1632514 A1 discloses within Synthesis Examples 1-4 (Table 1) and Synthesis Comparative Examples 1 and 3 (Table 2) the reaction of diisocyanates; HDI, MDI (instant claim 30), and H12MDI (instant claim 30), with polycarbonate diols, A-C, having applicants’ claimed molecular weight (corresponding to instant claims 25 and 33) and derived from applicants’ claimed diol reactants of instant claim 27, and butanediol, corresponding to applicants further diol (c), wherein the reactants are present such that the NCO/OH ratio is 0.98, corresponding to that of claims 25 and 33. With respect to claims 31 and 37, within paragraph [0034] of the reference, it is disclosed that the polyurethane may contain fillers and reinforcing fibers. With respect to claims 33 and 35, within paragraph [0027], processing temperatures are disclosed that meet those of the claims.
6. Claims 26 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1632514 A1.
EP 1632514 A1 discloses within Synthesis Examples 1-4 (Table 1) and Synthesis Comparative Examples 1 and 3 (Table 2) the reaction of diisocyanates; HDI, MDI, and H12MDI, with polycarbonate diols, A-C, having applicants’ claimed molecular weight (corresponding to instant claims 25 and 33), and butanediol, corresponding to applicants further diol (c), wherein the reactants are present such that the NCO/OH ratio is 0.98, corresponding to that of claims 25 and 33. Furthermore, within paragraph [0030], molar ratios of active hydrogen groups to isocyanate groups are disclosed of 0.8/1 to smaller than 1/1. As disclosed, these ratios are reversed from the disclosed NCO/OH ratios of the examples and the conventionally employed NCO/OH ratios of the polyurethane art; therefore, it appears that these ratios have been represented incorrectly; however, the position is taken, given the totality of the referenced teachings, such as those of the examples, that the skilled artisan would have understood that the ratios have been reversed and further would have understood that NCO/OH ratios according to those claimed would have been viable ratios to operate within, so as to arrive at the instant invention.
7. Claims 25, 27, 30, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,124,424.
US 5,124,424 discloses within Example 1 (column 7, lines 25-50) the reaction of isophorone diisocyanate with two polycarbonate polyols, having molecular weights of 2,000, one of which is derived from applicants’ claimed hexanediol reactant of instant claim 27, and cyclohexane-1,4-dimethanol (CHDM), corresponding to applicants further diol (c), wherein the reactants are present such that the NCO/OH ratio is 0.98, corresponding to that of claims 25 and 33. The reaction is conducted at 80 degrees Celsius, in accordance with instant claim 33.
8. Claims 25-27, 30-35, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3029086 A1.
EP 3029086 A1 discloses within Examples 9-16 and Comparative Examples 6, 7, 9 and 10 (See paragraphs [0259] and [0260] and Table 3), the reaction of MDI (instant claim 30) with polycarbonate polyol, having a molecular weight that falls within the claimed range of claims 25 and 33, and butanediol, corresponding to applicants further diol (c), wherein the reactants are present such that the NCO/OH ratio is within the claimed ranges of claims 25, 26, 33, and 34 and further wherein the reaction is conducted at 70 degrees Celsius, in accordance with claims 33 and 35. Regarding claim 27, it is disclosed within paragraph [0040] that preferred diols for producing the polycarbonate diol are pentanediol and hexanediol. Regarding claims 31 and 37, it is disclosed within paragraph [0230] that fillers, including carbon black and those that would have a reinforcing effect, such as glass fibers, may be incorporated within the polyurethane. Regarding claim 32, it is disclosed within paragraph [0231], section (a), that the polyurethane may be used to produce rolls.
9. Claims 28, 29, 36, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3029086 A1 in view of DE 10 2015 213512 A1 and either US 3,639,354 or US 3,509,233.
EP 3029086 A1 discloses within Examples 9-16 and Comparative Examples 6, 7, 9 and 10 (See paragraphs [0259] and [0260] and Table 3), the reaction of MDI (instant claim 30) with polycarbonate polyol, having a molecular weight that falls within the claimed range of claims 25 and 33, and butanediol, corresponding to applicants further diol (c), wherein the reactants are present such that the NCO/OH ratio is within the claimed ranges of claims 25 and 33 and further wherein the reaction is conducted at 70 degrees Celsius, in accordance with claim 33. Regarding claim 27, it is disclosed within paragraph [0040] that preferred diols for producing the polycarbonate diol are pentanediol and hexanediol.
10. Though it is disclosed within paragraph [0231], section (a), that the polyurethane may be used to produce rolls, the reference is silent regarding the process of claim 38. However, the production of roll covers wherein a polyurethane composition is applied by means of extrusion and then subjected to solidification and crosslinking (vulcanizing) was known at the time of invention, as disclosed by the second paragraph on page 2 of the English translation of DE 10 2015 213512 A1 (the secondary reference). Accordingly, it would have been obvious to use this known method to produce the rolls of the primary reference. Furthermore, regarding clams 28, 29, and 36, though the primary reference is silent regarding the use of the diols of claim 28 and the crosslinkers of claims 29 and 36, the use of these components to crosslink polyurethanes derived from polycarbonate diols was known at the time of invention. See abstract and column 4, lines 6-27 within US 3,639,354, and see abstract; column 3, lines 33-37; and column 4, lines 9-22 and 37-41 within US 3,509,233. The position is taken in view of these disclosures that one seeking to produce latently crosslinkable polyurethanes having attendant improved properties such as wear resistance, once crosslinked, yet retaining the processability of the non-crosslinked polyurethane within the extrusion equipment of the secondary reference, would have been motivated to incorporate the aforementioned components into the composition of the primary reference, so as to obtain crosslinked or vulcanized final polyurethane products or rolls.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765