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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,414,543. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to thermoplastic polyurethanes, process for preparing shaped articles, and articles produced therein wherein the thermoplastic polyurethane comprises at least the following components (a) a polyisocyanate, (b) at least one chain extender, and (c) a polyol mixture including a polyester polyol containing an aromatic block and another polyol component. The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. The patent claims include mechanical properties and more specific type of polyester polyol containing aromatic groups. Thus the invention of claims 1-21 of the patent is in effect a “species” of the “generic” invention of the application claims 1-20. Since application claims 1-20 are anticipated by claims 1-21 of the patent, they are not patentably distinct.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,077,628. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to thermoplastic polyurethanes, process for preparing shaped articles, and articles produced therein wherein the thermoplastic polyurethane comprises at least the following components (a) a polyisocyanate, (b) at least one chain extender, and (c) a polyol mixture including a polyester polyol containing an aromatic block and another polyol component. The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. The patent claims include mechanical properties and more specific type of polyester polyol containing aromatic groups. Thus the invention of claims 1-14 of the patent is in effect a “species” of the “generic” invention of the application claims 1-20. Since application claims 1-20 are anticipated by claims 1-14 of the patent, they are not patentably distinct.
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 1-10, 12, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2019/0322794 to Richter et al.
As to claims 1-2, 5-6, and 10, Richter discloses a thermoplastic polyurethane comprising at least one polyisocyanate composition, at least one chain extender, and at least one polyol composition comprising a polyol (P1) which has a molecular weight of from 1500 to 2500 and has at least one aromatic polyester block (B1) and at least one other polyol selected from aliphatic polyester polyols, polyether polyols or polycarbonate alcohols (Claim 1, 24, Examples, 0042-0048) wherein the ratio of aromatic block polyester polyol to the additional polyol is 5:1 to 1:5 (0048).
As to claims 3-4, Richter discloses polyethylene terephthalate blocks within the polyester polyol (Synthesis example 4).
As to claims 7-9, Richter discloses 4,4-diphenylmethane diisocyanate or aliphatic diisocyanates selected from hexamethylene diisocyanate or 4,4-methylenedicyclohexyl diisocyanate (0055).
As to claim 12, Richter discloses hardness values of 87 or 89 Shore A (Table 3).
As to claims 15-17, Richter discloses a process for preparing a shaped body comprising preparing the thermoplastic polyurethane and producing a shaped body from the thermoplastic polyurethane by extrusion, injection molding, or sintering methods (0138-0141).
Claims 1-10, 15-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2019/0359823 to Tomovic et al.
As to claims 1-2, 5-6, and 10, Tomovic discloses a thermoplastic polyurethane comprising at least one polyisocyanate composition, at least one chain extender, and at least one polyol composition comprising a polyol (P1) which has a molecular weight of from 1500 to 2500 and has at least one aromatic polyester block (B1) and at least one other polyol selected from aliphatic polyester polyols, polyether polyols or polycarbonate alcohols (Claim 1, 9, Examples, 0071-0076) wherein the ratio of aromatic block polyester polyol to the additional polyol is 5:1 to 1:5 (0051).
As to claims 3-4, Tomovic discloses polyethylene terephthalate blocks within the polyester polyol (Synthesis example 4).
As to claims 7-9, Tomovic discloses 4,4-diphenylmethane diisocyanate or aliphatic diisocyanates selected 4,4-methylenedicyclohexyl diisocyanate (0166-0167).
As to claims 15-17, Tomovic discloses a process for preparing a shaped body comprising preparing the thermoplastic polyurethane and producing a shaped body from the thermoplastic polyurethane by extrusion, injection molding, or sintering methods (Claims 12-13).
As to claim 20, Tomovic discloses applications include phone parts or plugs (0085-0086).
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 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2019/0322794 to Richter et al.
As to claims 11 and 13-14, Richter discloses a thermoplastic polyurethane comprising at least one polyisocyanate composition, at least one chain extender, and at least one polyol composition comprising a polyol (P1) which has a molecular weight of from 1500 to 2500 and has at least one aromatic polyester block (B1) and at least one other polyol selected from aliphatic polyester polyols, polyether polyols or polycarbonate alcohols (Claim 1, 24, Examples, 0042-0048) wherein the ratio of aromatic block polyester polyol to the additional polyol is 5:1 to 1:5 (0048). Richter discloses a transparent TPU (0031).
With regard to the transmittance and staining properties, 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 including TPUs comprising the reaction product of aromatic containing polyester polyols, chain extender, and diisocyanates. Therefore, the claimed effects and physical properties 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.
Claims 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2019/0359823 to Tomovic et al.
As to claims 11 and 13-14, Tomovic discloses a transparent thermoplastic polyurethane comprising at least one polyisocyanate composition, at least one chain extender, and at least one polyol composition comprising a polyol (P1) which has a molecular weight of from 1500 to 2500 and has at least one aromatic polyester block (B1) and at least one other polyol selected from aliphatic polyester polyols, polyether polyols or polycarbonate alcohols (Claim 1, 9, Examples, 0071-0076) wherein the ratio of aromatic block polyester polyol to the additional polyol is 5:1 to 1:5 (0051).
With regard to the transmittance and staining properties, 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 including TPUs comprising the reaction product of aromatic containing polyester polyols, chain extender, and diisocyanates. Therefore, the claimed effects and physical properties 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.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2019/0322794 to Richter et al. in view of CN-112724364 to Li et al.
As to claims 18-20, Richter discloses a thermoplastic polyurethane comprising at least one polyisocyanate composition, at least one chain extender, and at least one polyol composition comprising a polyol (P1) which has a molecular weight of from 1500 to 2500 and has at least one aromatic polyester block (B1) and at least one other polyol selected from aliphatic polyester polyols, polyether polyols or polycarbonate alcohols (Claim 1, 24, Examples, 0042-0048) wherein the ratio of aromatic block polyester polyol to the additional polyol is 5:1 to 1:5 (0048). Richter discloses a transparent TPU (0031). Richter discloses many application end uses of the TPU, however, Richter does not expressly disclose the use as a mobile phone cover.
However, within the same field of endeavor, Li discloses a thermoplastic polyurethane with hardness values of 75-85 Shore A (same Richter) that can be used as phone protective cases or wristbands (Abstract/Introduction). It is maintained that it would have been obvious to one have ordinary skill in the art to have produced the claimed mobile phone cover or wristbands from the TPU of Richter, per the teachings of Li et al as the molded article which is produced from patentees’ process with the reasonable expectation of success. This is because teaching of “desired final products” implicity suggest the production of any conventional product, inclusive of mobile phone covers as presently claimed, to one having ordinary skill in the art.
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763