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 Status
Claims 1-20 are pending.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 4, 7, 10, 11, 12, 16, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pellacani et al (herein ‘Pellacani; US 2020/0291168 A1).
Regarding claims 1, 4, 7, 16, and 20; Pellacani discloses a polyurethane composite prepared by mixing the following components: a polyurethane reaction system, and at least one reinforcing material; wherein, the polyurethane composite is prepared through pultrusion process, filament winding process or molding process [abstract, p. 0016, 0040] [see instant claims 1 and 7]; wherein the polyurethane reaction system comprises:
Component A), comprising: at least one polyisocyanate, exemplified as Isonate OP50 (which is a 50:50 weight % mixture of 4.4'-MDI and 2,4'-MDI) [see instant claim 16];
Component B), comprising:
b1) at least one polyol, exemplified as Voranol P1010 (which is a polypropylene oxide diol with molecular weight about 1000; used in an amount of 31.6 wt. % relative to the total weight of the PU reaction system - calculated from ex. B, table 1) or Voranol P2000 (which is a polypropylene oxide diol with molecular weight about 2000) and TPG ( which is tripropylene glycol);
b2) at least one compound having the structure of formula (I) wherein R1 is methyl, R2 is an alkylene having 2 carbon atoms, and n=1, exemplified as hydroxyethyl methacrylate (HEMA); used in an amount of 15 wt. % based on the total weight of the PU reaction system(calculated from ex. B, table 1), or used in amount of 24 wt. % based on the total weight of the PU reaction system(calculated from ex. C, table 1) [see instant claims 4 and 20];
b3) at least one hydroxyl-free multifunctional (meth)acrylate, exemplified as diethylene glycol dimethacrylate or triethylene glycol dimethacrylate;
Component C), a free radical initiator exemplified as Trigonox 23 [table 1, ex. B, ex. C].
Regarding claim 10; Pellacani discloses the polyurethane composites can be used with glass fibers as well as carbon fibers [p. 0040]
Regarding claims 11 and 12; Pellacani discloses the polyurethane composites can be used in applications such as, for example, wind turbines, boat hulls, truck bed covers, automobile trim and exterior panels, pipe, tanks, window liners, seawalls, composite ladders and the like [p. 0040].
Claim(s) 2 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pellacani (US 2020/0291168 A1) as evidenced by Dow (ISONATE™ 50 O,P' Pure MDI). The disclosure of Pellacani is above and is applied here as such.
Pellacani exemplifies the use of Isonate OP50, which is a 50:50 weight % mixture of 4.4'-MDI and 2,4'-MDI; NCO content 33 wt.%; viscosity value of 10 mPa*s as evidenced by Dow.
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.
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.
Claim(s) 5, 6, 8, 9, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pellacani (US 2020/0291168 A1). The disclosure of Pellacani is above and is applied here as such.
Regarding claim 5; Pellacani exemplifies the use of hydroxyl-free multifunctional (meth)acrylate, diethylene glycol dimethacrylate, at 32 wt. % relative to the total weight of the PU reaction system [table 1, ex. C]. Although Pellacani fails to exemplify a composition wherein the hydroxyl-free multifunctional (meth)acrylate is present in the claimed range, the general teachings of Pellacani are that the PU reaction system comprises 10 to 90 wt. % reactive diluent, wherein the reactive diluent comprises at least 20 to 80 wt. % of glycols and/or polyols with terminal acrylate or methacrylate groups, which correspond to claimed component (b3) [p. 0005-0006; p. 0026-00027, 0029]. A skilled artisan would appreciate that the general teachings of Pellacani embrace embodiments wherein glycols and/or polyols with terminal acrylate or methacrylate groups (b3) are present in an amount of 2 to 72 wt. % relative to the total weight of the PU reaction system. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Pellacani wherein glycols and/or polyols with terminal acrylate or methacrylate groups are present in an amount of 2 to 72 wt. % relative to the total weight of the PU reaction system, as Pellacani teaches this to be a suitable range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6; Pellacani is silent with respect to the pot-life at 35 °C of the polyurethane reaction system as well as the linear shrinkage rate of the polyurethane reaction system. However, a person with ordinary skill in the art would expect a composition resulting from the teachings of Pellacani to obviously embrace embodiments capable of satisfying these properties as the composition of Pellacani significantly satisfies the chemical and material limitations (and amounts thereof) of the claimed composition.
Regarding claim 8; Pellacani exemplifies a multi-step process wherein the polyol, isocyanate and end-capping agent are first reacted to obtain the urethane acrylate [p. 0061]. However, Pellacani teaches an alternative “one step process” wherein the isocyanate is reacted simultaneously with a mixture of the polyol and the compound containing the nucleophilic group (e.g. hydroxyl, amino or mercapto) and ethylenically unsaturated functionalities derived from (meth)acrylate [p. 0020].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the urethane composite of Pellacani in a manner in which both free radical and addition polymerization mechanisms are occurring simultaneously, as Pellacani a suitable “one step process” preparation method.
Please see MPEP 2144.04.IV.C. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding claim 9; Pellacani teaches a polyurethane composite prepared by mixing a polyurethane reaction system, and at least one reinforcing material, such as glass fibers or carbon fibers; wherein, the polyurethane composite is prepared through pultrusion process, filament winding process or molding process [abstract, p. 0016, 0040]. Pellacani fails to exemplify a prepared polyurethane composite.
However, Pellacani teaches fillers that may be included in the curable resin for a number of different reasons, such as to provide pigmentation, flame retardance, insulation, thixotropicity, aid with dimensional stability and physical properties, and reduced cost of the composite structure [p. 0036]. Pellacani further teaches the amount of filler used will depend of the type of filler and reason for its presence in the system, wherein such fillers and reinforcing materials may be used in much larger amounts, in an amount that is in fact comparable or even larger than the amount of curable resin, comprising the urethane acrylate plus the reactive diluent [p. 0036].
As Pellacani explicitly teaches a polyurethane composite prepared by mixing the polyurethane reaction system with at least one type of reinforcing filler, and further teaches that the filler may be present in an amount even larger than the amount of polyurethane reaction system, a skilled artisan would appreciate that the general teachings of Pellacani embrace embodiments capable of satisfying the range of instant claim 9. Furthermore, in light of the general teachings of Pellacani, it would have been obvious to on having ordinary skill in the art at the time the invention was filed to prepare the composite of Pellacani with a reinforcing filler in an amount that is comparable or even larger than the amount of curable resin, which reads over the claimed content of reinforcing filler being greater than or equal to 40% of the overall weight of the composite.
Regarding claim 19; Pellacani utilizes 2-hydroxyethyl methacrylate as an end-capping species, as well as chain extender, in examples B + C of table 1. Pellacani fails to exemplify a composition comprising hydroxypropyl methacrylate. However, Pellacani teaches preferred examples of the (meth)acrylate derived ethylenically unsaturated capping functionalities include 2-hydroxyethyl methacrylate (HEMA), 2-hydroxypropyl methacrylate (HPMA), 2-hydroxyethyl acrylate (HEA), 2-hydroxypropyl acrylate (HPA) and related compounds [p. 0019].
In light of this, it would be obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Pellacani with a 2-hydroxypropyl acrylate (HPA) end-capping moiety or reactive diluent in lieu of HEMA as Pellacani teaches HPA to be a suitable alternative to HEMA.
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pellacani (US 2020/0291168 A1) as evidenced by Dow (VORANATE™ M 2940 Isocyanate). The disclosure of Pellacani is above and is applied here as such.
Pellacani exemplifies the preparation of the curable resin with an MDI isocyanate component having a functionality of 2.0. Although Pellacani fails to exemplify an isocyanate component having a functionality above 2.0, Pellacani teaches suitable examples of isocyanates include aromatic isocyanates such as Voranate M2940, an MMDI MDI isocyanate blend having a functionality of 2.2–2.3 and an NCO content of 31%, as evidenced by Dow [p. 0018].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Pellacani with an isocyanate having a functionality of 2.1-2.9 and an NCO content of 30-32 wt. % as Pellacani explicitly teaches isocyanates, such as Voranate M2940, as suitable alternatives to the exemplifies species. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 3, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pellacani (US 2020/0291168 A1) as evidenced by Dow (VORANOL™ 230-660 Technical Data Sheet) and Dow (VORANOL™ 1010L Technical Data Sheet). The disclosure of Pellacani is above and is applied here as such.
Regarding claim 3 and 18; Pellacani teaches the use of at least one polyol (b1) in the preparation of the curable PU composition [p. 0018] Pellacani exemplifies the use of Voranol P1010, which is a polypropylene oxide diol having a functionality of 2, with molecular weight of about 1000, and a hydroxyl number of 106-114 mg KOH/g, as evidenced by Dow; used in an amount of 31.6 wt. % based on the total weight of the PU reaction system (calculated from ex. B, table 1).The disclosure of Pellacani places no specific limitations regarding the hydroxyl value of the polyol species.
Although Voranol P1010 fails to satisfy the claimed range for the hydroxyl value of the polyol, the general teachings of Pellacani are that polyols used may be polyether or polyester polyols that feature various chain lengths and functionalities in relation to the desired performance level of the resulting polymer [p. 0018]. Furthermore, Pellacani teaches that, preferably, the polyols have a functionality of 2.0 or greater [p. 0018]. Pellacani teaches examples of preferred polyether polyols include Voranol 230-660 [p. 0018], which is a polyether triol, having a functionality of 3, with a molecular weight of about 250 Da, and a hydroxyl number of 660.5 mg KOH/g, as evidenced by Dow.
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed that embodiments of Pellacani embrace polyols that are capable of satisfying the claimed hydroxyl value range. Furthermore, one having ordinary skill in the art would find it obvious to prepare the composition of Pellacani with the Voranol 230-660 polyol as Pellacani teaches it as a suitable polyol, and Pellacani teaches that preferably the polyol has a functionality of 2.0 or greater.
Regarding claim 17; Claim 17 defines the polyol by how the product was made. Therefore claim 17 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Please see MPEP 2113. In the present case, the recited steps (preparation with a glycerol starter) imply a polyol having a functionality of 3.
Considering the teachings of Pellacani, as discussed regarding instant claims 3 and 18, a skilled artisan would recognize that embodiments of Pellacani obviously embrace polyols having a functionality of 3 and a hydroxyl value within the range of 106 to 660 KOH/g. In light od this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Pellacani with a polyol component having a functionality of 3, and a hydroxyl value of 350 mg KOH/g.
Please see MPEP 2144.05.II.A. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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