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 .
Prior Art Rejection
2. 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.
3. Claims 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2006/037026 A2.
WO 2006/037026 A2 discloses a polyurethane composition, used as coating on substrates, including metal and vehicles (see page 4, lines 4-1`3), wherein the polyurethane composition comprises a prepolymer produced by reacting toluene diisocyanate (an aromatic polyisocyanate) with a polyol, such as polyether polyol, polyester polyol, and polycaprolactone polyol (see page 5, line 15 through page 7, line 7 and page 9, lines 3-12). The polyurethane is produced by reacting the prepolymer with chain extenders (see page 9, lines 23-30). Tear strengths are disclosed within Table IX of 80 to 122 kN/m and type A hardness values are disclosed within Table XI of 95 and 97. Though the claimed temperature conditions are not disclosed, given the disclosed tear strengths and hardness values and considering that the polyurethane composition components correspond to those claimed, the position is taken that the claimed properties at the claimed temperature conditions are inherent properties of the disclosed composition. Regarding claim 5, statements of intended use do not carry patentable weight.
4. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2006/037026 A2 in view of EP 1369614 A1.
WO 2006/037026 A2 discloses a polyurethane composition, used as coating on substrates, including metal and vehicles (see page 4, lines 4-13), wherein the polyurethane composition comprises a prepolymer produced by reacting toluene diisocyanate (an aromatic polyisocyanate) with a polyol, such as polyether polyol, polyester polyol, and polycaprolactone polyol (see page 5, line 15 through page 7, line 7 and page 9, lines 3-12). The polyurethane is produced by reacting the prepolymer with chain extenders (see page 9, lines 23-30). Tear strengths are disclosed within Table IX of 80 to 122 kN/m and type A hardness values are disclosed within Table XI of 95 and 97. Though the claimed temperature conditions are not disclosed, given the disclosed tear strengths and hardness values and considering that the polyurethane composition components correspond to those claimed, the position is taken that the claimed properties at the claimed temperature conditions are intrinsic properties of the disclosed composition.
5. Though the primary reference discloses that compositions may be applied to metal substrates and vehicles, the reference fails to disclose the application of the compositions to springs. Still, the application of polyurethane coatings to springs was known at the time of invention, as evidenced by the teachings within EP 1369614 A1 at paragraphs [0010] and [0011]. EP 1369614 A1 discloses that polyurethanes having Shore A hardness values of 50-100 may be used to coat springs. Accordingly, given this teaching, the position is taken that it would have been obvious to apply the polyurethane composition of the primary reference to such items as springs to provide for their protection from corrosion and damage.
Conclusion
6. 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 (;[AltContent: ]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
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