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 .
Specification
The disclosure is objected to because of the following informalities: In line 23 of page 7, “no less than less is than” is unclear. The examiner recommends that this be amended to “less than”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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.
Claim 5 recites the dispersion of claim 1 comprising 0.5 to 40% of component (e), but claim 1 does not recite a component (e), and it is unclear what the component (e) is supposed to refer to. For the purposes of examination, any additional component is considered to meet the limitations of component (e).
Claims 10-11 recite a process comprising a “dispersing step through addition of water to form the prepolymer A) or transfer of the prepolymer A) to an aqueous receiver vessel”. It is therefore unclear whether the addition of water is necessary to form the prepolymer A), or whether the prepolymer A) is already obtained from the previous step(s) and is simply being dispersed in water.
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.
Claims 1 and 3-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blum (U.S. PG Pub. No. 2008/0194775).
In paragraphs 9-14 Blum discloses aqueous UV-hardenable dispersions based on polyisocyanates. The dispersion comprises one or more polyisocyanates with an average functionality of at least 2.2, comprising an oligomeric polyisocyanate of hexamethylene diisocyanate with urethane, biuret, iminooxidiazindione and/or isocyanate structural units, meeting the limitations of component (a) of claims 1. The dispersion of Blum further comprises at least one monohydroxy-functional compound containing (meth)acryloyl groups, corresponding to component (b) of claim 1 when the (meth)acryloyl groups include at least one acryloyl group. The dispersion of Blum further comprises a component (c) which can be (c2), non-hydrophilically acting groups comprising at least one isocyanate reactive group, meeting the limitations of component (c) of claim 1. It is noted that the “and/or” language in paragraph 12 of Blum indicates that the ionic hydrophilizing group is not required, therefore meeting the proviso of claim 1 that the reaction product have no ionogenic or ionically hydrophilizing groups. The dispersion of Blum also comprises one or more difunctional and/or polyfunctional amines or hydroxyamines as a chain extender, and in paragraph 45 discloses various suitable diamines and diethylenetriamine meeting the limitations of component (d) of claim 1. Claim 1 is therefore anticipated by Blum.
In paragraphs 30-31 Blum discloses that the component (a) can comprise specific oligomeric polyisocyanates in the relative amounts recited in claims 3-4. In paragraphs 23 and 49-53 Blum discloses that the composition can comprise 0.5 to 40% by weight of a component (e), as recited in claim 5. In paragraphs 37-39 and 42 Blum discloses that the hydrophilizing components can be monohydric polyethylene oxide polyether oxides having a molecular weight of 500 to 1100, as recited in claim 6. In paragraphs 47-48 Blum discloses that the component (d) is preferably used to provide a degree of chain extension of 100 to 200%, as recited in claim 7. In paragraph 25 Blum discloses that the dispersions have an acid number of 0 to 26, within the range recited in claim 8. In paragraph 45 Blum discloses that the component (d) can be ethylenediamine, 1,6-hexamethylenediamine, hydrazine (hydrate), or diethylenetriamine, all as recited in claim 9.
In paragraph 62 Blum discloses a process for producing the dispersions where an isocyanate-functional prepolymer (A) is produced by reacting the components (a), (b), and (c) In one or more reaction steps with an excess of component (a), followed by a chain extension step by addition of component (d), followed by a dispersing step by addition of water to the prepolymer (A) and transfer of the prepolymer (A) to an aqueous receiver vessel, as recited in claim 10. In paragraph 63 Blum discloses a similar method where the dispersing step is performed prior to the chain extension step, as recited in claim 11. Since Blum provides the dispersion of claim 1, the method of claim 12 does not recite any additional steps other than providing the dispersion, and the glass fiber sizing of claim 13 does not require any additional components other than the dispersion, claims 12-13 are also met by Blum.
In light of the above, claims 1 and 3-13 are anticipated by Blum.
Claim Rejections - 35 USC § 103
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 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Blum.
The discussion of Blum in paragraph 7 above is incorporated here by reference. Blum discloses a dispersion meeting the limitations of claim 1. In paragraphs 17-22 Blum discloses that components (a), (b), and (d) are present in amounts matching or falling within the ranges recited for components (a), (b), and (d) of claim 2. Blum also discloses that component (c) is present in an amount of 1.5 to 19% by weight, overlapping the range recited for component (c) of claim 2. See MPEP 2144.05(I): “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);” Claim 2 is therefore rendered obvious by Blum.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Rische (U.S. PG Pub. No. 2004/0195731) in view of Blum.
In paragraphs 9-14, Rische discloses a process for preparing glass fiber-reinforced plastics, comprising applying a sizing composition to the glass fiber, as in step (A) of claim 15, introducing the coated glass fiber into the plastic, as in step (B) of claim 15, and carrying out a thermal cure. The sizing composition of Rische comprises a polyurethane, and in paragraphs 8 and 15 Rische discloses that the polyurethane is in the form of an aqueous UV-curable dispersion. In paragraphs 15-16, 24, 26-30, and 51 Rische discloses that the polyurethanes can be prepared by the reaction of precursor polyisocyanates, nonionic hydrophilicizing agents, monohydroxy-functional acrylates, and diamines. Curing the dispersion of Rische will lead to at least some reaction of the acrylate groups with the groups of the plastic matrix to form covalent bonds as recited in step (C) of claim 15.
While the polyurethane dispersion in the sizing composition of Rische is similar to that of the currently presented claims, Rische does not specifically disclose the isocyanate functionality of the precursor isocyanate used to prepare the polyurethane dispersion.
The discussions of Blum in paragraphs 7 and 12 above are incorporated here by reference. Blum discloses a dispersion similar to that of Rische and which meets the limitations of the dispersion of claim 1, including an average functionality of at least 2.2, as disclosed in paragraph 9 of Blum. The inclusion of the dispersion of Blum as the polyurethane dispersion in the sizing composition of Rische therefore meets the limitations of the process for producing glass fiber-reinforced plastics of claim 15, the glass fiber-reinforced plastics of claims 16-17, the glass fibers of claims 13-14, and the method for producing glass fiber sizing of claim 12 for the case where the sizing comprising additional components beside the dispersion of claim 1.
It would have been obvious to one of ordinary skill in the art to include the dispersion of Blum as the polyurethane dispersion in the sizing composition of Rische, since Blum teaches in paragraph 82 that it suitable for combining with blocked polyisocyanates (such as those disclosed in paragraph 10 of Rische) to form a coating agent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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