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 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.
Claims 1-10 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.
Applicants define their invention as being a “thermoplastic polyurethane cured product” but, as one ordinary skill appreciates, cured (generally synonymous with crosslinked) is a chemical condition where the polymer would not exhibit thermoplastic characteristics. Questions as to intent are created when a polymer material is simultaneously characterized as being a thermoplastic, but also cured. The polyurethane mentioned in the body of the claim is described as being a thermoplastic, there being no indication that it has undergone curing/crosslinking, thus casting further doubt on the polyurethane having been properly labeled in the preamble as cured.
Read in the context of the broader Specification, the Examiner believes that, by cured, Applicant may have intended “polymerized”. If this is correct, the Examiner would argue that the term is superfluous given that the polyurethane is already suggestive of a polymer material. In any case, Applicant should, in their reply, clarify the record as to their intent.
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 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwon et al., EP 3957668 as evidenced by the technical data sheets for Irganox 1010 and Irgafos 126.
Applicant is directed to Table 1 and the subject matter presented under the headings <Preparation Example 1>: Preparation of a polyester polyol, <Preparation example 2>, and Comparative preparation example 1>.
Table 1 summarizes the makeup of several compositions comprising a polyester- or polytetramethylene oxide polyol, chain extender, diisocyanate blend, and mixture of stabilizers/UV absorbers including the hindered phenol stabilizer Irganox 1010, the phosphite secondary antioxidant Irgafos 126, and the hindered amine compound Tinuvin 765 (see paragraph [0081] of the reference). Zikasorb is a brand name for line of UV absorbers.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kwon et al., EP 3957668. Kwon is not forthcoming as to the NCO:OH ratio contributed by the diisocyanate mixture and polymer polyol/chain extender respectively but the Examiner takes notice of the fact that one of ordinary skill would immediately regard a comparably-constituted system with a 1:1 ratio of these as being obvious.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Young, U.S. Patent Application Publication No. 2021/0155795.
Applicant is directed to the abstract where the exact same classes of stabilizing additive as are recited in claim 1 are added to a polymer. In Table 1, there is summarized the makeup of several exemplary compositions comprising 0.25% by weight of Cyasorb 1164 (a triazine-based UV absorber), 1 wt.% of the phenol antioxidant, Irganox 1010, 0.5 wt.% of the phosphite antioxidant Irgafos 168, and 0.25 wt.% of the hindered amine Cyasorb 3529. See [0051] where each of the trade names is defined. Whereas the Examiner appreciates that the host polymer is a polyester in all of these examples, it is elsewhere [0058] contemplated that this same package can be used to impart stability to a variety of polymer types including polyurethanes [0058].
Allowable Subject Matter
Claims 2-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 2 is confined to one exact ratio of the three components that make up the light stabilizer mixture. Young teaches ranges in association with each of the corresponding compounds. While one could certainly conceive of quantities of the phosphorus-, hindered amine, and phenol components for which the ratio would be satisfied, and where their amounts comply with said ranges in [0051], there is nothing directing a practitioner of the invention defined by that disclosure to formulate a mixture having those precise relative amounts of the aforementioned materials. Claim 3 requires the use of very narrow quantities of an isocyanate and chain extender in relation to the polyol and claims 4-6 are all dependent from it. Kwon, curiously, doesn’t mention any catalysts to promote polyurethane formation. While the benefits of catalyst usage are very familiar to the skilled artisan, there are a multitude of these available for polyurethane synthesis. Further, manufactures have been long trending away from using tin-based catalysts given their documented toxicity concerns thus there is nothing motivating the selection of stannous octoate. Claims 8 and 9 are also substantially limiting claims naming only one or two phosphorus-, hindered amine, phenol- and UV absorber components of interest whereas the literature discloses numerous permutations of each of these. Neither Kwon nor Young teach any of these. It should be further noted that claim 9 only embraces 4 unique combinations of said two phosphorus-, hindered amine, phenol- and UV absorber and any attempt to invoke several more references to establish equivalency would, in the Examiner’s opinion, require impermissible hindsight.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 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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September 4, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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