DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Species D (claims 1-4) in the reply filed on 11/17/2025 is acknowledged.
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 4-6 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.
Claim 1 requires the presence of MDI, at least one polyol, and at least one crosslinker. Claim 1 further requires that the MDI and PTMEG (the polyol) are biobased.
Claim 4 contradicts this requirement by stating that the MDI where not identified as biobased is petroleum based. Claim 1 requires that the MDI is biobased. This is a contradiction for the selected species.
Claim 5 states that the polyol wherein not identified as biobased is petroleum based. As stated above, claim 1 requires that the PTMEG is biobased. It is unclear if there is a second polyol being required in the “at least one”, therefore this claim is indefinite.
Claim 6 is indefinite for the same reasons as above where it is not clear if the “at least one” is requiring a second crosslinker or not.
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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gajewski et al, USP 6,027,769 in view of Turunen et al, WO 2021/074492 (already of record).
Regarding claim 1, Gajewski teaches a cylindrical roll that can be used in papermaking (column 2 lines 10 and 51) with a roll cover comprising a matrix material composed of polyurethane formed essentially form 4,4’-MDI (column 4 line 50) as an isocyanate (column 4 line 36), at least one polyol (column 4 line 33), and at least on crosslinker (column 5 line 20);
wherein at least one of the at least one polyol is PTMEG (column 5 lines 39-42) and a mixture of PTMEG and MCDEA as crosslinker (see claim 15).
Gajewski further teaches that the PTMEG can be created with a reaction of organic monomers (see claim 16 and column 5 line 44-54), but doesn’t specifically ay that the materials are biobased to an extent of at least 20 % by weight as claimed.
In the same field of endeavor of treating papermaking rollers with a cover of polyurethan, Turunen is presented.
Turunen teaches a papermaking roller with a cover made up of polyurethan, a polyol, isocyanates and other matching materials (see claims 1 and 15) wherein the materials for the polyurethan matrix is made up of at least 50% of recycled/ biobased materials [0014]. The benefit for doing so is to utilize environmentally friendly and physically safer materials to handle as compared to the crude oil dependent form old materials (see page 3).
It would have been obvious to one of ordinary skill in the art to utilize the biobased materials of Turunen to produce the roll cover of Gajewski as both are directed to the same product covering papermaking roller with the same type of polyurethane but with the added benefit of utilizing materials with the advantage of being environmentally friendly in a known and conventional manner.
Regarding claims 2 and 7-10, both Gajewski and Turunen teaches the use of rollers in a papermaking process while treating a cellulose web. Turunen goes as far as saying that “non-limiting examples of various coated rolls are calendar rolls, coater rolls, reeling drums, press rolls and guide rolls” (see [002]). While the term “shoe press” is not utilized, it would have been obvious to one of ordinary skill in the art that the teaching of a press roll in the papermaking process would include the use of a show press even if it is not specifically singled out.
Regarding claim 3, Turunen further teaches that the biobased material can be to an extent of at least 50% [0014].
Regarding claims 4-6, Turunen remains as applied above and further teaches that the goal of the biobased materials is to replace the crude oil based (petroleum) products [0011]. Turunen further states that the biobased materials of the invention should be at least 50% of the polymer matrix leaving the remaining to be the older crude oil based original materials. Therefore there is an implied teaching of the non-identified materials being petroleum based, as the biobased materials are a replacement of crude oil driven starting materials.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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