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 .
Response to Amendment
This is a response to the amendment filed 4/7/2026. Claims 1, 2, 4-6, and 10 have been amended.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues the process as claimed surprisingly results in no bubbles. However, Examiner notes the prior art clearly shows holding reactant in vacuum tanks is known to reduced bubbling and further the relative humidity (RH) is a well-known factor for bubbling. The Examiner has argued it well understood in the prior at that elevated (RH) conditions during polyurethane coating and curing increase likelihood of bubble formation often leading to blistering and foaming of coated polyurethane layers as RH increases, thus creating incentive to control RH to be lower during coating when porosity and bubbling is not desired (See, for example, Knight, JR et al., page 1, paragraph [0040], teaching the “relative humidity…during the application of polyurethane coating components can adversely affect blistering or bubbling in the material”; Seiffert et al., page 1, paragraph [0005], teaching “[i]n the case of relative humidities exceeding 50%, problems occur…when the two-component polyurethanes…cure…in an uncontrolled manner and form bubbles….”; and/or Brahm et al., col. 8, lines 1-30 and Table I, indicating elevated relative humidity often leads to blistering when curing isocyanate/polyol polyurethanes and states lower relative humidity such as 30% in Table I create “favorable conditions” for curing such polyurethanes). It is clear the prior art demonstrates relative humidity during polyurethane coating is a known, result-effective variable that directly influences moisture-induced gas formation leading to bubbling defect such as blistering and foaming. Thus, it would not appear surprising or unexpected that controlling to lower RH level reduces bubbling because this is a well understood contributor to bubbling in the prior art.
Examiner further notes all Examples in the instant specification utilize RH of 65% or lower and thus Applicant does not appear to have sufficient evidence for showing unexpected results. The Examiner notes a showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979); also see MPEP 717.02(e). The closest prior art teaches all elements of the instant claims except relative humidity during coating, and thus Applicant must show that the conditions of the closest prior art, i.e. separately storing reactants in vacuum tanks, leads to bubbling at over 65% RH. This cannot possibly be demonstrated without evaluating processes outside the claimed range for RH.
Examiner notes every example in the instant specification with low pressure inside the holding tanks, which clearly is taught in the prior art, results in no bubbling. Applicant has no example showing separate vacuum tank storage of the reactants results in bubbling solely because of RH over 65%, and in fact has no examples at all with RH over 65%. Example 9 demonstrates bubbling at 65% RH with reactants held at ambient temperatures in the tanks, but Example 11 indicates vacuum storing the reactants eliminates bubbling at the same RH. This indicates vacuum storage is more important to preventing bubbling than RH and that RH may only be critical when the reactants are not stored at vacuum. Regardless, since Applicant has no examples showing the conditions of the closest prior art (i.e. separate vacuum storage of reactants) with RH outside the claimed range or without controlling RH, Applicant cannot overcome the previous case of prima facie obviousness. As such, the previous rejections are repeated herein.
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(s) 1, 3, 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Product Data Sheet SikaBiresin PX523, July 2021 (hereinafter “Sika”) in view of Knight, JR et al. (US 2006/0200263), Seiffert et al. (US 2024/0336817), and/or Brahm et al. (US 6,410,095).
Regarding Claims 1, 4 and 6, Sika teaches a process for preparing a polyurethane sheet, comprising the following steps: (i) providing a release layer (See page 3, teaching a “silicone mold,” the mold being a layer and silicone being a well-known release material, thus reasonably making the silicone mold a release layer as claimed), (iii) forming a polyurethane system by mixing an isocyanate component (A) and a polyol composition component (B), wherein the components (A) and (B) are kept separately in tanks under vacuum before mixing with each other, and applying the polyurethane system to the release layer; (v) curing the polyurethane system to form a polyurethane layer; and (vi) separating the release layer from the polyurethane layer to form a polyurethane sheet, wherein the polyurethane system is formed by mixing an isocyanate component (A) and a polyol composition component (B), and wherein the components (A) and (B) are kept separately in tanks under vacuum before mixing with each other (See page 3, teaching isocyanate and polyol are each separately degassed under vacuum, i.e. vacuum casting machine, prior to mixing and applying to the silicone mold release layer via casting, curing, and implicitly removing from the mold to retrieve the part; Examiner submits vacuum degassing of each precursor individually implies an enclosed space and separated space for each component subject to vacuum degassing that is reasonably considered to be a tank; further, in the “manual utilization,” thin molded layers of only 5 mm thickness are taught, such thickness layers reasonably being considered “sheets” as claimed). Examiner submits the vacuum application degassing will result in reduced bubbling.
Sika is silent as to relative humidity. However, it is well-known the elevated relative humidity (RH) conditions during polyurethane coating and curing increase likelihood of bubble formation often leading to blistering and foaming of coated polyurethane layers as RH increases, thus creating incentive to control RH to be lower during coating (See, for example, Knight, JR et al., page 1, paragraph [0040], teaching the “relative humidity…during the application of polyurethane coating components can adversely affect blistering or bubbling in the material”; Seiffert et al., page 1, paragraph [0005], teaching “[i]n the case of relative humidities exceeding 50%, problems occur…when the two-component polyurethanes…cure…in an uncontrolled manner and form bubbles….”; and/or Brahm et al., col. 8, lines 1-30 and Table I, indicating elevated relative humidity often leads to blistering when curing isocyanate/polyol polyurethanes and states lower relative humidity such as 30% in Table I create “favorable conditions” for curing such polyurethanes). It is clear the prior art demonstrates relative humidity during polyurethane coating is a known, result-effective variable that directly influences moisture-induced gas formation leading to bubbling defect such as blistering and foaming. Thus, a person of ordinary skill in the art at the time of invention would have been motivated to control the coating environment of two-part, isocyanate/polyol, polyurethanes, such as in Sika, to reduce humidity levels, such as 35% or below. Doing so would have predictably created favorable conditions for coating and curing the polyurethane as a routine measure to limit gas-related defects during curing since higher relative humidity exacerbates defects such gas-related bubbling defect such as blistering and foaming.
Regarding Claim 3, Sika teaches degassing under vacuum and it would have been apparent lower pressures effect faster and more effective degassing, thus as least rendering obvious extremely low pressures under 500 mbar.
Claim(s) 1-4, 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moioli et al. in view of Thompson (US 4,083,815) and/or Jourquin et al. (EP 0379246), and Knight, JR et al., Seiffert et al., and/or Brahm et al.
Regarding Claims 1, 4 and 6, Moioli et al. a process for preparing a polyurethane sheet with reduces bubbles, comprising the following steps: (i) providing a release layer, (iii) forming a polyurethane system by mixing an isocyanate component (A) and a polyol composition component (B), wherein the components (A) and (B) are kept separately in tanks under vacuum before mixing with each other, and applying the polyurethane system to the release layer (See page 1, paragraphs [0014] and [0017]-[0019], teaching applying the bi-component polyurethane to a release film; and see page 2, paragraph [0026] and page 4, paragraph [0095], teaching the bi-components of the polyurethane comprise a isocyanate and polyol wherein the components (A) and (B) are kept separately in tanks for dehumidification and deaeration, the polyurethane system being formed by mixing an isocyanate component (A) and a polyol composition component (B)); (v) curing the polyurethane system to form a polyurethane layer (See page 1, paragraph [0015], teaching cross-linking, i.e. curing, on the substrate, such as the release layer); and (vi) separating the release layer from the polyurethane layer to form a polyurethane sheet (See page 2, paragraph [0037], teaching the release support is removed).
Moioli et al. teaches tanks holding the components for dehumidification and deaeration as described above, and producing polyurethane films with the “absence of porosity” (See page 4, paragraph [0078]), but fails to specifically the tanks for dehumidification and deaeration are under vacuum. However, dehumidification and deaeration typically occurs via well-known processing in the prior art that applies vacuum to the isocyanate and polyol components individually for degassing, i.e. dehumidification and deaeration, in a process that is well-known to reduce bubbles/pore formation in the polyurethane layers vacuum formed by the mixing of said components (See, for example, Thompson, Abstract, col. 5, lines 30-44, and col. 9, lines 29-50, teaching reaction components for the polyurethane, i.e. isocyanate and polyol, are degassed by lowing pressure to remove bubbles of air and other gases, e.g. deaeration, until bubbling is eliminated, and specifically teaching separate application of vacuum to isocyanate and polyol precursors to do so; and/or Jourquin et al., page 12, lines 25-27, teaching eliminating pores in the polyurethane layer formed is accomplished by separately “degassing the isocyanate containing component and by degassing and dehydrating the active hydrogen component.”).
Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to apply vacuum to the tanks in Moioli et al. taught for separately dehydrating and deaerating the polyol and isocyanate components prior to mixing. Such vacuum is a well-known suitable degassing method for accomplishing dehydrating and deaerating and thus applying vacuum within the tanks holding respective components, i.e. polyol and isocyanate, would have predictably been a suitable method for accomplishing the desired dehydrating and deaerating and eliminating bubbling and porosity in the final polyurethane layer.
Moioli et al. is silent as to relative humidity during coating on the release layer. However, it is well-known the elevated relative humidity (RH) conditions during polyurethane coating and curing increase likelihood of bubble formation often leading to blistering and foaming of coated polyurethane layers as RH increases, thus creating incentive to control RH to be lower during coating when porosity and bubbling is not desired (See, for example, Knight, JR et al., page 1, paragraph [0040], teaching the “relative humidity…during the application of polyurethane coating components can adversely affect blistering or bubbling in the material”; Seiffert et al., page 1, paragraph [0005], teaching “[i]n the case of relative humidities exceeding 50%, problems occur…when the two-component polyurethanes…cure…in an uncontrolled manner and form bubbles….”; and/or Brahm et al., col. 8, lines 1-30 and Table I, indicating elevated relative humidity often leads to blistering when curing isocyanate/polyol polyurethanes and states lower relative humidity such as 30% in Table I create “favorable conditions” for curing such polyurethanes). It is clear the prior art demonstrates relative humidity during polyurethane coating is a known, result-effective variable that directly influences moisture-induced gas formation leading to bubbling defect such as blistering and foaming. Thus, a person of ordinary skill in the art at the time of invention would have been motivated to control the coating environment of bi-component, i.e. isocyanate/polyol, polyurethanes, such as in Moioli et al., to reduce humidity levels, such as 35% or below. Doing so would have predictably created favorable conditions for coating and curing the polyurethane as a routine measure to limit gas-related defects during curing since higher relative humidity induces porosity (which Moioli et al. expresses a desire to limit in certain coatings) and exacerbates defects such gas-related bubbling defect such as blistering and foaming.
Regarding Claim 2, Moioli et al. teaches the coating process may involving doctor blade coating to spread a thick coating layer (See page 2, paragraph [0035]). Examiner submits coating and spreading with a doctor blade is reasonably considered “knife coating” as claimed.
Regarding Claim 3, Moioli et al. teaches degassing under vacuum and it would have been apparent lower pressures effect faster and more effective degassing, thus as least rendering obvious extremely low pressures under 500 mbar (See, for example, Thompson, col. 8, lines 1-7, teaching 2 mm Hg vacuum application, which is about 2.6 mbars).
Regarding Claim 12, Moioli et al. teaches a non-solvent system (See page 1, paragraph [0001]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moioli et al., Thompson and/or Jourquin et al., and Knight, JR et al., Seiffert et al., and/or Brahm et al. as applied to Claim 1, and further in view of Affinito (US 2001/0048978).
Regarding Claims 5, the cited reference teaches the method of Claim 1 as described above. Moioli et al. doesn’t specifically teach exposing the polyurethane system to a drying tunnel. Note since the “tunnel” is under reduced pressure, it is considered to read on any vacuum chamber since it is unclear how else a “drying tunnel,” which normally implies air flow, can be held at below atmospheric temperature, which would imply a sealed environment to achieve such a reduced pressure. Affinito teaches applying solventless polyol/isocyanate polyurethane, including when previously degassed, to a vacuum chamber, e.g. drying tunnel less than 400 mbar, to more precisely control thin films (See Abstract, page 1, paragraphs [0009], [0014]-[0015], and [0019]-[0023]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to subject the coated polyurethane in Moioli et al. to a vacuum chamber, i.e. drying tunnel as claimed. Doing so would have predictably helped control thin films while also reducing moisture as has been previously established as leading to bubbling.
Claim(s) 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moioli et al., Thompson and/or Jourquin et al., and Knight, JR et al., Seiffert et al., and/or Brahm et al. as applied to Claim 1, and further in view of Redl et al. (US 2014/0215850) and optionally Wu (US 2005/0272530) for Claim 10.
Regarding Claims 7-11, the cited reference teaches the method of Claim 1 as described above. Moioli et al. teach solvent-free bi-component polyol/isocyanate polyurethane processing for various applications, including synthetic leather and apparel including footwear (See page 4, paragraphs [0087]-[0088]), but provides limited disclosure about suitable polyol and isocyanate reactants and additives therein, and is silent as to reactant variation for specific applications such synthetic leather and footwear. However, it would have been apparent known polyol and isocyanate reactants and additives for solventless polyurethanes coated for synthetic leather for applications such as footwear would have predictably been suitable to process into non-porous layers as in Moioli et al.
Redl et al. teaches using release layer coated solventless polyurethanes for synthetic/artificial leather for applications such as footwear, the polyurethane having good environmental and mechanical properties for such a utilization (See page 1, paragraphs [0005]-[0007]). Redl et al. teaches tolylene diisocyanate (TDI), diphenylmethane diisocyanate (MDI) and mixtures of diphenylmethane diisocyanate and polyphenylene polymethylene polyisocyanates (polymeric MDI) as the isocyanate (Seepage 2, paragraph [0027]), polyetherol or polyesterol as the polyol (See page 3, paragraph [0045]), fillers in the polyol component (See page 4, paragraph [0061]), and an isocyanate index of 110-120 (See page 5, paragraph [0077]). Examiner submits it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize a polyurethane system such as in Redl et al. when using the process of Moioli et al. to form synthetic leather for footwear. Such materials, e.g. polyols and isocyanate, would have predictably provided an environmentally ideal and mechanically suitable solventless polyurethane for artificial footwear as desired in Moioli et al.
Note for Claim 10, the claim never requires the use of a catalyst (which is only one option of Claim 9) and thus a system with a filler and no catalyst at all satisfies Claim 10 unless Claim 10 explicitly states the polyol includes a catalyst (which it currently does not). Redl et al. clearly indicates using a catalyst is optional as part of one embodiment, but implies it is not required (See page 4, paragraph [0067], indicating catalysts such as tin catalysts are preferred but not mandatory). Further, bismuth and zinc are well-known alternatives to tin catalysts in promoting reaction between the isocyanate and hydroxyl in polyol when forming polyurethane (See, for example, Wu, page 44, paragraph [0348]), thus rendering obvious such catalysts in the polyol so as to promote the forming of polyurethane after mixing the components.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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