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 with traverse of Claims 1-12 in the reply filed on 12/29/2025 is acknowledged. The traversal is on the ground(s) that the ISA found unity. This is not found persuasive because although the USPTO must apply the unity invention standard in 371 applications, this Office is permitted to interpret the claims based upon US standards and case law, make its own judgement about unity of invention, and need not make the same decisions as WIPO in evaluating unity of invention. The claimed product is nothing more than a polyurethane layer with low bubbling, such layers clearly known in the prior art. The instant invention is primarily directed to the process of achieving such a product. In US practice, the patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The determination of patentability in product-by-process claims is based on the product itself even though product-by-process claims are limited by and defined by the process. Id. Therefore, “[i]f the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. Thus, the process itself only defines a well-known polyurethane layer with low bubbling in Claim 13 and this is clearly known in the prior art, and thus the shared features are not a special technical feature. Further, for the reasons below, the method as claimed is also known, further supporting the restriction in this application since WIPO found all claims in the PCT application to be allowable.
The requirement is still deemed proper and is therefore made FINAL.
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 1-12 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 recites “wherein the polyurethane system is formed by mixing…” and “wherein the components (A) and (B) are kept separately in tanks…” The use of this passive voice at the end of the claim makes it unclear if these process elements are required process steps, or whether they merely recite the structure of the eventual polyurethane system being formed and are not actually part of the process themselves (i.e. a product by process description of the polyurethane system structure). Since these would appear to be critical elements of the process, Examiner assumes they are required steps in forming the polyurethane system. If so Examiner recommends amending to positively require these as process steps with active language such as: “further comprising forming the polyurethane system isocyanate component (A) and a polyol composition component (B), and keeping the components (A) and (B) controlling the relative humidity during the applying of the polyurethane system in step (iii)
Note Claims 2 and 4-6 recites similar process language in the passive voice Applicant should rewrite in active process language (e.g. wherein the applying in step (iii) occurs by knife coating; subjecting the polyurethane system to drying in a dry tunnel, etc.).
The remaining claim are rejected as being dependent on an indefinite claim.
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) applying a 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) applying a polyurethane system to the release layer (See page 1, paragraphs [0014] and [0017]-[0019], teaching applying the bi-component polyurethane to a release film); (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), wherein the polyurethane system is formed by mixing an isocyanate component (A) and a polyol composition component (B) (See page 4, paragraph [0095], teaching the bi-components of the polyurethane comprise a isocyanate and polyol), and wherein the components (A) and (B) are kept separately in tanks for dehumidification and deaeration (See page 2, paragraph [0026]).
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 think 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
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