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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims.
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.
Claim(s) 1-8 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 fails to define cLog P and HLB. Claims 2-8 depend upon claim 1 and fail to rectify the issue in claim 1. See MPEP § 2173.05(d). HEUR is recommended to be amended as hydrophobically modified ethylene oxide urethane
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 of this title, 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(s) 1-8 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Suau et al. (US 20130158160) in view of Bobsein et al. (US 20130158194) and further in view of Thies et al. (US 5378756, listed on IDS).
As to claims 1-8, Suau (abs., claims, examples, 47-66, 69, 76) discloses an aqueous coating thickener composition comprising a branched hydrophobically modified ethylene oxide urethane producedby polymerizing a PEG (8k g/mol, same MW as the one in instant examples) with a diisocyanate such as 1, 6-hexane diisocyanate (the same one in instant examples) and toluene diisocyanate trimer (trifunctional and would inherently yield branching) and a nonionic surfactant. The loading of the polyurethane is 5-45 wt%; the loading of the surfactant is 5-30 wt%; the loading of water 25-75 wt%. The total loading of polyurethane, surfactant, and water is 95-100 wt%. The disclosed loadings overlap with the ranges of instant claims 1 and 8. It has been found that where claimed ranges overlap ranges disclosed by prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Suau since it discloses all applicants' components, values and methods of making.
Suau is silent on the claimed end capping agent.
In the same area of producing thickeners for aqueous hydrophobically modified ethylene oxide urethane coating, Bobsein (abs., claims, examples, 7-15, 17-18) discloses adding a hydrophobic capping agent of n-dodecanol, the same one used in instant examples, to tune thickening efficiencies and control the molecular weight of the polyurethane, as obviously recognized by one of ordinary skill in the art.
Suau is silent on the claimed nonionic surfactant.
In the same area of producing thickeners for aqueous polyurethane coating, Thies (abs., claims, Ex.24-25, Ex.40-42, 2:20-25, 3:65-68, Table 8a) discloses adding a nonionic surfactant, such as stearyl alcohol/10,30 EO (meets one species of instant claims 2-4), to reduce viscosity in the aqueous composition. Stearyl alcohol/10,30 EO would inherently possess the HLB of instant claims 1 and 3, because in view of the substantially identical composition (in this case, the disclosed surfactant structure), it appears that the adduct would have inherently possessed the claimed properties.
Therefore, as to claims 1-8, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Suau and replaced the nonionic surfactant with stearyl alcohol/10,30 EO in view of Thies and added a hydrophobic capping agent of n-dodecanol in view of Bobsein, because the resultant aqueous composition would yield reduced viscosity, improved thickening efficiencies, and controlled molecular weight of the polyurethane. Furthermore, one ordinary skill in the art would have expected the resulting end capped HEUR to feature the claimed hydrophobic end portion of instant claims 5-7, because Suau, Bobsein, and Thies obviously satisfy all the material and chemical limitations (monomer, end capping agent, loading, etc.) of the instant invention-see MPEP 2112.01.
The references are silent on the claimed cLog P of claim 1. Accordingly, the examiner recognizes that not all the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components, in this case, the monomers, end capping agent, loading, etc. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. cLog P, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
Prosecution Insights