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 1-13 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.
Claims 1, 4, and their dependent claims recite an “average molecular weight per hydroxyl group”, but do not specify whether the average molecular weight is a number average molecular weight or a weight average molecular weight.
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.
Claims 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Foley (U.S. PG Pub. No. 2004/0087754).
In paragraph 9 Foley discloses a polyurethane comprising the reaction product of a diisocyanate, a polyol, and a chain extender. In paragraph 19 Foley discloses that the polyol can be a polycaprolactone polyol, preferably a tri-hydroxyl or tetra-hydroxyl functional polyol, meeting the limitations of polyol (A) regarding the number of groups of formula (I). In paragraph 25 Foley discloses that the number average molecular weight of the polycaprolactone polyol can be 200 to 10,000, or 300 to 7,500, overlapping the range recited in claim 10 and leading to an average molecular weight per hydroxyl group encompassing the range recited for polyol (A) of claim 1 when the polycaprolactone polyol or Foley is tri-functional or tetra-functional. The structure of the polycaprolactone triol of Foley meets the limitations of formula (I) of claim 1 and formula (a) of claim 2 where n (or n1, n2, n3) is 5 and the molecular weight range disclosed by Foley implies a range of m (m1, m2, m3) overlapping the range recited in claim 1, noting that the molecular weight of the repeat unit encompassed within the brackets of formula (I) is about 114 when n is equal to 5. The diisocyanate reactant of Foley meets the limitations of the polyisocyanate (B) of claim 1. The reaction mixture of Foley is a composition for a polyurethane elastomer, as recited in claim 1, since it is used to produce a polyurethane elastomer.
In paragraph 26 Foley discloses that the chain extender can be various diols or diamines having a molecular weight of less than 200, meeting the limitations of compound (C) of claim 3. In paragraphs 16 and 30 Foley discloses that the polyurethanes preferably comprise 15 to 40% by weight of the isocyanate and 3 to 20% by weight of the chain extender, leaving a range of 40 to 82% by weight for the polyol, and leading to a chain extender content of about 3.7 (3/82*100) to about 50 (20/40*100) parts by weight per 100 parts by weight of polyol, overlapping the range recited in claim 3. In Table B (following paragraph 70) Foley discloses an example comprising 5.69 parts by weight of chain extender per 100 parts by weight of polyol, within the range recited in claim 3.
In paragraph 14 Foley discloses that the polyurethane elastomer products have soft and hard segments as recited in claims 4-5, and as the reaction mixture of Foley contains the claimed components, the soft and hard segments will meet the limitations of claims 4-5, in accordance with the disclosure in paragraph 55 of the current specification. As discussed above, the polycaprolactone polyol of Foley has a number average molecular weight of 200 to 10,000 or 300 to 7,500, encompassing the range recited in claim 12.
In paragraph 61 and Table A (following paragraph 67) Foley discloses that the polyurethanes have softening points, implying that there is no melting point, meeting the limitations of claim 6. In Tables A and B Foley discloses several inventive polyurethanes having Shore A hardness values within the range recited in claim 8; while these specific polyurethanes are not prepared from the specific claimed polyol and polyisocyanate, the Shore A hardness values in the examples of Foley indicate that the Shore A hardness will at least be in a range overlapping the range recited in claim 8. Moreover, Foley discloses polyurethanes prepared from the claimed reactants, the enthalpy of fusion and compression set will also be in ranges at least overlapping the ranges recited in claims 7 and 9. It is noted that Foley indicates in paragraphs 57 and 70 that a lower compression set is desirable.
The difference between Foley and the currently presented claims is that some of the ranges of Foley overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 1-10 and 12 are therefore rendered obvious by Foley.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Foley in view of Hostettler (U.S. Pat. No. 3,169,945).
The discussion of Foley in paragraph 8 above is incorporated here by reference. Foley discloses a composition meeting the limitations of claim 10 and polyurethane elastomer meeting the limitations of claim 12, where the polyol can be a tetra-hydroxyl functional polycaprolactone polyol, but does not specifically disclose that the tetra-hydroxyl functional polycaprolactone polyol is one obtainable by the method of claims 11 and 13, noting that the claims are in product-by-process format. In paragraph 19 Foley specifically cites Hostettler as teaching the production of the polycaprolactone polyols.
In column 1 lines 9-12 Hostettler discloses lactone polyesters useful as intermediates for preparing elastomers. In column 1 lines 56-70 Hostettler discloses that epsilon-caprolactones, which are seven-membered ring lactones, are preferred lactones. In column 2 lines 42-55 Hostettler discloses that the lactone polyesters are initiated by reacting the lactone with an initiator capable of opening the lactone ring. In column 4 line 44 Hostettler teaches that pentaerythritol, which is a tetrahydroxy functional polyol, is a suitable initiator. The use of a pentaerythritol-initiated polycaprolactone polyol as the tetra-hydroxyl functional polycaprolactone polyol of Foley meets the limitations of claims 11 and 13.
It would have been obvious to one of ordinary skill in the art to use a pentaerythritol-initiated polycaprolactone polyol as the tetra-hydroxyl functional polycaprolactone polyol of Foley, since Hostettler teaches that pentaerythritol is a suitable initiator for forming a polycaprolactone polyol, and Foley specifically points to Hostettler as teaches how to prepare the polylactone polyols of Foley.
Claims 1-2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (U.S. Pat. No. 7,824,288).
In column 3 lines 38-48 Wu discloses a polyisocyanate prepolymer prepared by reacting a diisocyanate with a polyol. In column 5 lines 35-48 Wu discloses that the polyisocyanate prepolymer can be used to prepare a polyurethane elastomer. In column 7 lines 5-10 Wu discloses that preferred polyols include polycaprolactone triol having a molecular weight of 300 or 500 to about 4000 or 5000, leading to an average molecular weight per hydroxyl group of up to about 1333 or 1667, overlapping the range recited for the polyol (A) of claim 1, where the overall molecular weight range overlaps the range recited in claim 10, and where the polycaprolactone triol meets the limitations of formula (I) of claim 1 and formula (a) of claim 2 where n is 5 and the molecular weight range disclosed by Wu implies a range of m overlapping the range recited in claim 1, noting that the molecular weight of the repeat unit encompassed within the brackets of formula (I) is about 114 when n is equal to 5. The diisocyanate of Wu is a polyisocyanate, as recited in component (B) of claim 1. The reaction mixture of Wu comprising the polyol and diisocyanate is a “composition for a polyurethane elastomer”, since as discussed above it is reacted to form a precursor for a polyurethane elastomer.
The difference between Wu and the currently presented claims is that some of the ranges of Wu overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 1-2 and 10 are therefore rendered obvious by Wu.
Claims 1-5, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaraj (U.S. PG Pub. No. 2008/0064844).
In paragraphs 8-12 Nagaraj discloses a prepolymer composition comprising a polyisocyanate, a polycaprolactone-based polyol, and at least one glycol having a molecular weight of not greater than about 300. At the end of paragraph 24 Nagaraj discloses that the hydroxyl functionality of the polycaprolactone polyols is about 2 to about 3, overlapping the range of “three of more” recited for the polyol (A) of claim 1. In paragraph 24 Nagaraj further discloses that the polycaprolactone polyol can be prepared using trimethylolpropane as an initiator, leading to a polycaprolactone triol. In paragraphs 10 and 23 Nagaraj discloses that the number average molecular weight of the polycaprolactone polyol can be about 300 to about 10,000, overlapping the range recited in claim 10 and leading to an average molecular weight per hydroxyl group of about 100 to about 3,333 when the polycaprolactone polyol is a triol, encompassing the range recited for the polyol (A) of claim 1. The structure of the polycaprolactone triol of Nagaraj meets the limitations of formula (I) of claim 1 and formula (a) of claim 2 where n (or n1, n2, n3) is 5 and the molecular weight range disclosed by Nagaraj implies a range of m (m1, m2, m3) overlapping the range recited in claim 1, noting that the molecular weight of the repeat unit encompassed within the brackets of formula (I) is about 114 when n is equal to 5.
In paragraph 25 Nagaraj discloses that the glycol can be various glycols having a molecular weight of less than 200, meeting the limitations of compound (C) of claim 3, and in examples 1-2 (paragraphs 69 and 71) Nagaraj discloses using the glycol and polycaprolactone polyol in a ratio within the range recited in claim 3.
As the reaction mixture of Nagaraj contains the claimed components, the resulting polyurethane elastomers will comprise the soft and hard segments of claims 4-5, in accordance with the disclosure in paragraph 55 of the current specification. As discussed above, the polycaprolactone polyol of Nagaraj has a number average molecular weight of about 300 to about 10,000, encompassing the range recited in claim 12.
The difference between Nagaraj and the currently presented claims is that some of the ranges of Nagaraj overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 1-5, 10, and 12 are therefore rendered obvious by Nagaraj.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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