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 1-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “wherein R1 is constituted from at least two selected from the group consisting of…”, and the claim also recites “comprises at least one branch-containing alkylene group having 4 to 15 carbon atoms and comprises at least one linear alkylene group having 2 to 10 carbon atoms” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites the broad recitation “wherein R3 is constituted from at least two selected from the group consisting of…”, and the claim also recites “comprises at least one branch-containing alkylene group having 4 to 15 carbon atoms and comprises at least one linear alkylene group having 2 to 10 carbon atoms” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations regarding the repeating units fail to further limit the limitations already required within claim 1 wherein R1 comprises at least one branched chain alkylene group and comprises at least one linear chain alkylene group. For example, claim 5 suggests that the repeating units comprise 50% by mol or more of alkylene groups when formulas (3) or (4) are selected, which would exclude the requirements of claim 1 of at least one branched chain alkylene group. Applicants may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations regarding the repeating units fail to further limit the limitations already required within claim 2 wherein the repeating units comprise at least one branched chain alkylene group and comprise at least one linear chain alkylene group. For example, claim 12 suggests that the repeating units comprise 50% by mol or more of alkylene groups when formulas (3) or (4) are selected, which would exclude the requirements of claim 2 of at least one branched chain alkylene group. Applicants may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations regarding the repeating units fail to further limit the limitations already required within claim 3 wherein the repeating units comprise at least one branched chain alkylene group and comprise at least one linear chain alkylene group. For example, claim 18 suggests that the repeating units comprise 50% by mol or more of alkylene groups when formulas (3) or (4) are selected, which would exclude the requirements of claim 3 of at least one branched chain alkylene group. Applicants may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-5, 7-12, 14-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2004101640 to Iyoshi in view of U.S. Patent No. 5,290,905 to Komiya et al.
As to claims 1, 5, 12, and 18, Iyoshi discloses a liquid (See examples) polyester polycarbonate polyol that has an hydroxy value of 30 to 375 mg/KOH (0019) comprising a transesterification reaction of a polycarbonate polyol derived from linear, branched, or cyclic aliphatic diols containing 2 to 12 carbon atoms (0024), preferably 1,6-HD, 1,4-BD, or 1,5-PD in terms of mechanical strength and durability (0024) and a polyester polyol derived from linear, branched, or cyclic aliphatic diols containing 2 to 12 carbon atoms as well as 1,4-cyclohexanedimethanol (0032).
Iyoshi does not exemplify the use of diol mixtures.
However, Komiya discloses mixtures of polyester polyols and polycarbonate polyols to obtain polyurethanes for artificial leather applications wherein the polycarbonate polyols are derived from a mixture of 2-methyl-1,8-octanediol or 3-methyl-1,5-pentanediol and linear alkylene groups derived from 1,6-hexanediol or 1,8-octanediol (4:30-35).
At the time of filing it would have been obvious to a person of ordinary skill in the art to use the diol mixture taught in Komiya to prepare the polycarbonate of Iyoshi to obtain a fiber to improve low elastic recovery, elongation (4:38-40) and resistance to hot water (4:64-66).
Further, Komiya discloses mixtures of polyester polyols and polycarbonate polyols to obtain polyurethanes for artificial leather applications wherein the polyester polyols are derived from a diol mixture comprising at least 50 mol% of 3-methyl-1,5-pentanediol (5:55-60).
At the time of filing it would have been obvious to a person of ordinary skill in the art to use the diol mixture taught in Komiya to prepare the polyester polyol of Iyoshi to obtain a fiber with improved elastic recovery (6:22-23). in admixture with 1,6-hexanediol or 1,4-butanediol (6:21-29) mixture of 2-methyl-1,8-octanediol or 3-methyl-1,5-pentanediol and linear alkylene groups derived from 1,6-hexanediol or 1,8-octanediol (4:30-35).
Accordingly, the use of diol mixtures in the preparation of a mixed polyol blend of polycarbonates and polyesters including diol mixtures of branched alkylene diols and alkylene diols was known at the time of filing. As supported by Komiya. It would have been obvious to a person of ordinary skill in the art to use such mixtures to prepare the polyester polycarbonate polyols of Iyoshi to prepare fibers improved low elastic recovery, elongation (4:38-40), resistance to hot water (4:64-66) and elastic recovery (6:22-23).
As to claims 2, 10, Iyoshi discloses a ratio a polyester polycarbonate polyol containing 20 to 80% by weight of a component derived from the polyester polyol (0019).
As to claim 3, Iyoshi in view of Komiya disclose mixtures of branched alkylene diols and mixtures of two or more alkylene diols may be used (See Komiya, 4:1-34).
As to claims 4, 11, and 17, about the viscosity, the Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claims 7-9, 14-16, and 20, Iyoshi discloses aqueous polyurethane dispersions to prepare synthetic leathers comprising the reaction product of the polyester polycarbonate polyol, diisocyanate, and chain extender (See Examples).
Claims 6, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2004101640 to Iyoshi (Cited on IDS) in view of U.S. Patent No. 5,290,905 to Komiya et al. that has been explained above and is applied here as such in view of U.S. Patent Pub. No. 2019/0161574 to Im et al.
As to claims 6, 13, and 19, Iyoshi discloses a liquid (See examples) polyester polycarbonate polyol that has an hydroxy value of 30 to 375 mg/KOH (0019) comprising a transesterification reaction of a polycarbonate polyol derived from linear, branched, or cyclic aliphatic diols containing 2 to 12 carbon atoms (0024), preferably 1,6-HD, 1,4-BD, or 1,5-PD in terms of mechanical strength and durability (0024) and a polyester polyol derived from linear, branched, or cyclic aliphatic diols containing 2 to 12 carbon atoms as well as 1,4-cyclohexanedimethanol (0032).
Iyoshi does not exemplify the use of diol mixtures.
However, Komiya discloses mixtures of polyester polyols and polycarbonate polyols to obtain polyurethanes for artificial leather applications wherein the polycarbonate polyols are derived from a mixture of 2-methyl-1,8-octanediol or 3-methyl-1,5-pentanediol and linear alkylene groups derived from 1,6-hexanediol or 1,8-octanediol (4:30-35).
At the time of filing it would have been obvious to a person of ordinary skill in the art to use the diol mixture taught in Komiya to prepare the polycarbonate of Iyoshi to obtain a fiber to improve low elastic recovery, elongation (4:38-40) and resistance to hot water (4:64-66).
Further, Komiya discloses mixtures of polyester polyols and polycarbonate polyols to obtain polyurethanes for artificial leather applications wherein the polyester polyols are derived from a diol mixture comprising at least 50 mol% of 3-methyl-1,5-pentanediol (5:55-60).
At the time of filing it would have been obvious to a person of ordinary skill in the art to use the diol mixture taught in Komiya to prepare the polyester polyol of Iyoshi to obtain a fiber with improved elastic recovery (6:22-23). in admixture with 1,6-hexanediol or 1,4-butanediol (6:21-29) mixture of 2-methyl-1,8-octanediol or 3-methyl-1,5-pentanediol and linear alkylene groups derived from 1,6-hexanediol or 1,8-octanediol (4:30-35).
Accordingly, the use of diol mixtures in the preparation of a mixed polyol blend of polycarbonates and polyesters including diol mixtures of branched alkylene diols and alkylene diols was known at the time of filing. As supported by Komiya. It would have been obvious to a person of ordinary skill in the art to use such mixtures to prepare the polyester polycarbonate polyols of Iyoshi to prepare fibers improved low elastic recovery, elongation (4:38-40), resistance to hot water (4:64-66) and elastic recovery (6:22-23).
Iyoshi does not expressly disclose wherein the polyol is derived from a biomass raw material.
However, Im discloses polyester polyols derived from bio-derived 1,4-butanediol, ethylene glycol, or diethylene glycol.
At the time of filing it would have been obvious to use the bio-derived diol components taught in Im to prepare the polyester polycarbonate polyols of Iyoshi to provide an eco-friendlier polyol (0001).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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