DETAILED ACTION
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 1-10 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.
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In claims 1, 9, and 10, the claimed polyurethane structure is blurry and grainy. The subscripts and the exact elements are difficult to make out. Consequently, the scope of the claim is unclear. A much clearer version of the claimed structure can be seen in patent family member JP-2025519298-A, and is reproduced below (see untranslated JP-2025519298-A at pg. 2):
For the purposes of examination, the Examiner is interpreting the structure to be like that shown in the image above. To correct, the Examiner suggests replacing the blurry image with a clearer image. Claims 2-8 are also rejected by virtue of their dependency on claim 1.
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Moreover, in claim 1, the claimed polyurethane has the following structure, one portion of which is circled by the Examiner below:
The circled portion says “(CH)5.” (CH)5 is not a chemically viable substituent. It is believed Applicants intended for this to be (CH2)5, since polycaprolactone diol (which is the monomer from which the circled structure forms) has five CH2 groups. For the purposes of examination, the Examiner is interpreting the circled portion to be -(CH2)5- rather than -(CH)5-. Claims 2-8 are also rejected by virtue of their dependency on claim 1. Moreover, claims 9 and 10 are rejected for the same reason.
In claim 7, it is unclear whether the claim is presenting as a “use” claim which is trying to present itself as a method of using (that lacks recited steps to practice the use), or whether the claim is an intended use claim that fails to further structurally limit the ink. See MPEP § 2173.05(q). For the purposes of examination, the Examiner is interpreting either case to be true. To correct, the Examiner suggests adding an explicit step to the claim.
In claim 10, each use of the term “the system” lacks sufficient antecedent basis. There is no previous mention of a “system” in the claims. For the purposes of examination, the Examiner is interpreting “the system” to refer to the mixture of components in the reaction vessel at the time in which the step regarding “the system” is performed.
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The closest prior art includes Zhong (CN-102838897-A) and Wang et al. (CN-110294830-A).
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Zhong teaches a cold transfer printing ink containing a disperse dye, a dispersing agent, a thickener, and water (see claim 1 of Zhong at pg. 7; also see Zhong at para. 0004-0005). Furthermore, Wang teaches a polyurethane composed of polycaprolactone polyol, isophorone diisocyanate, dimethylol propionic acid, and triethylamine (see Wang at pg. 4). However, Zhong and Wang fail to explicitly teach the polyurethane structure of claim 1. More specifically, the polyurethane of claim 1 requires N-acetylethylenediamine as part of the structure, see below:
Neither Zhong nor Wang teach the use of N-acetylethylenediamine to form the polyurethane structure of claim 1. Further, the prior art fails to teach the claimed polyurethane compound. The claimed polyurethane requires six different components, as well as specific repeating unit values in a specific concentration in a waterborne dispersion. There is no teaching or suggestion in the prior art to form the specifically claimed thickener. In other words, the thickener is a novel compound. Consequently, the claims would be allowed if the 112(b) rejections above are overcome.
Claims 2-10 would also be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, for the same reasons as mentioned above.
Conclusion
Wu et al. (CN-114045146-A), with reference to the included machine translation, teach a polyurethane composite material with high thermal conductivity (see Wu at Abstract).
Lv et al. (CN-109705299-A), with reference to the included machine translation, teach an aqueous polyurethane resin containing a polyether diol, a polyester diol, a polyisocyanate, a hydrophilic chain extender, an amine chain extender, and a polyol chain extender (see Lv at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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