Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior Art Rejection
2. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
3. Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanayama et al. (US 2018/0257355 A1), as evidenced by WO 2022/158606 A1 and Rukavina (US 2014/0199524 A1.
Within paragraphs [0271] through [0275], Kanayama et al. disclose the production of an isocyanate terminated prepolymer by reacting 63.0 parts by mass 1,4-bis(isocyanatomethyl)cyclohexane having a trans isomer content of 86% with 81.3 parts by mass ETERNACOLL UH-200, a 2,000 MW polycarbonatediol, and 40.7 parts by mass ETERNACOLL UH-100, a 1,000 MW polycarbonatediol, to yield an isocyanate terminated prepolymer having an isocyanate content of 10.9 mass%. Given the respective molecular weights, quantities, and functionalities of the reactants, the NCO/OH ratio is approximately 3.96:1. Given this excess of isocyanate, the prepolymer composition contains isocyanate monomer, meeting claim 2. Furthermore, it is further disclosed within paragraph [0281] that prepolymers so produced are mixed with ethylenediamine, a chain extender. Regarding the claimed viscosity limitations, though the reference is silent with respect to viscosity values, it is noted that WO 2022/158606 A1 discloses within page 14 of the provided translation that the viscosity of UH-200 is 2300 cP at 75oC and Rukavina discloses within paragraph [0493] that the viscosity of UH-100 is 360-460 cP at 75oC. Accordingly, in view of these disclosures, applicants’ polyol viscosity limitation is met. Furthermore, regarding the claimed prepolymer viscosity, since the relatively high NCO/OH ratio precludes significant molecular weight build-up, the position is taken that the prepolymer viscosity inherently approximates that of the polyol, thereby meeting the increase ratio.
4. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kanayama et al. (US 2018/0257355 A1) in view of WO 2022/158606 A1 and Rukavina (US 2014/0199524 A1.
Within paragraphs [0271] through [0275], Kanayama et al. disclose the production of an isocyanate terminated prepolymer by reacting 63.0 parts by mass 1,4-bis(isocyanatomethyl)cyclohexane having a trans isomer content of 86% with 81.3 parts by mass ETERNACOLL UH-200, a 2,000 MW polycarbonatediol, and 40.7 parts by mass ETERNACOLL UH-100, a 1,000 MW polycarbonatediol, to yield an isocyanate terminated prepolymer having an isocyanate content of 10.9 mass%. Given the respective molecular weights, quantities, and functionalities of the reactants, the NCO/OH ratio is approximately 3.96:1. Furthermore, it is further disclosed within paragraph [0281] that prepolymers so produced are mixed with ethylenediamine, a chain extender. Regarding the claimed viscosity limitations, though the reference is silent with respect to viscosity values, it is noted that WO 2022/158606 A1 discloses within page 14 of the provided translation that the viscosity of UH-200 is 2300 cP at 75oC and Rukavina discloses within paragraph [0493] that the viscosity of UH-100 is 360-460 cP at 75oC. Accordingly, in view of these disclosures, applicants’ polyol viscosity limitation is met. Furthermore, regarding the claimed prepolymer viscosity, since the relatively high NCO/OH ratio precludes significant molecular weight build-up, the position is taken that the prepolymer viscosity approximates that of the polyol, thereby meeting the increase ratio.
5. Though the reference fails to disclose elastic molded articles produced from the disclosed chain extended prepolymer, the position is taken that to the extent claimed, it would have been obvious to use any curable polyurethane composition as a molding composition and that due to the nature of polyurethanes, one would have reasonably expected the cured composition to display an elastic property.
6. Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019001868, as evidenced by WO 2022/158606 A1 and Rukavina (US 2014/0199524 A1.
Within paragraphs [0154] through [0156], JP 2019001868 discloses the production of an isocyanate terminated prepolymer by reacting 42.3 parts by mass 1,4-bis(isocyanatomethyl)cyclohexane having a trans isomer content of 86% with 71.9 parts by mass ETERNACOLL UH-200, a 2,000 MW polycarbonatediol, and 36.7 parts by mass ETERNACOLL UH-100, a 1,000 MW polycarbonatediol, to yield an isocyanate terminated prepolymer having an isocyanate content of 8.1 mass%. Given the respective molecular weights, quantities, and functionalities of the reactants, the NCO/OH ratio is approximately 2.99:1. Given this excess of isocyanate, the prepolymer composition contains isocyanate monomer, meeting claim 2. Furthermore, it is further disclosed within paragraph [0083] that prepolymers so produced are mixed with low molecular weight polyol, a chain extender. Regarding the claimed viscosity limitations, though the reference is silent with respect to viscosity values, it is noted that WO 2022/158606 A1 discloses within page 14 of the provided translation that the viscosity of UH-200 is 2300 cP at 75oC and Rukavina discloses within paragraph [0493] that the viscosity of UH-100 is 360-460 cP at 75oC. Accordingly, in view of these disclosures, applicants’ polyol viscosity limitation is met. Furthermore, regarding the claimed prepolymer viscosity, since the relatively high NCO/OH ratio precludes significant molecular weight build-up, the position is taken that the prepolymer viscosity inherently approximates that of the polyol, thereby meeting the increase ratio.
7. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2019001868 in view of WO 2022/158606 A1 and Rukavina (US 2014/0199524 A1.
Within paragraphs [0154] through [0156], JP 2019001868 discloses the production of an isocyanate terminated prepolymer by reacting 42.3 parts by mass 1,4-bis(isocyanatomethyl)cyclohexane having a trans isomer content of 86% with 71.9 parts by mass ETERNACOLL UH-200, a 2,000 MW polycarbonatediol, and 36.7 parts by mass ETERNACOLL UH-100, a 1,000 MW polycarbonatediol, to yield an isocyanate terminated prepolymer having an isocyanate content of 8.1 mass%. Given the respective molecular weights, quantities, and functionalities of the reactants, the NCO/OH ratio is approximately 2.99:1. Given this excess of isocyanate, the prepolymer composition contains isocyanate monomer, meeting claim 2. Furthermore, it is further disclosed within paragraph [0083] that prepolymers so produced are mixed with low molecular weight polyol, a chain extender. Regarding the claimed viscosity limitations, though the reference is silent with respect to viscosity values, it is noted that WO 2022/158606 A1 discloses within page 14 of the provided translation that the viscosity of UH-200 is 2300 cP at 75oC and Rukavina discloses within paragraph [0493] that the viscosity of UH-100 is 360-460 cP at 75oC. Accordingly, in view of these disclosures, applicants’ polyol viscosity limitation is met. Furthermore, regarding the claimed prepolymer viscosity, since the relatively high NCO/OH ratio precludes significant molecular weight build-up, the position is taken that the prepolymer viscosity approximates that of the polyol, thereby meeting the increase ratio.
8. Though the reference fails to disclose elastic molded articles produced from the disclosed chain extended prepolymer, the position is taken that to the extent claimed, it would have been obvious to use any curable polyurethane composition as a molding composition and that due to the nature of polyurethanes, one would have reasonably expected the cured composition to display an elastic property.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
