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 .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 6 is 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.
With respect to claim 6, despite applicants’ response, it is unclear what constitutes derivatives of trimethylolmelamine and derivatives of dimethylolurea. The examiner has reviewed the specification, and it remains unclear, in view of the specification, exactly what compounds constitute and/or are encompassed by the “derivatives” language of the claim. The examiner has considered applicants’ response of 27 August 2025; however, there is no suggestion within the application, as originally filed, that the derivative language should be construed as argued or limited to the argued compounds.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1, 2, 5-7, 13-18, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2014-37552 A.
JP 2014-37552 A discloses within Example 30 a solvent-borne polyurethane/urea polymer, produced by reacting a plant-based polytetramethylene ether glycol and a plant-based 1,3- propane diol with isophorone diisocyanate in DMF to form a prepolymer with a theoretical NCO% value calculated as 2.6 wt.-%, based on all components of the prepolymer, meeting the contents of claims 1 and 25. The prepolymer is then chain-extended with isophorone diamine to yield the polymer with 53% of bio-renewable carbon. Since the prepolymer is cured by the diamine, index value approximates 100%; thereby meeting the claimed 80% to 120% equivalents range. Given the disclosed amount of solvent, the weight percent requirement of claim 13 is met. Applicants’ attention is further drawn to paragraph [0014], wherein printing inks are disclosed as being an application for the disclosed polyurethane. Regarding claims 16-18, since the reactants and prepolymer characteristics correspond to those claimed, the position s taken that the lamination bond strength is an inherent property of the disclosed composition.
6. Applicants’ response has been considered; however, the examiner disagrees with applicants’ determination that the amount of amine equivalents relative to the unreacted NCO is merely 9.6%. Specifically, the examiner finds the following based on the functionalities, molecular weights, and quantities of the isophorone diisocyanate (functionality: 2; molecular weight: 222.3; quantity: 82 parts), polytetramethylene glycol ether polyol (functionality: 2; molecular weight: 2000; quantity: 100 parts), and 1,3-propanediol (functionality: 2; molecular weight: 76.1; quantity: 15 parts) of the prepolymer of Example 30, and the isophorone diamine (functionality: 2; molecular weight: 170.3; quantity: 21 parts) of the curative for the prepolymer of Example 30. The total quantity of isocyanate groups contributed by the isophorone diisocyanate calculates to be approximately 0.74 moles; the total quantity of hydroxyl groups contributed by the polytetramethylene glycol ether polyol calculates to be approximately 0.1 moles; the total quantity of hydroxyl groups contributed by the 1,3-propandiol calculates to be approximately 0.39 moles; and the total quantity of amine groups contributed by the isophorone diamine calculates to be approximately 0.25 moles. Accordingly, the reaction of the diisocyanate with the polytetramethylene glycol ether polyol and 1,3-propnadiol yields a prepolymer having a remaining quantity of isocyanate groups of approximately 0.25 moles, and upon reaction of the prepolymer with the 0.25 moles of amine groups of the isophorone diamine, the remaining 0.25 moles of isocyanate groups are consumed, yielding a final NCO:OH ratio of approximately 1:1 or index value of approximately 100%. Furthermore, the examiner submits that applicants’ calculated value is so low for a chain extension of a prepolymer that it immediately calls into question the veracity of the finding.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 2-4 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014-37552 A.
JP 2014-37552 A discloses within Example 30 a solvent-borne polyurethane/urea polymer, produced by reacting a plant-based polytetramethylene ether glycol and a plant-based 1,3- propane diol with isophorone diisocyanate in DMF to form a prepolymer with a theoretical NCO% value calculated as 2.6 wt.-%, based on all components of the prepolymer. The prepolymer is then chain-extended with isophorone diamine to yield the polymer with 53% of bio-renewable carbon. Since the prepolymer is cured by the diamine, index value approximates 100%; thereby meeting the claimed 80% to 120% equivalents range. See paragraph 6, above, for a detailed explanation of this position, rebutting applicants’ position. Regarding claims 2 and 3, though the reference fails to recite the use of the claimed natural oils (plant oils), since the reference is primarily drawn to the production of bio-renewable polymers, the use of the claimed, known natural oils as polyurethane reactants would have been obvious. Regarding claims 4 and 24, as aforementioned, since the reference is primarily drawn to the production of bio-renewable polymers, one of ordinary skill in the art would have been motivated to use as many bio-based reactants and components as possible to increase the %BRC values of the polymer, so as to reach the clamed values. Furthermore, regarding claim 24, the claimed lower endpoint (greater than 53%) is close enough to the disclosed value of 53% that the claimed polymer would have been obvious in view of the disclosed polymer of the example.
9. Claims 8, 13-15, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101835819 A in view of JP 2014-37552 A.
CN 101835819 A discloses a process for producing a laminated article, wherein a polyurethane ink comprising 10 to 50 weight percent of a polyurethane, produced by reacting a prepolymer with a chain extender, such as a fatty dimer diamine, is applied to a substrate, wherein one or more additional substrates are adhesively bonded to the first substrate. See paragraphs [0038], [0039], [0041], [0049], [0050], and [0051] within the primary reference.
10. The primary reference fails to disclose the instantly claimed bio-based polyurethane; however, the use of solvent-borne, bio-based polyurethane, derived from the reaction of a prepolymer and chain extender, as an ink composition was known at the time of invention, as evidenced by JP 2014-37552 A. JP 2014-37552 A discloses within Example 30 a solvent-borne polyurethane/urea polymer, produced by reacting a plant-based polytetramethylene ether glycol and a plant-based 1,3- propane diol with isophorone diisocyanate in DMF to form a prepolymer with a theoretical NCO% value calculated as 2.6 wt.-%, based on all components of the prepolymer. The prepolymer is then chain-extended with isophorone diamine to yield the polymer with 53% of bio- renewable carbon. Since the prepolymer is cured by the diamine, index value approximates 100%; thereby meeting the claimed 80% to 120% equivalents range. See paragraph 6, above, for a detailed explanation of this position, rebutting applicants’ position. Applicants’ attention is further drawn to paragraph [0014], wherein printing inks are disclosed as being an application for the disclosed polyurethane. Accordingly, given the analogous nature of the respective polyurethanes within each reference and the disclosure within the secondary reference that the polyurethane may be used as a printing ink, the position is taken that it would have been obvious to employ the polyurethane composition of the secondary reference as the ink of the primary reference, so as to obtain a more environmentally desirable product and process. Furthermore, regarding claim 8, the position is taken that it would have been obvious to chain extend the prepolymer of the secondary reference using the dimer diamine, disclosed within the primary reference. Regarding claims 22 and 23, since the reactants and prepolymer characteristics of the secondary reference correspond to those claimed, the position is taken that one would have expected the claimed lamination bond strength to an intrinsic property of the disclosed composition.
11. The examiner has considered applicants’ arguments with respect to the obviousness rejections; however, they are insufficient to overcome the rejections for the following reasons. Firstly, the examiner has explained in detail within paragraph 6, above, that the claimed “80% to 120% equivalents” limitation is met, despite applicants’ position. Secondly, regarding applicants’ argument concerning their showings of improved benefits, the argued showings are deficient, because it is not evident that the argued comparative examples are representative of the closest available prior art, the closest available prior art being JP 2014-37552 A, with respect to the polymer composition. Insufficient information has been disclosed by applicants regarding the comparative examples to permit a meaningful comparison between the comparative examples and the relied upon prior art. Furthermore, it has been held that the claims must be commensurate in scope with examples purported to demonstrate unexpected results; however, the compositions of the examples are of far more limited scope in terms of bio-renewable carbon content, relative to the instant claims. It is further noted that the examples of the invention employ Polyurethane 2A; however, it is not clear from the specification exactly what components and component amounts are employed to make the polyurethane composition, rendering a further meaningful comparison between the claims and the examples of the invention essentially impossible. Accordingly, it has not been established that the argued improved results are unexpected and/or hold for the full scope of the instant claims. In summation, the evidence of obviousness outweighs the evidence of non-obviousness.
Conclusion
12. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
13. 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765