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 § 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 5,430,121 to Pudleiner.
Regarding claims 1-8, Pudleiner teaches thermoplastic polyurethanes modified with segmented siloxane block copolymers, which are based on a) relatively high molecular weight dihydroxy compounds, b) diisocyanates, and c) difunctional chain extenders, and d) substantially linear hydroxy-terminated polyol (Pudleiner, Abstract), wherein the synthesis components are reacted (Id., column 4 lines 58-66). Pudleiner teaches that polysiloxane/polylactone block copolymers are known products, such as bifunctional hydroxy-terminated polycaprolactone-poly(dimethylsiloxane)-polycaprolactone tri block copolymers (Id., column 7 line 14 to column 8 line 17, Example 1). Pudleiner teaches a relatively high molecular weight dihydroxy compound having a molecular weight of from 800 to 8,000, preferably in the range from 1,000 to 4,000 (Id., column 4 lines 10-13), including suitable polyesterols such as polycarpolactones (Id., column 5 lines 23-62). Pudleiner teaches that suitable chain extending agents include difunctional compounds such as aliphatic diols containing from 2 to 14 carbon atoms (Id., column 6 lines 6-20). Pudleiner teaches that the molar ratios of the components may vary to adjust the hardness and melting point of the thermoplastic polyurethanes (Id., column 6 lines 34-52). Pudleiner teaches that the synthesis components are reacted in such quantities that the equivalent ratio of NCO groups of the diisocyanates to the sum of the NCO-reactive groups of components a), c), and d) is 1:0.85 to 1.20, and preferably 1:0.95 to 1:1.1 (Id., column 6 lines 46-52).
Regarding the claimed wt%s, Pudleiner teaches each of the claimed components. Additionally, Pudleiner teaches molar ratios of polyhydroxyl compounds a) and d) to chain-extending agents c) of from 1:1 to 1:12 and, more particularly, from 1:1.8 to 1:4.4 have proved to be suitable (Pudleiner, column 6 lines 34-45). Pudleiner teaches that the substantially linear hydroxy-terminated polyol is present in a quantity of 1 to 20% by weight, based on the total quantity (Id., claim 9). Additionally, Example 1 teaches 770 g of hexane diol polycarbonate (having an OH number of 53.8), and 440 g poly-ɛ-caprolactone/polydimethyl siloxane block copolymer (having an OH number of 56.1) with 782.8 g 4,4’-diisocyanatodicyclohexyl methane, to result in a polymer having an NCO value of 9.72%, followed by adding 207.2 g butane-1,4-diol. Based on the totality of the teachings of Pudleiner, the claimed amounts appear to be taught by Pudleiner. Note that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyurethane of Pudleiner, and adjusting and varying the amounts of the components, such as within the claimed ranges, motivated by the desire of forming a conventional polyurethane having the desired amounts and the desired properties based on the totality of the teachings of Pudleiner.
Regarding claims 4 and 5, Pudleiner teaches polysiloxane/polylactone block copolymers such as bifunctional hydroxy-terminated polycaprolactone-poly(dimethylsiloxane)-polycaprolactone tri-block copolymers (Pudleiner, column 7 line 14 to column 8 line 13). Based on the parameters set forth in Example 1 and column 4 lines 3-42, the molecular weight is in the range of from 1,000 to 4,000.
Although Pudleiner does not appear to teach the claimed reaction products including formula (I), the limitations are interpreted as product by process limitations. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 8, Pudleiner does not require a polyether polyol or nanofillers (Pudleiner, claim 1).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 5,430,121 to Pudleiner, as applied to claims 1-8 above, in view of US Pub. No. 2012/0277394 to Taniguchi.
Regarding claim 9, Pudleiner does not appear to teach mixing and casting as claimed. However, Taniguchi teaches a similar polyurethane comprising a polyester polyol, an isocyanate compound, and a chain extender, wherein the polyester polyol is obtained by forming an ester bond between a carboxyl group of a polycarboxylic acid having a polysiloxane framework (Taniguchi, Abstract). Taniguchi teaches that applications of the polyurethane include such forms or states as films and coating materials, in a wide range of fields including clothing, packaging, and medical treatments, and coating to a support such as a fabric and artificial leather applications (Id., paragraphs 0180-0183).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyurethane of Pudleiner, for use in applications such as coating fabrics and use in artificial leather applications, as taught by Taniguchi, motivated by the desire of forming a conventional polyurethane for use in a known and predictable manner for similar polyurethane compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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