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 .
Election/Restrictions
Claims 14-15 are directed to an invention non-elected with traverse in the reply filed on 8-31-26. After further consideration, the Restriction Requirement has been withdrawn. All claims 1-15 have been examined on their merits.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-13,15 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5376650 in view of UPub20020040093 further in view of USPub 20200257202.
Claim 1, discloses a curable composition comprising - a first component containing compounds containing aldehyde groups, comprising at least one compound having two or more aldehyde groups, and- a second component containing compounds containing cyanoacetate groups, comprising at least one compound having two or more cyanoacetate groups, where the average molecular weight M. of the first and second components in relation to the compounds containing aldehyde or cyanoacetate groups is in the range from 400 to 20 000 g/mol, and where the average functionality of at least one of the two components in relation to the compounds containing aldehyde or cyanoacetate groups is greater than 2.0.
USP5376650 discloses light-absorbing polymers which contain backbone unsaturation, and which are produced by Knoevenagel condensation, and which are useful for imparting color and/or ultraviolet light screening properties to thermoplastic resins. See abstract. Moreover, the reference further discloses a curable reaction mixture containing 4,4-[(1,2 ethanediyl bis(oxy) bis[benzaldehyde] which has two aldehyde groups and 1,2 ethanediyl bis(cyanoacetate) which has two cyanoacetate groups together with a basic catalyst, and heating the mixture to produce a polymer. See abstract and Example 8. However, the reference does not teach that the aldehyde compound and the cyanoacetate compound each has an average molecular weight of 400-20,000g/mol or the average functionality of at least one compound greater than 2.0.
UPub20020040093 discloses an aldehyde functional polyurethane having a number average molecular weight greater than 1,000 and an average aldehyde functionality of at least 2. See paragraph [0013]. The examples include polyurethanes having Mn values of 3,310 and 5,580 and aldehyde equivalent weights of 1,333 corresponding to average aldehyde functionalities of about 2.48 and 4.19. See paragraphs [0073][-0080].
USPub20200257202 discloses bis(cyanoacetate) compounds prepared from polymer diols including polytetramethylene glycol having a molecular weight of about 250 to 3,000 g/mol and polypropylene glycol, providing cyanoacetate compound within the claimed molecular weight range. See paragraphs [0022]-[0023].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention use aldehyde functional polyurethane of UPub20020040093, paragraphs [0049]-[0050] [0055] and [0065], and the polymeric bis (cyanoacetate) of USPub20200257202, paragraph [0025], in the reaction mixture of USP5376650 because the references teach that aldehyde and cyanoacetate groups react under basic conditions to form a cured polymer coating.
Claim 2 is directed to the composition as claimed in claim 1, wherein less than 10% by weight, of water is present, based on the overall composition.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to limit the water content to less than 10% because, in addition to the discussion for claim 1 above, USPub20200257202 discloses reaction mixtures containing about 1-2% water. See paragraph [0028].
Claim 3 is directed to the composition as claimed in claim 1, wherein the compound having two or more aldehyde groups is liquid at room temperature.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an aldehyde component that is liquid at room temperature since, in addition to the discussion for claim 1 above, UPub20020040093 teaches liquid coating compositions cured at ambient temperature. See paragraph [0063]-[0065].
Claim 4 is directed to the composition as claimed in claim 1, wherein the average molecular weight M. of the first component in relation to the compounds containing aldehyde groups is in the range from 1000 to 20000g/mol, measured by gel permeation chromatography (GPC) versus polystyrene as standard.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select a molecular weight from 1000 to 20000g/mol because, in addition to the discussion for claim 1 above, UPub20020040093 discloses molecular weight of 3310 and 5580. See paragraphs [0073] and [0080].
Claim 5 directed the composition as claimed in claim 1, wherein the compounds containing aldehyde groups comprise a polymer having a polymer backbone containing poly(oxyalkylene) units and/or polyester units.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a polyoxylalkylene or polyester backbone because, in addition to the discussion for claim 1 above, UPub20020040093 discloses polyether and polyester polyols from preparing the polyurethane. See paragraphs [0027]-[0035].
Claim 6 directed the composition as claimed in claim 1,wherein the compound having two or more aldehyde groups additionally contains urethane groups.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the aldehyde containing compound to contain urethane groups since, in addition to the discussion for claim 1 above, UPub20020040093 discloses an aldehyde functional polyurethane. See paragraphs [0013]-[0017]-[0024].
Claim 7 directed the composition as claimed in claim 1, wherein the compounds containing aldehyde groups comprise a polymer containing urethane groups which is liquid at room temperature and has an average molecular weight M. of 1000 to 20 000 g/mol, and an average aldehyde functionality of 1.8 to 3.5.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the liquid polyurethane dispersion of UPub20020040093 having a molecular weight within the claimed range and an aldehyde functionality greater than two. See paragraphs [0063], [0073],[0074],[0080].
Claim 8 directed the composition as claimed in claim 1, wherein the compound having two or more aldehyde groups is obtained from the reaction of at least one hydroxy aldehyde with at least one polymer containing isocyanate groups or at least one polyisocyanate.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to prepare the aldehyde polyurethane by reacting a hydroxy aldehyde with a polyisocyanate since, in addition to the discussion for claim 1 above, UPub20020040093 also discloses the claimed reaction. See paragraphs [006],[0018]-[0024].
Claim 9 directed the composition as claimed in claim 1, wherein the average functionality of the second component in relation to the compounds containing cyanoacetate groups is in the range from 1.6 to 4.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a cyanoacetate functionality within the claimed range because, in addition to the discussion for claim 1 above, USPub20200257202 discloses difunctional bis(cyanoacetate) compounds. See paragraphs [0020-[0023].
Claim 10 is directed to the composition as claimed in claim 1,wherein the average molecular weight M" of the second component in relation to the compounds containing cyanoacetate groups is in the range from 400 to 10 000
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention select a cyanoacetate molecular weight from 400 to 10,000 since, in addition to the discussion for claim 1 above, USPub20200257202 discloses bis (cyanoacetates) prepared from polyether polyols having overlapping molecular weights. See paragraph [0023].
Claim 11 directed to the composition as claimed in claim 1, wherein the compounds containing cyanoacetate groups comprise at least one cyanoacetate-functional polymer selected from propoxylated 1,1,1- trimethylolpropane tris(cyanoacetate) having average molecular weight Me of 500 to 2000 g/mol, poly(oxy-l,2-propylene)diol bis(cyanoacetate) having average molecular weight Mn of 2000 to 10 000 g/mol, poly(oxy- l ,2-propylene)triol tris(cyanoacetate) having average molecular weight M~ of 2000 to 10 000 g/mol, poly(oxy-1,2-propylene)diol bis(cyanoacetate) containing ethylene oxide units and having average molecular weight M~ of 2000 to 10 000 g/mol, poly(oxy-l,2-propylene)triol tris(cyanoacetate) containing ethylene oxide units and having average molecular weight Ma of 2000 to 10 000 g/mol, dimer fatty acid-based polyester diol bis(cyanoacetate) having average molecular weight M~ of 1000 to 4000 g/mol and trimer fatty acid-based polyester-triol tris(cyanoacetate) having average molecular weight M~ of 1000 to 4000 g/mol,
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a polyoxypropylene diol bis(cyanoacetate) because since, in addition to the discussion for claim 1 above, USPub20200257202 discloses polypropylene glycol as a polyol for preparing bis(cyanoacetate) compounds. See paragraph [0023].
Claim 12 is directed to the composition as claimed in claim 1, wherein at least one further constituent selected from plasticizers, fillers and catalysts is present.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since, in addition to the discussion for claim 1 above, UPub20020040093 discloses basic catalysts and fillers for controlling curing and coating properties. See paragraphs [0055] and [0064].
Claim 13 is directed to the composition as claimed in claim 1, wherein less than 10%
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since UPub20020040093 teaches evaporating most of the organic solvent during preparation. See paragraphs [0058] and Examples 1-2.
Applicants’ claim 15 is directed to an elastic adhesive, elastic sealant or elastic coating on a substrate, comprising the composition of claim 1applied in a liquid state to at least one substrate, wherein the first and second and any further components of the composition present are mixed with one another before the mixed composition is applied to the at least one substrate. UPub20020040093 discloses two component coating compositions applied to metal, plastic, wood, glass, and other substrates. See paragraphs [0063] and [0065].
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
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.
Claim 14 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.
The recited “especially has a…” is unclear as to how this would differ from -has a…-
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 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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/Terressa Boykin/Primary Examiner, Art Unit 1765
