DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group II, claims 12-13 and new claims 20-24 in the reply filed on June 29, 2026 is acknowledged.
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Currently claims 1-11 and 14-19 are withdrawn and claims 20-24 are new, resulting in claims 12-13 and 20-24 pending for examination.
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 12-13 and 20-24 are 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.
In claim 12 the R’ in formula 1 is not defined. It is therefore unclear what groups R’ represents. All of the Examples of the instant specification appear to have symmetric polyalkylene oxide modified carbodiimides such that the repeat units would be the same on each side. In Fig. 1 it appears that R’ is equivalent to R2. Therefore R’ is interpreted as R2, and amending formula 1 to replace R’ with R2 would aid in overcoming the rejection.
Also in formula 1, the group R2 on the left hand side appears to be in the wrong location. Earlier the claim states that the polycarbodiimide is polyalkylene glycol terminated and R2 is a hydrogen (polyethylene glycol) or a methyl group (polypropylene glycol), however when R2 is a methyl group, is it in the incorrect location to be derived from, for example, polypropylene glycol. As can be seen in Fig. 1, in formula 4 the R2 group is attached to the carbon adjacent to the O-R3 group, however in formula 1 it is on the carbon adjacent to the COOH group. As identified above, the examples of the specification appear to be symmetrical, and R’ (interpreted as equivalent to R2) is in the expected location. For the purposes of examination, in order to be consistent with the written description of the compound and the reaction scheme provided in Fig. 1, the R2 group will be interpreted as attached to the carbon adjacent to the O-R3 group. Amending formula 1 such that R2 is in the expected location would aid in overcoming the rejection.
Claims 13 and 20-24 are also rejected under 35 U.S.C. 112(b) based on their dependency from claim 12, rejected above.
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.
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.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/0219322)1 in view of Imashiro (US 5856014)1.
With respect to claims 12-13, Yamane teaches a skin material (artificial leather) which comprises a design layer and a base cloth layer (fabric layer), where the design layer includes a surface layer (topcoat layer) and a foam layer (paragraph [0024]). The surface layer (topcoat layer) is preferably a polyurethane layer, which may be made with a carbodiimide-modified compound of aliphatic polyisocyanates or aromatic polyisocyanates as the polyisocyanate (paragraphs [0031]-[0037]). The foam layer is also preferably polyurethane (paragraph [0042]). The foam layer may be connected to the surface layer (topcoat layer) and the base cloth layer (fabric layer) via a urethane adhesive (paragraphs [0043], [0046]).
Yamane suggests the use of polyalkylene glycol terminated polycarbodiimide in any or all layers, however is silent as to the specific compound of claimed formula 1.
Imashiro exemplifies an aqueous carbodiimide which is the reaction product of 4,4-dicyclohexylmethane diisocyanate, anticipating R-1 as a cycloaliphatic group with 13 atoms as sought in formula 1, to a degree of polymerization of 10 which is within the range of n of formula 1 (see example 20). This product is reacted with poly(oxyethylene) monomethyl ether having a degree of polymerization of 6. This covers the range of m of formula 1 along with R-2 as hydrogen and R3 as methyl of formula 1 from the reaction of the ether with the NCO of the carbodiimide. Imashiro teaches the carbodiimides are aqueous and is suitable for coating which provide improved adhesion, chemical resistance, and water resistance (col. 1, lines 7-14).
Since both Yamane and Imashiro teach carbodiimide-base polyurethanes it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyurethane layers of Yamane to be the compounds disclosed by Imashiro, particularly the polycarbodiimide of Synthesis Example 20, in order to provide the skin (artificial leather) with improved adhesion, chemical resistance, and water resistance.
With respect to the solution being optically clear, it is noted that in the final artificial leather the polycarbodiimide will not be present as a an aqueous solution, therefore the optical properties of the intermediate product does not provide a structural feature of the final claimed invention.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/0219322)2 in view of Imashiro (US 5856014)1 as applied to claim 12 above and further in view of Tawade (“Biobased Di-/Polyisocyanates for Polyurethanes: An Overview)1.
With respect to claims 20-22, Yamane in view of Imashiro teaches all the limitations of claim 12 above. Imashiro exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic and aromatic diisocyanates as discussed above. Imashiro is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 20-22.
Tawade, working in the field of biobased diisocyanates for polyurethanes similar to Imashiro and the instant specification, teaches a list of known biobased diisocyanates in Table 1 (page 44) including isosorbide (#6, #7, and #9), 1,3 furan (#1) and lysine (#19 methyl ester and #20 ethyl ester for R4 = methyl or ester). Tawade further teaches in Table 1 multiple aliphatic groups from 5 (#10 – pentadiisocyanate) and 6 (#11 – hexamethylene diisocyanate) along with others in the Table that read over the aliphatic group of about 6 to about 20 carbons atoms of formula 1.
Tawade teaches in the first column of page 41 that the industry has been driving to use more sustainable starting materials based on bio-based starting materials. Tawade further teaches in the third column of page 45 that these bio-based diisocyanate starting materials are derived from renewable resources and are CO2 neutral and could direct drop in replacements for petrochemical based diisocyanates (such as the ones listed in the first column of page 42, also used by Imashiro).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the synthesis examples of Imashiro to utilize the above identified biobased isocyanates for the carbodiimization because it is known in the art from Tawade that bioderived isocyanates are derived renewable resources and thus are more sustainable, and are also CO2 neutral.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/0219322)3 in view of Imashiro (US 5856014)1 as applied to claim 12 above and further in view of Robinson (US 11,214,539)1.
With respect to claim 23, Yamane in view of Imashiro teaches all the limitations of claim 12 above. Imashiro exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic and aromatic diisocyanates as discussed above. Imashiro is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 23.
Robinson, working in the field of biobased diisocyanates for polyurethanes similar to Imishiro and the instant specification, teaches rosin diisocyanates (Formula 2 and Formula 3) which are analogous to TDI and MDI (which Imashiro teaches can be used for the diisocyanate) (col. 2, lines 48-55) which are based on renewable resources to lessen climate change effects (col. 1, lines 55-64).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the synthesis examples of Imashiro to utilize the rosin based diisocyanates of Robinson for the carbodiimidization for the advantage of using biobased diisocyanates which are based on renewable resources to lessen climate change effects.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/0219322)4 in view of Imashiro (US 5856014)1 as applied to claim 12 above and further in view of Robinson (US 11,358,929)1,5.
With respect to claim 23, Yamane in view of Imashiro teaches all the limitations of claim 12 above. Imashiro exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic and aromatic diisocyanates as discussed above. Imashiro is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 24.
Robinson ‘929, working in the field of biobased diisocyanates for polyurethanes similar to Imashiro and the instant specification, teaches cardanol diisocyanates (Formula 1 and Formula 2) which are analogous to TDI and MDI (which Imashiro teaches can be used for the diisocyanate) (col. 2, lines 45-50) which are based on renewable resources to lessen climate change effects (col. 2, lines 1-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the synthesis examples of Imashiro to utilize the cardanol based diisocyanates of Robinson ‘929 for the carbodiimization for the advantage of using biobased diisocyanates which are based on renewable resources to lessen climate change effects.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/0219322)6 in view of Takahashi (US 2011/0021679) and Imashiro (US 6124398)7.
With respect to claim 12, Yamane teaches a skin material (artificial leather) which comprises a design layer and a base cloth layer (fabric layer), where the design layer includes a surface layer (topcoat layer) and a foam layer (paragraph [0024]). The surface layer (topcoat layer) is preferably a polyurethane layer, which may be made with a carbodiimide-modified compound of aliphatic polyisocyanates or aromatic polyisocyanates as the polyisocyanate (paragraphs [0031]-[0037]). The foam layer is also preferably polyurethane (paragraph [0042]). The foam layer may be connected to the surface layer (topcoat layer) and the base cloth layer (fabric layer) via a urethane adhesive (paragraphs [0043], [0046]).
Yamane suggests the use of polyalkylene glycol terminated polycarbodiimide in any or all layers, however is silent as to the specific compound of claimed formula 1.
Takahashi teaches a carbodiimide compound, a carbodiimide composition, and an aqueous coating composition containing the compound or composition, each of which is useful in improving water resistance, solvent resistance, and adhesion of a formed coating film (paragraph [0001]). Takahashi teaches a carbodiimide composition represented by formula (1-a) wherein X represents a group represented by formula (a), R3 represents a C1 to C3 alkyl group (R3 is a methyl, ethyl, or propyl moiety); and R4 represents a hydrogen atom or a C1 to C3 alkyl group (R2 is a hydrogen or a methyl group) (paragraph [0018]). L2 (R1) represents a C1 to C18 divalent aliphatic hydrocarbon group, a C3 to C13 divalent alicyclic hydrocarbon group, a C6 to C14 divalent aromatic hydrocarbon group, or a C3 to C12 divalent heterocyclic group (paragraph [0018]). With respect to formula (1-a), m of claimed formula 1 would be 1, and n is an integer of 1 to 15 (paragraph [0018]).
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Takahashi also teaches a carbodiimide compound represented by formula (2), wherein Y represents a group represented by formula (b), wherein R5 represents a C1 to C4 alkyl group (R3 is a methyl, ethyl, or propyl group), R6 represents a hydrogen atom or a methyl group (R2 is a hydrogen or a methyl group), and m is an integer of 4 to 30 (paragraph [0018]). L2 (R1) and n are the same as described with respect to formula (1-a) above (paragraph [0018]).
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Since both Yamane and Takahashi teach carbodiimide-base polyurethanes it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the polyurethane layers of Yamane to be the compounds disclosed by Takahashi, in order to provide the skin (artificial leather) with improved adhesion, solvent resistance, and water resistance.
Takahashi teaches that the use of methyl glycolate or methyl lactate as end groups into a carbodiimide compound provides water-soluble or water-dispersible effects (paragraph [0012]).
Yamane in view of Takahashi is silent as to the polycarbodiimide being polyalkylene glycol terminated.
Imashiro ‘398 teaches a carbodiimide crosslinking agent which has good miscibility and reactivity with resins to be crosslinked and is able to form a film which has good resistances to water, chemicals, and wear (col. 2, lines 1-6). Imashiro ‘398 further teaches that the carbodiimide is formed from a diisocyanate (A), a diisocyanate (B), and (C) a monofunctional water-soluble or water dispersible compound which upon carbodiimization will block the terminal isocyanate groups with a hydrophilic group to provide good water solubility and dispersibility as well as high reactivity and good miscibility with resins to be crosslinked (col. 2, lines 11-27), such as polyurethane resin (col. 5, lines 48-67). The monofunctional water-soluble or dispersible organic component (C) used to impart solubility or dispersibility in water may be any compound which has one from capable with reacting with an isocyanate group and are soluble or dispersible in water, e.g., OH group, COOH group, NH2 group, or SO3H group (col. 4, lines 40-61). A specific example is preferably a polyethylene glycol monomethyl ether and a polypropylene glycol monomethyl ether (col. 4, lines 51-61).
Since both Yamane in view of Takahashi and Imashiro ‘398 teach polycarbodiimides terminated through the use of compounds with OH groups in order to provide water solubility or dispersibility to the carbodiimide, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the methyl glycolate or methyl lactate with the polyethylene glycol monomethyl ether or the polypropylene glycol monomethyl ether of Imashiro ‘398. The substitution would provide the predictable result of a polycarbodiimide that is water soluble or dispersible, has good resistance to chemicals, and good miscibility with polyurethane. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B).
It is noted that when polyethylene glycol monomethyl ether is used, R2 will be H and R3 will be methyl in the claimed formula 1. When polypropylene glycol monomethyl ether is used, both R2 and R3 will be methyl in the claimed formula 1.
With respect to the solution being optically clear, it is noted that in the final artificial leather the polycarbodiimide will not be present as a an aqueous solution, therefore the optical properties of the intermediate product does not provide a structural feature of the final claimed invention.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/023219322)8 in view of Takahashi (US 2011/0021679) and Imashiro (US 6124398)9 as applied to claim 12 above and further in view of Tawade (“Biobased Di-/Polyisocyanates for Polyurethanes: An Overview)1.
With respect to claims 20-22, Yamane in view of Takahashi and Imashiro ‘398 teaches all the limitations of claim 12 above. Takahashi exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic, aromatic, and heteroaromatic diisocyanates as discussed above. Takahashi is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 20-22.
Tawade, working in the field of biobased diisocyanates for polyurethanes similar to Takahashi and the instant specification, teaches a list of known biobased diisocyanates in Table 1 (page 44) including isosorbide (#6, #7, and #9), 1,3 furan (#1) and lysine (#19 methyl ester and #20 ethyl ester for R4 = methyl or ester). Tawade further teaches in Table 1 multiple aliphatic groups from 5 (#10 – pentadiisocyanate) and 6 (#11 – hexamethylene diisocyanate) along with others in the Table that read over the aliphatic group of about 6 to about 20 carbons atoms of formula 1.
Tawade teaches in the first column of page 41 that the industry has been driving to use more sustainable starting materials based on bio-based starting materials. Tawade further teaches in the third column of page 45 that these bio-based diisocyanate starting materials are derived from renewable resources and are CO2 neutral and could direct drop in replacements for petrochemical based diisocyanates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diisocyanates of Yamane in view of Takahashi and Imashiro ‘398 to utilize the above identified biobased isocyanates for the carbodiimization because it is known in the art from Tawade that bioderived isocyanates are derived renewable resources and thus are more sustainable, and are also CO2 neutral.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/023219322)10 in view of Takahashi (US 2011/0021679) and Imashiro (US 6124398)11 as applied to claim 12 above and further in view of Robinson (US 11,214,539)1.
With respect to claim 23, Yamane in view of Takahashi and Imashiro ‘398 teaches all the limitations of claim 12 above. Takahashi exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic, aromatic, and heterocyclic diisocyanates as discussed above. Takahashi is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 23.
Robinson, working in the field of biobased diisocyanates for polyurethanes similar to Takahashi and the instant specification, teaches rosin diisocyanates (Formula 2 and Formula 3) which are analogous to TDI and MDI (col. 2, lines 48-55) which are based on renewable resources to lessen climate change effects (col. 1, lines 55-64).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diisocyanates of Yamane in view of Takahashi and Imashiro ‘398 to utilize the rosin based diisocyanates of Robinson for the carbodiimidization for the advantage of using biobased diisocyanates which are based on renewable resources to lessen climate change effects.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2023/023219322)12 in view of Takahashi (US 2011/0021679) and Imashiro (US 6124398)13 as applied to claim 12 above and further in view of Robinson (US 11,358,929)1,14.
With respect to claim 23, Yamane in view of Takahashi and Imashiro ‘398 teaches all the limitations of claim 12 above. Takahashi exemplifies making multiple aqueous carbodiimides from aliphatic, cycloaliphatic, aromatic, and heterocyclic diisocyanates as discussed above. Takahashi is open to any of these general categories of diisocyanates but does not teach or suggest any of the specific moieties of claims 24.
Robinson ‘929, working in the field of biobased diisocyanates for polyurethanes similar to Takahashi and the instant specification, teaches cardanol diisocyanates (Formula 1 and Formula 2) which are analogous to TDI and MDI (col. 2, lines 45-50) which are based on renewable resources to lessen climate change effects (col. 2, lines 1-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diisocyanates of Yamane in view of Imashiro ‘398 to utilize the cardanol based diisocyanates of Robinson ‘929 for the carbodiimization for the advantage of using biobased diisocyanates which are based on renewable resources to lessen climate change effects.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-13 and 20-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 25-31, 33, and 36-37 of copending Application No. 18/823,137 (reference application)15. It is noted that the claims referenced are those amended by the Examiner and approved by Applicant’s representative in the 4/13/2026 Notice of Allowance. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to the instant claim 12, claims 16 and 31 of Robinson ‘137 claims an artificial leather comprising: a fabric layer; and adhesive layer; a foam layer; and a topcoat layer, wherein the adhesive layer, the foam layer, and the topcoat layer are each formed from a first, second, and third aqueous dispersion comprising polyurethane, respectively, and wherein at least one of the first, second, and third aqueous dispersions further comprises a polyalkylene glycol terminated polycarbodiimide of formula 1:
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where: R1 is an aliphatic group from about 5 to about 12 carbon atoms, a cycloaliphatic moiety of from about 6 to about 20 carbon atoms, an isosorbide moiety, a 1,3-furan moiety, an L-lysine alkyl ester moiety, a rosin moiety, a cycloaliphatic unsaturated moiety, or a cardanol moiety; R2 is a hydrogen or a methyl group; R3 is a methyl, ethyl, or propyl moiety; and n and m are integers and are each independently between 1 and about 30 (Robinson ‘137; claims 16 and 31).
With respect to the solution being optically clear, it is noted that in the final artificial leather the polycarbodiimide will not be present as a an aqueous solution, therefore the optical properties of the intermediate product does not provide a structural feature of the final claimed invention.
With respect to the instant claim 13, Robinson ‘137 claims all the limitations of claim 12 above. It would have been obvious to one of ordinary skill in the art to try whether the first, second, or third aqueous dispersions, two of the aqueous dispersions, or all of the aqueous dispersions comprise the polycarbodiimide of formula 1, in order to determine which provides the end properties desired. See MPEP 2143.
Additionally with respect to claim 13, claim 33 of Robinson ‘137 further claims wherein the first aqueous polyurethane dispersion, the second aqueous polyurethane dispersion, and the third aqueous polyurethane dispersion are the same ( Robinson ‘137; claim 33).
With respect to the instant claim 20, Robinson ‘137 claims all the limitations of claim 12 above. Claims 25 and 36 of Robinson ‘137 further claims wherein R1 is an isosorbide moiety of formula 6a or 6b:
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(Robinson ‘137; claims 25, 36).
With respect to the instant claim 21, Robinson ‘137 claims all the limitations of claim 12 above. Claim 26 of Robinson ‘137 further claims wherein R1 is a 1,3-furan moiety of formula 7:
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(Robinson ‘137; claim 26).
With respect to the instant claim 22, Robinson ‘137 claims all the limitations of claim 12 above. Claim 27 of Robinson ‘137 further claims wherein R1 is an L-lysine moiety of formula 8:
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wherein R4 is CH3 or CH2CH3 (Robinson ‘137; claim 27).
With respect to the instant claim 23, Robinson ‘137 claims all the limitations of claim 12 above. Claim 28 of Robinson ‘137 further claims wherein R1 is a rosin moiety of formula 9a or 9b:
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wherein R4 is CH2 or CH3; or
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wherein R4 is CH2, CH2CH2 or CH2CH2CH2 (Robinson ‘137; claim 28).
With respect to the instant claim 24, Robinson ‘137 claims all the limitations of claim 12 above. Claims 30 and 37 of Robinson ‘137 further claims wherein R1 is a cardanol moiety of formula 11a or 11b:
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wherein R4 is alkyl, and R is pentadecyl; or
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wherein R4 is CH2, CH2CH2 or CH2CH2CH2, and R is pentadecyl (Robinson ‘137; claim 30).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. However it is noted that a Notice of Allowance for application 18/823,137 was mailed on 6/25/2026.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ambrose (US 2009/0246393) discloses polycarbodiimides, processes for their preparation, waterborne coating compositions and the use of the water-borne coating compositions to coat flexible substrates such as leather, artificial leather, textile fabrics, fibers and non-wovens that are used in the manufacture of athletic footwear (abstract).
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Cited in IDS
2 Cited in IDS
3 Cited in IDS
4 Cited in IDS
5 Hereinafter referred to as Robinson ‘929
6 Cited in IDS
7 Hereinafter referred to as Imashiro ‘398
8 Cited in IDS
9 Hereinafter referred to as Imashiro ‘398
10 Cited in IDS
11 Hereinafter referred to as Imashiro ‘398
12 Cited in IDS
13 Hereinafter referred to as Imashiro ‘398
14 Hereinafter referred to as Robinson ‘929
15 Hereinafter referred to as Robinson ‘137
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