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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 12 September 2025 has been entered.
Indefiniteness Rejection
3. 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.
4. Claims 6 and 10 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.
The units specified for the hydroxyl numbers within each claim do not correspond to those conventionally employed; accordingly, the claimed hydroxyl numbers cannot be understood or reconciled with hydroxyl numbers of the prior art.
Double Patenting
5. 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.
6. Claims 1-3, 5, 7, 15, 18-21, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 9, and 12 of copending Application No. 18/005,261 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims is drawn to a a two-component, solventless adhesive composition comprising an isocyanate component and an isocyanate reactive component comprising (1) an amine-initiated polyol comprising two or more primary hydroxyl groups and a backbone incorporating tertiary amines and (2) a phosphate ester polyol. Additionally, the composition of the copending application comprises additional polyols, such as those of instant claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art Rejection
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 1-7, 9, 11, and 13-23 are rejected under 35 U.S.C. 103 as being unpatentable over Roock et al. (US 2016/0090515 A1) in view of WO 2015/168670 A1.
Roock et al. disclose two part polyurethane adhesives comprising a polyol composition component and a polyisocyanate component, wherein the polyol composition component comprises an amine-initiated polyol with a suitable polyol being polyether tetrol initiated with ethylenediamine. The polyisocyanate component includes polyisocyanate species that meet those claimed. See paragraphs [0046], [0049], [0059]+, and [0096]+; and examples.
9. Though Roock et al. fail to disclose the claimed phosphate ester polyol and coupling agents, these components were known components of polyurethane adhesive compositions at the time of invention, as evidenced by WO 2015/168670 A1. . The secondary reference discloses that the phosphate ester polyols act as phosphate functional adhesion promoters, and the examples demonstrate that the presence of these components yields adhesives having improved laminating properties. See paragraphs [0001], [0015], and [0023]+ within the secondary reference. The secondary reference further discloses phosphate ester polyols produced by reacting polyphosphoric acid with polyol and polyisocyanate. See paragraph [0034]. Silane coupling agents are disclosed within paragraph [0049] and other additives, corresponding to those claimed, are set forth within paragraph [0050]. Accordingly, since it has been held that it obvious to use a known compound for its known use or function, the position is taken that it would have been obvious to incorporate these components into the adhesive composition of the primary reference, so as to obtain an adhesive having improved laminating properties. Regarding claim 11, since the respective amine-initiated polyol of the primary reference and claim are produced in the same manner using the same reactants, one would have expected that the polyols of the primary reference possess comparable viscosities. Regarding claim 13, given the disclosure within paragraphs [0034] and [0084] of the primary reference, the position is taken that producing a phosphate ester polyol having the claimed properties would have been within the capabilities of the skilled artisan.
10. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Roock et al. (US 2016/0090515 A1) in view of Waddington et al. (US 2003/0100699 A1) and WO 2015/168670 A1.
Roock et al. disclose two part polyurethane adhesives comprising a polyol composition component and a polyisocyanate component, wherein the polyol composition component comprises an amine-initiated polyol with a suitable polyol being polyether tetrol initiated with ethylenediamine. The polyisocyanate component includes polyisocyanate species that meet those claimed. See paragraphs [0046], [0049], [0059]+, and [0096]+; and examples.
11. Though Roock et al. fail to disclose the use of the claimed compound, the use of an amine corresponding to that claimed as an autocatalytic polyol within polyurethane formulations was known at time of invention, as evidenced by the teachings of Waddington et al. (see abstract). Accordingly, the position is taken that it would have been obvious to incorporate such a compound within the composition of the primary reference for the purpose of introducing further autocatalytic characteristics into the composition.
12. Though Roock et al. fail to disclose the claimed phosphate ester polyol, phosphate ester polyols were known components of polyurethane adhesive compositions at the time of invention, as evidenced by WO 2015/168670 A1. The secondary reference discloses that the phosphate ester polyols act as phosphate functional adhesion promoters, and the examples demonstrate that the presence of these components yields adhesives having improved laminating properties. See paragraphs [0001], [0015], and [0023]+ within the secondary reference. Furthermore, the secondary reference discloses phosphate ester polyols produced by reacting polyphosphoric acid with polyol and polyisocyanate. See paragraph [0034]. Accordingly, since it has been held that it obvious to use a known compound for its known use or function, the position is taken that it would have been obvious to incorporate these components into the adhesive composition of the primary reference, so as to obtain an adhesive having improved laminating properties.
13. Applicants have argued that their showings of unexpected results rebut the prima facie case of obviousness. In response, the examiner has considered the argued showings; however, they are insufficient to overcome the prior art rejections, because the claims are not commensurate in scope with the argued showings in terms of reactant species and amounts. Considering the scope of instant claim 1 relative to the argued inventive examples, the argued showings are of far more limited scope than the instant claims; accordingly, the showings fail to establish that the argued unexpected results hold for the full scope of the claims. It has been held that the claims must be commensurate in scope with examples demonstrating unexpected results. In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978).
Allowable Subject Matter
14. Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
15. 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