DETAILED CORRESPONDENCE
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 Interpretation
First substrate
Urethane mixture (polyisocyanate X + polyol Y)
↓
↑
Catalyst (Z, dot pattern)
Second substrate
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues that (graphically summarized below)
PRIOR ART
CLAIM
First substrate
First substrate
Catalyst (Z)
Only Urethane mixture (X + Y)
Urethane mixture (X + Y)
↓
↓
↑
↑
Urethane mixture (X + Y)
Catalyst (Z)
Only Catalyst (Z, dot pattern)
Second substrate
Second substrate
Examiner does not find this persuasive because it is known to perform the claim such that “An activator is applied to one or both joint surfaces; adhesive is then applied to one surface to begin curing.” (Chapter 17 - Adhesive Bonding, from Handbook of Plastics Joining (Second Edition) A Practical Guide 2009, Pages 145-173, Pg 2009).
This is rejected below using the the prior art of Jung (US 20200248041 A1), newly cited, which teaches
First substrate
Urethane mixture
↓
↑
Catalyst (Z)
Second substrate
Specifically, in the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, adhesive bonding (P0008), Jung demonstrates a similar method (claim 11) that is suitable for two-component polyurethane adhesives as claimed (“the present invention relates to the use of an activator composition as described above for acceleration of the buildup of adhesion of a two-component adhesive, preferably a two-component polyurethane adhesive” [P0078]); the method encompasses wherein only the liquid mixture being applied to the first substrate, only the catalyst (Z) being applied to the second substrate (
“i) applying an activator composition as claimed in claim 1 to at least one of the two substrates;
ii) flashing off the activator composition applied;
iii) applying a two-component adhesive or sealant to the first substrate S1;
iv) contacting the adhesive or sealant with a second substrate S2;” (Claim 11, graphically summarized below)
Jung
First substrate
(catalyst optional but at least here or below)
Urethane mixture
↓
↑
(catalyst optional but at least here or above)
Second substrate
This encompasses three situations:
Jung and Claim Jung Jung
First substrate
First substrate
First substrate
Catalyst (Z)
Catalyst (Z)
Urethane mixture
Urethane mixture
Urethane mixture
↓
↓
↓
↑
↑
↑
Catalyst (Z)
Catalyst (Z)
Second substrate
Second substrate
Second substrate
The disclosure of Jung that the catalyst is applied to either or both of the first; and second substrate and the adhesive is applied to the first substrate, fairly encompasses and renders obvious applying the catalyst to one surface and the adhesive to another. This is obvious on its face because there are only three options regarding the placement of the catalyst (i.e., catalyst on both, catalyst on first substrate, or catalyst on second substrate) encompassed by the Jung.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9, 11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tribelhorn (US 20100059179 A1) in view of Jung (US 20200248041 A1) and further in view of Johnson (US 20100291825 A1).
In reference to claim 1, Tribelhorn discloses a method for producing a flexible-packaging film in which a first substrate and a second substrate are laminated with a reactive adhesive of a polyisocyanate composition (X) and a polyol composition (Y) therebetween, the method comprising (graphically summarized by Examiner below):
First substrate
Catalyst (Z)
Urethane mixture (polyisocyanate X + polyol Y)
↓
↑
Urethane mixture (polyisocyanate X + polyol Y)
Catalyst (Z)
Second substrate
a two-component separate application step in which a liquid mixture applied to the first substrate (“adhesive composition is applied to a first substrate” [P0060]) and including the polyisocyanate composition (X) and the polyol composition (Y) (“polyisocyanates“ [P0036]) and “isocyanate reactive compound is a polyol” [P0037]) and a catalyst (Z) formed in a dot pattern on the second substrate (“catalyst solution or dispersion can be applied to one of more of the substrates prior to the time the adhesive is applied to each substrate” [P0060]), are brought into contact with each other to achieve contact-bonding together, (“the first substrate is thereafter contacted with a second substrate” [P0060])
wherein the catalyst (Z) accelerates a urethane-forming reaction and comprises at least one catalyst selected from metal-based catalysts, amine-based catalysts, diazabicycloundecene-based catalysts, aliphatic cyclic amide compounds, and titanium chelate complexes (“polyisocyanate based adhesive systems, the catalyst can be … metal” [P0026]).
Tribelhorn teaches that “catalyst solution or dispersion can be applied to one of more of the substrates prior to the time the adhesive is applied to each substrate” (P0060). This is illustrated by examiner, above.
Tribelhorn does not disclose that the “only the liquid mixture being applied to the first substrate, only the catalyst (Z) being applied to the second substrate” (difference illustrated below).
PRIOR ART
CLAIM
First substrate
First substrate
Catalyst (Z)
Urethane mixture (X + Y)
Urethane mixture (X + Y)
↓
↓
↑
↑
Urethane mixture (X + Y)
Catalyst (Z)
Catalyst (Z, dot pattern)
Second substrate
Second substrate
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, adhesive bonding (P0008), Jung demonstrates a similar method (claim 11) that is suitable for two-component polyurethane adhesives as claimed (“the present invention relates to the use of an activator composition as described above for acceleration of the buildup of adhesion of a two-component adhesive, preferably a two-component polyurethane adhesive” [P0078]); the method encompasses wherein only the liquid mixture being applied to the first substrate, only the catalyst (Z) being applied to the second substrate (
“i) applying an activator composition as claimed in claim 1 to at least one of the two substrates;
ii) flashing off the activator composition applied;
iii) applying a two-component adhesive or sealant to the first substrate S1;
iv) contacting the adhesive or sealant with a second substrate S2;” (Claim 11, graphically summarized below)
Jung
First substrate
(catalyst optional but at least here or below)
Urethane mixture
↓
↑
(catalyst optional but at least here or above)
Second substrate
This encompasses three situations:
First substrate
First substrate
First substrate
Catalyst (Z)
Catalyst (Z)
Urethane mixture
Urethane mixture
Urethane mixture
↓
↓
↓
↑
↑
↑
Catalyst (Z)
Catalyst (Z)
Second substrate
Second substrate
Second substrate
The disclosure of Jung that the catalyst is applied to either or both of the first; and second substrate and the adhesive is applied to the first substrate, fairly encompasses and renders obvious applying the catalyst to one surface and the adhesive to another. This is obvious on its face because there are only a limited number of options regarding the placement of the catalyst (i.e., catalyst on both, catalyst on first substrate, or catalyst on second substrate) encompassed by the Jung1.
Jung explains that “As a result of the high concentration of catalytically active sites on the bonding surface, this results in the desired rapid buildup of adhesion” (P0003). Jung indicates that this is generally known in the art (P0002).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to apply the catalyst to the second substrate and the urethane mixture to the first substrate and then bring them together as claimed in order to achieve “the desired rapid buildup of adhesion” improvement of Jung in the method.
The combination does not teach wherein the catalyst (Z) formed in a dot pattern. Jung applies the catalyst by hand (P0092)
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, adhesive bonding (P0083), Johnson demonstrates an example of joining two substrates providing an adhesive printing a dot pattern one substrate and then joining the substrates using a nip-roller (“film and textile were laminated together by gravure printing a dot pattern of moisture curable polyurethane adhesive onto the membrane surface. … adhesive-printed side of the ePTFE membrane was pressed to one side of the woven textile in a nip roll” [P0083]).
The combination would be achievable by applying the dot pattern of Johnson to the method when dispensing the material applied to the substrate.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the method such that the catalyst (Z) formed in a dot pattern and in order to automate the application of catalyst by use of printing.
A person having ordinary skill in the art would have been specifically motivated to configure the method such that the catalyst (Z) formed in a dot pattern in order to combine prior art elements according to known methods to yield predictable results; achieve the simple substitution of one known element for another to obtain predictable results; use of known technique to improve similar devices (methods, or products) in the same way.
In reference to claim 2-3 the cited prior art discloses the invention as in claim 1.
Tribelhorn further discloses wherein the substrates are plastic films, metal vapor-deposition films, or metal foils; wherein, as the second substrate, a non-oriented film is employed (“”sheet molding compound (SMC), fiber reinforced plastics, such as polyester, and coated metals, e.g., e-coated aluminum and steel and painted metal sheets” [P0062]. Generic polymeric or metal substrates encompass non-oriented film.)
In reference to claim 4 the cited prior art discloses the invention as in claim 1.
Johnson further disclose wherein the first substrate and the second substrate are contact-bonded together using a nip roll (“nip roll” [P0083]).
In reference to claim 5 the cited prior art discloses the invention as in claim 1.
The combination does not teach wherein a ratio of a mass of the catalyst (Z) to a mass of the liquid mixture defined as 100, the liquid mixture being applied to the first substrate and including the polyisocyanate composition (X) and the polyol composition (Y), is in a range of 0.5 to 67, however, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In reference to claim 6-7 the cited prior art discloses the invention as in claim 1.
Tribelhorn further discloses wherein the polyol composition (Y) contains at least one polyol selected from the group consisting of polyester polyol, polyester urethane polyol, polyether urethane polyol, polyether polyol, and castor oil-based polyol (“polyether polyol” [P0037]) and a tertiary amine compound (B) having a plurality of hydroxyl groups (“tertiary amines” [P0039]).
In reference to claim 8 the cited prior art discloses the invention as in claim 1.
The cited prior art does not specifically disclose that the structure has the property of wherein the reactive adhesive has an amine value in a range of 0.5 to 40 mgKOH/g. However, the cited prior art teaches an identical or substantially identical structure as claimed. Therefore, the property is presumed to be inherent to the cited prior art. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function; and, the structure must be clearly and positively specified.
In reference to claim 9 the cited prior art discloses the invention as in claim 1.
The combination does not teach wherein a ratio of a mass of the polyol composition (Y) to a mass of the polyisocyanate composition (X) defined as 100 is in a range of 10 to 150, however, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.)
In reference to claim 11 the cited prior art discloses the invention as in claim 1.
Tribelhorn further discloses “N-hydroxy-alkylquatemary ammonium carboxylate blocked with 2 ethyl hexanoic acid in ethylene glycol” (P0026)
In reference to claim 13 Tribelhorn further discloses wherein the catalyst (Z) contains a tertiary amine compound (C) having multiple hydroxyl groups (“CURITHANE™ 52 catalyst (2-Methyl(n-methyl amino b-sodium acetate nonyl phenol” [P0026])
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414
464
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The structure of CURITHANE™ 52 catalyst, above, not source from cited reference.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lay2 discusses urethane surface bonding:
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204
598
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Segura3, "Chemistry of polyurethane adhesives and sealants" by D.M. Segura et al. teaches the fundamental reactions, raw materials, and structural properties of polyurethane (PU) systems used for bonding. It details the chemistry primarily involving isocyanates and polyols that enables tailorable formulations for diverse industrial applications.
Bidari4 provides an investigation of adhesion occurring between
polyurethane substrates and polyurethane surface coatings and associated background subject matter.
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392
682
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 See also “An activator is applied to one or both joint surfaces; adhesive is then applied to one surface to begin curing.” (Chapter 17 - Adhesive Bonding, from Handbook of Plastics Joining (Second Edition) A Practical Guide 2009, Pages 145-173, Pg 2009).
This is not relied upon in the rejection, but presented in order to inform Applicant that the general idea of activating a surface and then contacting this with the adhesive is known in the adhesive bonding arts.
2 Lay, D.G., Cranley, P. and Pizzi, A., 2017. Polyurethane adhesives. In Handbook of adhesive technology (pp. 321-348). CRC Press.
3 Segura, D.M., Nurse, A.D., McCourt, A., Phelps, R. and Segura, A., 2005. Chemistry of polyurethane adhesives and sealants. In Handbook of adhesives and sealants (Vol. 1, pp. 101-162). Elsevier Science Ltd.
4 Bidari, K., 1991. Investigation of adhesion occurring between polyurethane substrates and polyurethane surface coatings (Doctoral dissertation, Loughborough University).
Prosecution Insights