DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 12/30/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 3-7, 12-14 and 20-24 are examined on the merits in this office action.
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.
Claims 1, 3-7 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Vietti et al. (US 2017/0226391 A1 cited in IDS) in view of Singh et al. (US 2015/0031815 A1 cited in IDS).
Regarding claims 1, 4, 7 and 12, Vietti et al. disclose an adhesive composition (two-component solvent-based adhesive composition) comprising polyisocyanate, phosphate-functional polyol, phosphorous-free polyol and solvent (see Abstract and paragraphs 0004, 0015, 0023, 0048, 0050). The polyisocyanate can be isocyanate functional prepolymer such as a reaction product of one or more isomers of MDI with one or more polyols, i.e. aromatic isocyanate prepolymer (see paragraph 0022). The phosphate-functional polyol has structure (see paragraphs 0023-0024) similar to the phosphate-terminated polyol utilized in the present invention (se paragraphs 0067-0071 of published application). That is, phosphate-functional polyol is phosphate-terminated polyol. The phosphate-functional polyol is an adhesion promoter (see paragraph 0001). The polyol component contains phosphate-functional polyol and phosphorous-free polyol (see paragraph 0048). That is, the polyol component consists of phosphate-functional polyol, phosphorous-free polyol. Further, the total amount of polyols based on 100 parts by weight of polyisocyanate compounds is 1 to 800 parts by mass or less (see paragraph 0049). Therefore, polyisocyanate to polyol weight ratio, based on dry weight is 100:1 to 100:800, which overlaps with that presently claimed.
The adhesive composition is curable, wherein the chemical reactions of curing involves reaction of isocyanate groups with hydroxyl groups to form urethane linkages (see paragraph 0055). Therefore, the adhesive composition comprises reaction product of polyisocyanate component that is a prepolymer and a polyol component comprising phosphorous-free polyol and phosphate-functional polyol. Given that other components are optional in the adhesive composition, the polyisocyanate component, the polyol component and solvent amount to 100 wt% of the adhesive composition.
Vietti et al. do not disclose the phosphorus-free polyol is a polyester-polycarbonate polyol as presently claimed.
Singh et al. disclose an adhesive composition comprising a polyester-polycarbonate copolymer polyol (see Abstract). The polyester-polycarbonate polyol is a reaction product of a polyester polyol prepared from one or more organic acids and one or more glycols, and a polycarbonate polyol. Specifically, the polyester polyol is derived from adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol and 1,6-hexane diol (see paragraphs 0015, 0016, 0017). The polycarbonate polyol is prepared from alkane diol such as 1,4-butanediol and organic carbonate (see paragraphs 0024, 0025). That is, polycarbonate polyol is poly(1,4-butanediol-carbonate) (see page 6, Table 1). The polyester-polycarbonate polyol is prepared by reaction of polyester polyol and poly(1,4-butanediol-carbonate) (see page 7, Table II and Table III). Accordingly, the polyester-polycarbonate polyol of Singh et al. comprises the reaction product of adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol, 1,6-hexane diol and poly(1,4-butanediol-carbonate). The adhesive based on the polyester-polycarbonate polyol has excellent hydrolytic stability, good initial adhesion and excellent processability (see paragraphs 0010 and 0102). Singh et al. does not disclose the number average molecular weight (Mn) or weight average molecular weight (Mw) of the polyester-polycarbonate. However, Singh et al. does disclose the polyester polycarbonate is made from polyester polyol having Mn of 2,000-8000 (see paragraphs 0086-0089) and polycarbonate polyol having Mn of 500-5000 (see paragraph 0021). Further, given the relationship between weight average molecular weight (Mw) and number average molecular weight (Mn), i.e. Mw/Mn>1, the Mw of the polyester polyol would necessarily be greater than 2000-8000 while the Mw of the polycarbonate polyol would necessarily be greater than 500-5000. Given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate as presently claimed. Given that Mw and Mn of the polyester-polycarbonate overlap with that presently claimed, a viscosity (at 25 °C and at 40 °C) of polyester-polycarbonate will necessarily inherently overlap with that presently claimed.
In light of motivation for using the polyester-polycarbonate polyol disclosed by Singh et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyester-polycarbonate polyol of Singh et al. as the phosphorous-free polyol in Vietti et al. in order to provide excellent hydrolytic stability, good initial adhesion and excellent processability, and thereby arrive at the claimed invention.
Regarding claim 3, as set forth above, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 5, Vietti et al. disclose the phosphate functional polyol is prepared by reacting precursor polyol with phosphoric-type acid (see paragraph 0035). The precursor polyol has structure IV which contains R-O-R moieties (i.e. ether) (see paragraphs 0026 and 0110). That is, the phosphate functional polyol of Vietti et al. is phosphate-terminated polyol having structure (C) wherein R4 is an ether group.
Regarding claim 6, Vietti et al. disclose a combination of phosphorous-free polyol and phosphorous-functional polyol can be used, wherein the amount of phosphorous-free alcohol is 50 to 99 wt% (see paragraphs 0044, 0045). Accordingly, the amount of phosphorus functional polyol is 1 to 50 wt%. A specific example includes and adhesive formulation comprising 3 wt% of phosphorous functional polyol in the polyol portion (see page 12, Table 14A, Examples 66-2A and 66-2B and paragraphs 0132, 0133, 0110, 0112).
Regarding claim 13, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 14, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily be little, if any, amount, including that presently claimed, of species having molecular weight less than 1000 g/mol.
Claims 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Vietti et al. (US 2017/0226391 A1 cited in IDS) in view of Singh et al. (US 2015/0031815 A1 cited in IDS).
Regarding claims 20 and 21, Vietti et al. disclose an adhesive composition (two-component adhesive composition) comprising polyisocyanate, phosphate-functional polyol, phosphorous-free polyol and no solvent (see Abstract and paragraphs 0004, 0015, 0023, 0048, 0050). The polyisocyanate can be isocyanate functional prepolymer such as a reaction product of one or more isomers of MDI with one or more polyols, i.e. aromatic isocyanate prepolymer (see paragraph 0022). The phosphate-functional polyol has structure similar (see paragraphs 0023-0024) to the phosphate-terminated polyol utilized in the present invention (se paragraphs 0067-0071 of published application). That is, phosphate-functional polyol is phosphate-terminated polyol. The phosphate-functional polyol is an adhesion promoter (see paragraph 0001). The polyol component contains phosphate-functional polyol and phosphorous-free polyol (see paragraph 0048). That is, the polyol component consists of phosphate-functional polyol, phosphorous-free polyol. Further, the total amount of polyols based on 100 parts by weight of polyisocyanate compounds is 1 to 800 parts by mass or less (see paragraph 0049). Therefore, polyisocyanate to polyol weight ratio, based on dry weight is 100:1 to 100:800, which overlaps with that presently claimed.
The adhesive composition is curable, wherein the chemical reactions of curing involve reaction of isocyanate groups with hydroxyl groups to form urethane linkages (see paragraph 0055). Therefore, the adhesive composition comprises reaction product of polyisocyanate component that is a prepolymer and a polyol component comprising phosphorous-free polyol and phosphate-functional polyol. Given that other components are optional in the adhesive composition, the polyisocyanate component and the polyol component amount to 100 wt% of the adhesive composition.
Vietti et al. do not disclose the phosphorus-free polyol is a polyester-polycarbonate polyol as presently claimed.
Singh et al. disclose an adhesive composition comprising a polyester-polycarbonate copolymer polyol (see Abstract). The polyester-polycarbonate polyol is a reaction product of a polyester polyol prepared from one or more organic acids and one or more glycols, and a polycarbonate polyol. Specifically, the polyester polyol is derived from adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol and 1,6-hexane diol (see paragraphs 0015, 0016, 0017). The polycarbonate polyol is prepared from alkane diol such as 1,4-butanediol and organic carbonate (see paragraphs 0024, 0025). That is, polycarbonate polyol is poly(1,4-butanediol-carbonate) (see page 6, Table 1). The polyester-polycarbonate polyol is prepared by reaction of polyester polyol and poly(1,4-butanediol-carbonate) (see page 7, Table II and Table III). Accordingly, the polyester-polycarbonate polyol of Singh et al. comprises the reaction product of adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol, 1,6-hexane diol and poly(1,4-butanediol-carbonate). The adhesive based on the polyester-polycarbonate polyol has excellent hydrolytic stability, good initial adhesion and excellent processability (see paragraphs 0010 and 0102). Singh et al. does not disclose the number average molecular weight (Mn) or weight average molecular weight (Mw) of the polyester-polycarbonate. However, Singh et al. does disclose the polyester polycarbonate is made from polyester polyol having Mn of 2,000-8000 (see paragraphs 0086-0089) and polycarbonate polyol having Mn of 500-5000 (see paragraph 0021). Further, given the relationship between weight average molecular weight (Mw) and number average molecular weight (Mn), i.e. Mw/Mn>1, the Mw of the polyester polyol would necessarily be greater than 2000-8000 while the Mw of the polycarbonate polyol would necessarily be greater than 500-5000. Given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate as presently claimed. Given that Mw and Mn of the polyester-polycarbonate overlap with that presently claimed, a viscosity (at 25 °C and at 40 °C) of polyester-polycarbonate will necessarily inherently overlap with that presently claimed.
In light of motivation for using the polyester-polycarbonate polyol disclosed by Singh et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyester-polycarbonate polyol of Singh et al. as the phosphorous-free polyol in Vietti et al. in order to provide excellent hydrolytic stability, good initial adhesion and excellent processability, and thereby arrive at the claimed invention.
Regarding claim 22, Vietti et al. disclose the phosphate functional polyol is prepared by reacting precursor polyol with phosphoric-type acid (see paragraph 0035). The precursor polyol has structure IV which contains R-O-R moieties (i.e. ether) (see paragraphs 0026 and 0110). That is, the phosphate functional polyol of Vietti et al. is phosphate-terminated polyol having structure (C) wherein R4 is an ether group.
Regarding claim 23, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 24, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily be little, if any, amount, including that presently claimed, of species having molecular weight less than 1000 g/mol.
Claims 1, 3-7 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Vietti et al. (US 2017/0226391 A1 cited in IDS) in view of Singh et al. (US 2015/0031815 A1 cited in IDS) and Hirakawa et al. (JP 6222101 B2). It is noted that the disclosures of Hirakawa et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1, 4, 7 and 12, Vietti et al. disclose an adhesive composition (two-component solvent-based adhesive composition) comprising polyisocyanate, phosphate-functional polyol, phosphorous-free polyol and solvent (see Abstract and paragraphs 0004, 0015, 0023, 0048, 0050). The polyisocyanate can be isocyanate functional prepolymer such as a reaction product of one or more isomers of MDI with one or more polyols, i.e. aromatic isocyanate prepolymer (see paragraph 0022). The phosphate-functional polyol has structure (see paragraphs 0023-0024) similar to the phosphate-terminated polyol utilized in the present invention (se paragraphs 0067-0071 of published application). That is, phosphate-functional polyol is phosphate-terminated polyol. The phosphate-functional polyol is an adhesion promoter (see paragraph 0001). The polyol component contains phosphate-functional polyol and phosphorous-free polyol (see paragraph 0048). That is, the polyol component consists of phosphate-functional polyol, phosphorous-free polyol. Further, the total amount of polyols based on 100 parts by weight of polyisocyanate compounds is 1 to 800 parts by mass or less (see paragraph 0049). Therefore, polyisocyanate to polyol weight ratio, based on dry weight is 100:1 to 100:800, which overlaps with that presently claimed.
The adhesive composition is curable, wherein the chemical reactions of curing involves reaction of isocyanate groups with hydroxyl groups to form urethane linkages (see paragraph 0055). Therefore, the adhesive composition comprises reaction product of polyisocyanate component that is a prepolymer and a polyol component comprising phosphorous-free polyol and phosphate-functional polyol. Given that other components are optional in the adhesive composition, the polyisocyanate component, the polyol component and solvent amount to 100 wt% of the adhesive composition.
Vietti et al. do not disclose the phosphorus-free polyol is a polyester-polycarbonate polyol as presently claimed.
Singh et al. disclose an adhesive composition comprising a polyester-polycarbonate copolymer polyol (see Abstract). The polyester-polycarbonate polyol is a reaction product of a polyester polyol prepared from one or more organic acids and one or more glycols, and a polycarbonate polyol. Specifically, the polyester polyol is derived from adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol and 1,6-hexane diol (see paragraphs 0015, 0016, 0017). The polycarbonate polyol is prepared from alkane diol such as 1,4-butanediol and organic carbonate (see paragraphs 0024, 0025). That is, polycarbonate polyol is poly(1,4-butanediol-carbonate) (see page 6, Table 1). The polyester-polycarbonate polyol is prepared by reaction of polyester polyol and poly(1,4-butanediol-carbonate) (see page 7, Table II and Table III). Accordingly, the polyester-polycarbonate polyol of Singh et al. comprises the reaction product of adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol, 1,6-hexane diol and poly(1,4-butanediol-carbonate). The adhesive based on the polyester-polycarbonate polyol has excellent hydrolytic stability, good initial adhesion and excellent processability (see paragraphs 0010 and 0102). Singh et al. does not disclose the number average molecular weight (Mn) or weight average molecular weight (Mw) of the polyester-polycarbonate. However, Singh et al. does disclose the polyester polycarbonate is made from polyester polyol having Mn of 2,000-8000 (see paragraphs 0086-0089) and polycarbonate polyol having Mn of 500-5000 (see paragraph 0021). Further, given the relationship between weight average molecular weight (Mw) and number average molecular weight (Mn), i.e. Mw/Mn>1, the Mw of the polyester polyol would necessarily be greater than 2000-8000 while the Mw of the polycarbonate polyol would necessarily be greater than 500-5000. Given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate as presently claimed.
In light of motivation for using the polyester-polycarbonate polyol disclosed by Singh et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyester-polycarbonate polyol of Singh et al. as the phosphorous-free polyol in Vietti et al. in order to provide excellent hydrolytic stability, good initial adhesion and excellent processability, and thereby arrive at the claimed invention.
Vietti et al. in view of Singh et al. do not disclose polyester-polycarbonate polyol having a viscosity as presently claimed.
Hirakawa et al. disclose a polyester polycarbonate polyol having viscosity of 500 to 7000 cP, i.e. 500 to 7000 mPa-s at room temperature (25 °C) or under heating provides fluidity and offers excellent handling properties (see paragraph 0027).
In light of motivation for using polyester polycarbonate polyol having viscosity of 500 to 7000 mPa-s at room temperature or under heating disclosed by Hirakawa et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polyester polycarbonate polyol having viscosity including that presently claimed in Vietti et al. in view of Singh et al. in order to provide fluidity and offer excellent handling properties, and thereby arrive at the claimed invention.
Regarding claim 3, as set forth above, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 5, Vietti et al. disclose the phosphate functional polyol is prepared by reacting precursor polyol with phosphoric-type acid (see paragraph 0035). The precursor polyol has structure IV which contains R-O-R moieties (i.e. ether) (see paragraphs 0026 and 0110). That is, the phosphate functional polyol of Vietti et al. is phosphate-terminated polyol having structure (C) wherein R4 is an ether group.
Regarding claim 6, Vietti et al. disclose a combination of phosphorous-free polyol and phosphorous-functional polyol can be used, wherein the amount of phosphorous-free alcohol is 50 to 99 wt% (see paragraphs 0044, 0045). Accordingly, the amount of phosphorus functional polyol is 1 to 50 wt%. A specific example includes and adhesive formulation comprising 3 wt% of phosphorous functional polyol in the polyol portion (see page 12, Table 14A, Examples 66-2A and 66-2B and paragraphs 0132, 0133, 0110, 0112).
Regarding claim 13, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 14, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily be little, if any, amount, including that presently claimed, of species having molecular weight less than 1000 g/mol.
Claims 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Vietti et al. (US 2017/0226391 A1 cited in IDS) in view of Singh et al. (US 2015/0031815 A1 cited in IDS) and Hirakawa et al. (JP 6222101 B2). It is noted that the disclosures of Hirakawa et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 20 and 21, Vietti et al. disclose an adhesive composition (two-component adhesive composition) comprising polyisocyanate, phosphate-functional polyol, phosphorous-free polyol and no solvent (see Abstract and paragraphs 0004, 0015, 0023, 0048, 0050). The polyisocyanate can be isocyanate functional prepolymer such as a reaction product of one or more isomers of MDI with one or more polyols, i.e. aromatic isocyanate prepolymer (see paragraph 0022). The phosphate-functional polyol has structure similar (see paragraphs 0023-0024) to the phosphate-terminated polyol utilized in the present invention (se paragraphs 0067-0071 of published application). That is, phosphate-functional polyol is phosphate-terminated polyol. The phosphate-functional polyol is an adhesion promoter (see paragraph 0001). The polyol component contains phosphate-functional polyol and phosphorous-free polyol (see paragraph 0048). That is, the polyol component consists of phosphate-functional polyol, phosphorous-free polyol. Further, the total amount of polyols based on 100 parts by weight of polyisocyanate compounds is 1 to 800 parts by mass or less (see paragraph 0049). Therefore, polyisocyanate to polyol weight ratio, based on dry weight is 100:1 to 100:800, which overlaps with that presently claimed.
The adhesive composition is curable, wherein the chemical reactions of curing involve reaction of isocyanate groups with hydroxyl groups to form urethane linkages (see paragraph 0055). Therefore, the adhesive composition comprises reaction product of polyisocyanate component that is a prepolymer and a polyol component comprising phosphorous-free polyol and phosphate-functional polyol. Given that other components are optional in the adhesive composition, the polyisocyanate component and the polyol component amount to 100 wt% of the adhesive composition.
Vietti et al. do not disclose the phosphorus-free polyol is a polyester-polycarbonate polyol as presently claimed.
Singh et al. disclose an adhesive composition comprising a polyester-polycarbonate copolymer polyol (see Abstract). The polyester-polycarbonate polyol is a reaction product of a polyester polyol prepared from one or more organic acids and one or more glycols, and a polycarbonate polyol. Specifically, the polyester polyol is derived from adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol and 1,6-hexane diol (see paragraphs 0015, 0016, 0017). The polycarbonate polyol is prepared from alkane diol such as 1,4-butanediol and organic carbonate (see paragraphs 0024, 0025). That is, polycarbonate polyol is poly(1,4-butanediol-carbonate) (see page 6, Table 1). The polyester-polycarbonate polyol is prepared by reaction of polyester polyol and poly(1,4-butanediol-carbonate) (see page 7, Table II and Table III). Accordingly, the polyester-polycarbonate polyol of Singh et al. comprises the reaction product of adipic acid, propylene glycol (1,2-propane diol), neopentyl glycol, 1,6-hexane diol and poly(1,4-butanediol-carbonate). The adhesive based on the polyester-polycarbonate polyol has excellent hydrolytic stability, good initial adhesion and excellent processability (see paragraphs 0010 and 0102). Singh et al. does not disclose the number average molecular weight (Mn) or weight average molecular weight (Mw) of the polyester-polycarbonate. However, Singh et al. does disclose the polyester polycarbonate is made from polyester polyol having Mn of 2,000-8000 (see paragraphs 0086-0089) and polycarbonate polyol having Mn of 500-5000 (see paragraph 0021). Further, given the relationship between weight average molecular weight (Mw) and number average molecular weight (Mn), i.e. Mw/Mn>1, the Mw of the polyester polyol would necessarily be greater than 2000-8000 while the Mw of the polycarbonate polyol would necessarily be greater than 500-5000. Given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate as presently claimed.
In light of motivation for using the polyester-polycarbonate polyol disclosed by Singh et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyester-polycarbonate polyol of Singh et al. as the phosphorous-free polyol in Vietti et al. in order to provide excellent hydrolytic stability, good initial adhesion and excellent processability, and thereby arrive at the claimed invention.
Vietti et al. in view of Singh et al. do not disclose polyester-polycarbonate polyol having a viscosity as presently claimed.
Hirakawa et al. disclose a polyester polycarbonate polyol having viscosity of 500 to 7000 cP, i.e. 500 to 7000 mPa-s at room temperature (25 °C) or under heating provides fluidity and offers excellent handling properties (see paragraph 0027).
In light of motivation for using polyester polycarbonate polyol having viscosity of 500 to 7000 mPa-s at room temperature or under heating disclosed by Hirakawa et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polycarbonate polyol having viscosity including that presently claimed in Vietti et al. in view of Singh et al. in order to provide fluidity and offer excellent handling properties, and thereby arrive at the claimed invention.
Regarding claim 22, Vietti et al. disclose the phosphate functional polyol is prepared by reacting precursor polyol with phosphoric-type acid (see paragraph 0035). The precursor polyol has structure IV which contains R-O-R moieties (i.e. ether) (see paragraphs 0026 and 0110). That is, the phosphate functional polyol of Vietti et al. is phosphate-terminated polyol having structure (C) wherein R4 is an ether group.
Regarding claim 23, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily inherently be little, if any, amount, including that presently claimed, of species having molecular weight less than 500 g/mol.
Regarding claim 24, given the Mw and Mn of the polyester polyol and polycarbonate polyol, it is clear that a polyester-polycarbonate polyol made from these polyols would necessarily inherently have Mn and Mw of at least these values and therefore overlap the Mn and Mw of the polyester-polycarbonate polyol as presently claimed and given that therefore the polydispersity of polyester-polycarbonate polyol would necessarily overlap with that of the present invention, there would necessarily be little, if any, amount, including that presently claimed, of species having molecular weight less than 1000 g/mol.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that while Singh discloses an adhesive composition comprising a polyester-polycarbonate polyol, the polyester-polycarbonate polyol used in Singh exhibits higher viscosity at elevated temperature, namely 4,000-15,000 mPa-s at 60 C and is used in compositions that require a resin component, with solvent being optional.
However, paragraph 0023 of Singh does not refer to the polyester-polycarbonate polyol but rather a polycarbonate polyol. Further, it is disclosed that the polycarbonate polyol “may” comprise such viscosity which is measured at 60 C while the present claims require viscosity at 25 C and 40 C. Additionally, while Singh may require a resin, Singh is only used as teaching reference in order to teach polyester-polycarbonate polyol. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicants argue that the instant application provides experimental data specifically demonstrating that the claimed adhesive compositions maintain sufficient bond strength after high temperature boil-in-bag tests. See Specification, Tables 4 and 5.
However, the data is not persuasive given that the present claim recite a specific isocyanate component in specific amount, a specific polyol component in specific amount consisting of a specific polyester-polycarbonate polyol (specific Mn, specific Mw, specific viscosity) in specific amount and a specific phosphate-terminated polyol in specific amount, specific solvent in specific amount, and specific weight ratio of the isocyanate component and the polyol component, while the present claim has broad disclosure of types and amounts of each of these components.
Further, given that the adhesive composition of the cited prior art is identical to that presently claimed, the adhesive composition necessarily inherently maintains sufficient bond strength after high temperature boil-in-bag tests, absent evidence to the contrary.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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