DETAILED ACTION
This office action follows a reply filed on March 31, 2026. Claim 13 has been amended. Claims 13-25 are currently pending and under examination.
Applicants arguments are persuasive regarding the structure of the polysiloxane oligomers of Iyer which do not possess the required alkoxysilane groups of compound (B).
However, upon further consideration, a new grounds of rejection is proposed below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, applicants claim an adhesive that is heat-activated at a temperature of “greater than 50°C”.
Applicants point to the specification for support of this amendment, particularly paragraph [0097] for support of the range of greater than 50°C; however, applicants only disclose drying at 50°C for 10 minutes and then pressing at 70°C. This is not sufficient to support a range of “greater than 50°C”, as the term greater suggests any temperature above 50°C.
Additionally, drying is carried out at 50°C, and then heat activation is carried out at 70°C; therefore, it appears that applicants do not have support for claiming heat activation at a temperature as low as 50°C.
It is noted that since claims 14-25 ultimately or directly depend from claim 13, they are rejected along with claim 13 because they incorporate all of the limitations of claim 13, including those that are indefinite.
Claim Rejections - 35 USC § 103
Claims 13 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Buchholz (US 2020/0071512) in view of EP 1896522, as evidenced by Ribeiro DeSousa Ferreira (US 2023/0081580) and Momentive (CoatOSil* MP 200 Silane Crosslinker for Waterborne Coatings, Momentive, 2018, 8 pages).
Buchholz teaches a composition containing an aqueous polymer dispersion including water and at least one water-dispersible polymer and at least one silane-terminated polymer which can be formulated as a one-component storage stable composition for adhesively bonding two substrates (Abstract and p. 2, [0018]). Buchholz teaches that the water in the wet coating can be allowed to evaporate at an elevated temperature, meeting applicants’ heat-activatable limitation. Buchholz also teaches drying at 50°C for three days (p. 14, [0235]).
Buchholz teaches the composition as comprising the following:
(a) an aqueous polymer dispersion of at least one water-dispersible polymer, which is defined as a dispersion containing solid polymer particles emulsified in water (p. 2, [0035]), which includes ethylene-vinyl acetate copolymers (p. 4, [0066] and p. 5, [0078]) in an amount of preferably 10-35 wt% (p. 3, [0052]), and is representative of applicants’ component (C);
(b) at least one silane-terminated polymer, preferably a silane-terminated polyurethane polymer with alkoxysilyl groups, preferably containing methoxy and ethoxy radicals (p. 5, [0087]-[0093]), where the polyurethane components are aliphatic, where the silane-terminated polymer is present in an amount of up to 20 wt% (p. 6, [0096]-[0097]) based on the total weight of the composition, where the water content is preferably 5-30 wt%, suggesting component (b) in an amount of up to 30 wt% based on the solids content of the composition. This component is representative of applicants’ (A).
Buchholz further teaches the composition as comprising 0.05-5 wt% of epoxy silanes to improve the mechanical properties the cured composition (p. 9, [0137]), and further suggests the inclusion of silane-functional oligomers as crosslinkers (p. 10, [0162]); however, does not teach or suggest the specific epoxy silanes, motivating one to look elsewhere.
EP ‘522 teaches that monomeric epoxy silanes, which are used in combination with appropriate polymers, are sensitive to hydrolysis and condensation is difficult to control, further teaching that monomeric epoxy silanes release a large amount of volatile organic compounds expressed as alcohol content introduced by the alkoxy functionalities (p. 1, [0001]-[0002] and [0004]). EP ‘522 teaches that there is a need to produce a water-soluble epoxy silane oligomer that is useful in a waterborne system (p. 1, [0008]).
EP ‘522 teaches an epoxy silane oligomer possessing that exhibits good water solubility, which makes the particularly useful as components of water-based and waterborne coatings (p. 1, [0010]). EP ‘522 teaches the epoxy silane oligomers as suitable for use as crosslinkers and adhesion promoters of waterborne latexes and dispersions, which include polyurethane dispersions (p. 4, [0029]), as well as being suitable in a one-pack formulation due to their storage stability (p. 7, [0054] and [0057]), which are all characteristics which are desired by Buchholz. EP ‘522 also teaches that the epoxy silane oligomer is water soluble and does not require high VOC containing solvents to solubilize it (p. 14, [0089]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the epoxy silane oligomer of EP ‘522 as the epoxy silanes or epoxy-functional oligomer crosslinkers of Buchholz, as Buchholz does not teach the particular epoxy silanes or epoxy-functional oligomer and EP ‘522 teaches water soluble epoxy silane oligomers which are suitable for use in aqueous polyurethane dispersions as crosslinkers and adhesion promoters.
EP 1896522 teaches epoxysilane oligomer which are available under the reference CoatOSil MP 200 form Momentive, as evidenced by Ribeiro DeSousa Ferreira (p. 2, [0033]). CoatOSil MP 200 has the following structure, as evidenced by Momentive, and meets applicants’ glycidoxy substituted alkoxysilane compound:
PNG
media_image1.png
264
322
media_image1.png
Greyscale
Buchholz in view of EP ‘522 is prima facie obvious over instant claim 13 and 15-17.
As to claim 18, Buchholz teaches that the water dispersible polymer has a Tg of <50° (p. 5, [0079]), which includes both the vinyl acetate-ethylene copolymers and the (non silylated) polyurethanes.
As to claim 19, the limitation “up to” allows for 0 wt% of the non-silylated polyurethane, and Buchholz does require the inclusion of a non-silylated polyurethane, where the non-silylated polyurethane is representative of applicants’ component (D).
Alternatively, Buchholz teaches that the water-dispersible polymer can include mixtures of water-dispersible polymers, which include the ethylene vinyl acetate copolymers and polyurethanes (p. 4, [0072]). Choosing a mixture of the two in any amount is prima facie obvious, so long as the total content of water dispersible polymer does not fall outside of the preferred range of 10-35 wt%.
Based on this reasoning, it can be seen that the claimed amounts of each of the silylated polyurethane, epoxy silane compound, vinyl acetate copolymer and non silylated polyurethane in claim 21 overlap with the claimed ranges, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 20, Buchholz teaches the water content as up to 30 wt%, which overlaps with the claimed range of 20-60 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 22, Buchholz teaches the steps of providing in a mixer the ingredients and mixing until a homogeneous composition is formed (p. 10, [0172]).
MPEP 2144.04(IV)(C): Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Choosing to mix the ingredients in the order of the aqueous dispersion of vinyl acetate copolymer, followed by the silylated polyurethane and then the epoxy silane is prima facie obvious, as it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
As to claim 23, Buchholz teaches a method of joining two substrates, applying a composition onto a substrate to form a wet coating, allowing the water to evaporate, and contacting the coated substrate with a second substrate to effect bonding, further teaching that an elevated temperature can be used during evaporation. Applying the second substrate while the coated substrate is still hot or heated meets applicants’ thermoforming lamination.
As to claim 24, Buchholz teaches the substrates to include PVC (p. 10, [0177]).
As to claim 25, EP ‘522 teaches the epoxy silane oligomer as being prepared from a reaction between a glycidoxy having 2 or 3 alkoxy groups and a polyalkyleneoxide functional silane, where the glycidoxy having 2 or 3 alkoxy groups is listed to include glycidoxypropyl based trialkoxysilanes. The glycidoxyethyl based trialkoxysilanes are homologues of the glycidoxyethyl based trialkoxysilanes and would be expected to provide the same functionality.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Buchholz (US 2020/0071512) in view of EP 1896522, as applied above to claims 13 and 15-25, and further in view of Harada (JP 2004-043554). For convenience, the machine translation of JP ‘554 will be cited below.
Buchholz in view of EP ‘522 is prima facie obvious over instant claims 13 and 15-25, as described above and applied herein as such, as Buchholz teaches a composition containing an aqueous polymer dispersion including water and at least one water-dispersible polymer and at least one silane-terminated polyurethane which can be formulated as a one-component storage stable composition for adhesively bonding two substrates, where an epoxy silane can be added to improve the mechanical properties the cured composition and EP ‘522 teaches an epoxy silane oligomer which can be used as an adhesion promoter or crosslinker in aqueous based polyurethane dispersions which is water soluble and does not require the high VOC containing solvents to solubilize it.
Buchholz does not teach the silane-terminated polyurethane as anionic, as claimed.
Harada teaches a water-based silylated urethane composition used as an adhesive, teaching the polyurethane as having an anionic group, teaching that a high curing rate and high initial adhesive strength are due to the fact that the anionic group, such as a carboxylate, is introduced into the molecule of the aqueous silanized polymer to make the aqueous solution, further teaching that it appears to act as a catalyst for accelerating the condensation reaction between silane groups (p. 30, [0142]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used an anionic silanized polyurethane in Buchholz, as Harada teaches that the introduction of an anionic group into the silanized polyurethane increases the curing rate and the initial adhesive strength.
Buchholz in view of EP ‘522, and further in view of Harada is prima facie obvious over instant claim 14.
Response to Arguments
Applicants arguments filed March 31, 2026 have been fully considered and are persuasive with respect to Iyer; however, the arguments regarding Buchholz are not persuasive.
Applicants argue that Buchholz only teaches moisture curing, or crosslinking which is triggered by moisture, and not by heat activation of a previously dried adhesive.
The compositions of Buccholz in view of EP ‘522 possess the same components as that claimed. While Buccholz only teaches drying at elevated temperatures and exemplifies drying for three days at 50°C (p. 14, [0235]), crosslinking is inherently occurring during this stage, as Buccholz teaches that it does not occur during storage. Therefore, the composition of Buccholz is capable of being dried and heat-activated to undergo crosslinking at a temperature of 50° or higher.
Applicants further argue that while both references may share a common goal of VOC reduction, this is a general trend and does not provide specific motivation to combine the two references.
Buchholz suggests adding epoxy silanes and epoxy functional oligomers as crosslinkers, but does not teach specific compounds of either. This alone would force one of ordinary skill to look elsewhere for this information.
EP ‘522 teaches that the epoxy silane oligomers have water solubility and are suitable for use as an adhesion promoter or crosslinkers in aqueous based polyurethane dispersions. Therefore, one of ordinary skill in the art would expect the combination of Buchholz and EP ‘522 to have a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Brieann R Johnston/Primary Examiner, Art Unit 1766
Prosecution Insights