DETAILED ACTION
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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 1/13/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 1/13/2026. In particular, claim 1 has been amended to limit the acid value and glass transition temperature of the polyester polyurethane. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1, 3-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nanbara (WO 2015/046032, machine translation).
With respect to claim 1, Nanbara discloses a polyurethane resin composition comprising a polyurethane derived from a polyester polyol (i.e., polyester polyurethane) and epoxy resin, wherein the polyurethane has an acid value of 50-1000 eq/106 (i.e., 2.8-56.11 mgKOH/g) (abstract) and a glass transition temperature of -20°C to 100°C (paragraph 0026). Nanbara teaches that the polyurethane is preferably prepared with a diol containing a carboxylic acid as chain extender (paragraph 0041), wherein the ratio of isocyanate to hydroxyl groups is 1 or less (paragraph 0044) which overlaps with claimed 0.9-1.1. Nanbara teaches that another resin such as olefin-based resins may be included (paragraph 0046).
Nanbara fails to disclose a single embodiment of a resin composition comprising an olefin-based resin and a polyester polyurethane having NCO/OH ratio of 0.9-1.1, an acid value of 0.1-5mgKOH/g, and Tg of 30-150°C.
Even so, case law holds that is perfectly proper for the examiner to look to the whole reference for what it teaches rather than merely rely on preferred embodiments. In re Courtright 153 USPQ 735 (CCPA 1967).
Therefore, given that Nanbara discloses a polyester polyurethane having a diol extender having a carboxy group, an NCO/OH ratio of up to 1, an acid value of 2.8-56.11 mg KOH/g, and Tg of -20 to 100°C and further given that Nanbara permits the addition of an olefin-based resin, it would have been obvious to one of ordinary skill in the art to utilize the claimed combination—absent a showing of unexpected or surprising results.
With respect to claims 3 and 4, Nanbara teaches adding a filler such as organic bentonite (paragraph 0064) in an amount of 20 parts by mass per 100 parts by mass of polyurethane resin (paragraph 0065).
With respect to claim 5, Nanbara teaches utilizing bisphenol A diglycidyl ether as part of the epoxy resin (paragraph 0048).
With respect to claims 6 and 7, the polyester polyurethane has number-average molecular weight (Mn) of 5,000-100,000 (paragraph 0025) and is derived from a polyester polyol having Mn of 3,000-30,000 (paragraph 0039, see original document for clarification). Mn of polyester polyol is the molecular weight per urethane bond.
With respect to claim 9, Nanbara teaches using adding neopentyl glycol (paragraphs 0034 and 0043), i.e., a diol having a side chain.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nanbara (WO 2015/046032, machine translation) in view of Ishii (CN 1526784, machine translation).
The discussion with respect to Nanbara in paragraph 5 above is incorporated here by reference.
Nanbara discloses an adhesive resin composition is applied to metal and plastic film substrates such as olefin films (paragraphs 0069).
Nanbara fails to disclose the relative amounts of polyester polyurethane and polyolefin resin.
Ishii discloses an adhesive composition for laminated steel plate and plastic film (paragraph 0018) comprising a polyester-polyurethane, an epoxy resin, and an acid-modified polyolefin resin (abstract). Ishii teaches that the acid-modified polyolefin is added to improve adhesion of the composition to polyolefins (paragraph 0089). In Example 1, the adhesive comprises 100 parts by weight (pbw) polyester polyurethane (claimed A), 1.16 pbw novolac epoxy resin and 0.83 pbw phosphoric acid epoxy ester resin (claim B), and 72.7 pbw maleic anhydride-modified polyolefin resin (claimed C) (paragraph 0114)—which provides for an amount of polyester polyurethane of 57 wt % and an amount of polyolefin of 42 wt %.
Given that both Nanbara Ishii are drawn to adhesive compositions for metal and plastic substrates comprising polyester polyurethane and epoxy resin and further given that Ishii teaches that adding acid-modified polyolefin within the claimed amounts improved adhesion to polyolefin substrates, it would have been obvious to one of ordinary skill in the art to add acid-modified polyolefin to polyurethane within the claimed range of 10-70 mass %.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nanbara (WO 2015/046032, machine translation) in view of Ishii (CN 1526784, machine translation) and further in view of Heyes (US 4,945,008).
The discussion with respect to Nanbara and Ishii in paragraph 6 above is incorporated here by reference.
Ishii discloses that the acid-modified polyolefin resin is used to improve adhesion to steel plates (paragraph 0092) and can be prepared by graft polymerizing the olefin with an ethylenically unsaturated acid monomer (paragraph 0090).
Ishii fails to disclose the amount of the graft portion in the acid-modified polyolefin.
Heyes discloses a laminated metal sheet prepared with a bonding resin which is an acid modified polyolefin resin (abstract; col. 2, lines 39-47) and teaches that the acid-modified polyolefin includes 5-15 wt % acid (col. 11, lines 36-40).
Given that both Ishii and Heyes discloses acid-modified polyolefin having adhesion to metal substrates and further given that Heyes discloses that a suitable acid amount in the acid-modified polyolefin is 5-15 wt %, it would have been obvious to one of ordinary skill in the art to utilize an acid-modified polyolefin having the claimed amount of graft portion in the composition taught by Nanbara and Ishii.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nanbara (WO 2011/129278, machine translation) in view of Lu (US 6,740,192).
The discussion with respect to Nanbara in paragraph 5 above is incorporated here by reference.
Nanbara discloses that composition is used in printed wiring board (paragraph 0001 and 0110) but fails to disclose adding a conductive metal filler.
Lu discloses electroconductive adhesive materials (abstract) for use in printed wiring boards (col. 18, lines 64-65), like also used by Nanbara, and teaches adding a conductive filler such as preferred silver flakes in an amount of 50-80 wt % (col. 12, lines 15-26).
Given that Nanbara and Lu are drawn to adhesive compositions for use on printed wiring boards that are advantageously conductive and further given that Lu teaches that electrical conductivity is imparted by adding 50-80 wt % of a metal filler such as silver flake, it would have been obvious to one of ordinary skill in the art to add a known filler to impart recognized suitability of electrical conductivity.
Response to Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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