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 .
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.
Claims 1, 3, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2018-0110986 to Kim (with US Pub. No. 2020/0010741 cited as the English equivalent), in view of US Pub. No. 2003/0055171 to Overbeek.
Regarding claims 1, 3, and 6-10, Kim teaches an adhesive composition including, on the basis of the total weight thereof, 0.5 to 4.0% by weight of an epoxy compound, 1.0-8.0% by weight of an isocyanate compound, 1.7 to 22% by weight of a rubber latex, 1.0 to 8.0% by weight of a polyurethane dispersion resin, 0.1 to 2.0% by weight of an amine compound, and 69 to 92% by weight of a solvent (Kim, Abstract), the solvent being water (Id., paragraphs 0016-0017). Kim teaches a tire cord using the adhesive composition (Id., paragraphs 0010, 0040).
Kim does not appear to teach the average molecular weight of the polyurethane as claimed and the polyurethane being an alicyclic polyurethane as claimed. However, Kim teaches the use of a polyurethane dispersion resin (Kim, paragraph 0085), wherein the latex may comprise an acrylic latex (Id., paragraph 0069). Additionally, Overbeek teaches a similar aqueous polymer composition similar for use as adhesives comprising a combination of an aqueous latex of an acrylic polymer and a self-dispersible and radiation-curable polymer (Overbeek, Abstract, paragraphs, 0056, 0122). Overbeek teaches that the radiation-curable polymer is preferably a polyurethane, which is the chain-extended reaction product of an isocyanate-terminated urethane prepolymer, wherein the chain-extended polyurethane preferably has a Mw of at least 3000 g/mol, and more preferably 3,000 to 500,000 g/mol (Id., paragraphs 0071-0076). Overbeek teaches that the polyurethane is formed form reactants which comprise at least one organic polyisocyanate, such as a cycloaliphatic polyisocyanate including isophorone diisocyanate (Id., paragraphs 0077-0086), at least one polymeric polyol, preferably a polyester polyol (Id., paragraph 0090), ionic groups that can be neutralized with agents such as triethanolamine (Id., paragraph 0095), and carboxylate anionic dispersing groups especially dimethylol propionic acid (DMPA) and dimethylol butyric acid (DMBA) (Id., paragraphs 0073-0074, 0096).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the adhesive composition of Kim, wherein the polyurethane dispersion comprises ionomers and a molecular weight, such as within the claimed range, as taught by Overbeek, motivated by the desire of forming a conventional aqueous polymer adhesive composition having a dispersible polyurethane with properties known in the art as being predictably suitable for adhesive applications.
The prior art combination does not appear to teach the claimed viscosity. However, the prior art combination teaches a substantially similar structure and composition as claimed, including substantially similar and overlapping amounts of each of the claimed constituents (as set forth below). Therefore, it is reasonable for one of ordinary skill in the art to expect that the claimed viscosity naturally flows from the adhesive composition of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claims 6 and 7, as set forth above, the prior art combination teaches each of the claimed epoxy, latex, polyurethane, amine, and water, in overlapping amounts. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the adhesive composition of the prior art, and adjusting the weight percentages of epoxy, latex, polyurethane, amine, and water, such as within the claimed ranges, motivated by the desire of forming a conventional adhesive composition based on the totality of the teachings of the prior art.
Regarding claim 8, Kim teaches that the type of the amine compound is not particularly limited, for example at least one aliphatic amine, an alicyclic amine, and an aromatic amine (Kim, paragraphs 0089-0090). Note that amines set forth in Kim are similarly set forth in Applicants’ specification at page 11 lines 11-18. Therefore, the amines of Kim appear to comprise a chain structure.
Regarding claim 9, Kim teaches that the isocyanate compound acts as a crosslinking agent (Kim, paragraph 0058).
Regarding claim 10, Kim teaches that the water used as a solvent may be included in the content of 69 to 80% by weight based on the total weight of the adhesive composition (Kim, paragraph 0096).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Overbeek, as applied to claims 1, 3, and 6-10 above, and further in view of KR 2001-0068475 to Jun (as evidenced by the machine translation).
Regarding claim 4, the prior art combination teaches the inclusion of dimethylol propionic acid (DMPA) and dimethylol butyric acid (DMBA). The prior art combination does not appear to teach the alicyclic polyurethane resin formed as claimed. However, Jun teaches a water dispersible polyurethane which is excellent in stability and can be used as an adhesive with good adhesion strength and heat resistance (Jun, Abstract). Jun teaches improving adhesive strength by increasing the molecular weight of the conventional water-dispersible polyurethane (Id., paragraph 0008). Jun teaches that the polyurethane is manufactured by reacting a polyol and isophorone diisocyanate (Id., paragraph 0013, Example 5). Jun teaches that dimethylol propionic acid is used in an amount of 6.0 to 14.0 parts by weight of polyol to introduce a hydrophilic group (Id., paragraph 0014), such as 12 g (Id., Example 5). Jun teaches neutralizing a prepolymer with triethylamine used as a neutralizing agent (Id., paragraphs 0015-0017), wherein diamines such as ethylenediamine is used as chain extenders (Id., paragraph 0018). Jun teaches that the water dispersion can exhibit excellent adhesive properties not only for bonding fibers, etc., by high-temperature curing, but also especially by low-temperature curing (Id., paragraph 0021).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the adhesive composition of the prior art combination, wherein the polyurethane includes dimethylol propionic acid in amounts, such as within the claimed range, as suggested by Jun, motivated by the desire of forming a conventional adhesive composition having predictably improved adhesive strength by increasing the molecular weight, suitable for the intended application.
Response to Arguments
Applicants’ arguments have been considered and were persuasive but are moot based on the new ground of rejection. Note that Applicants’ Declaration of December 5, 2025, has been considered and is entered, but does not apply to the current grounds of rejection.
Conclusion
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/PETER Y CHOI/Primary Examiner, Art Unit 1786