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 Arguments
The Amendment filed 28MAY2026 has been entered. No new matter has been entered. Applicant's arguments filed 28MAY2026 have been fully considered but they are not persuasive.
Regarding the catalyst, RAHIM teaches a two part adhesive composition comprising a Part A and a Part B, wherein Part A comprises an oligomer having both isocyanate and acrylate moieties, and an organic peroxide capable of generating free radicals upon decomposition; and Part B comprises a polyol, and a catalyst that can decompose the organic peroxide (abstract). By combining Part A and Part B the isocyanate moieties react with the polyol to produce a combination of a urethane acrylate oligomer, organic peroxide and the catalyst (abstract). The catalyst decomposes the organic peroxide thus generating free radicals, which free radicals polymerize at least a portion of the urethane acrylate oligomer (abstract). RAHIM’s catalyst modifies the speed of a polyurethane chemical reaction by generating free radicals. Thus, by the definition of “catalyst” as provided by Merriam-Webster, RAHIM’s catalyst is a polyurethane reactive curing catalyst.
Note that the term “polyurethane reactive curing catalyst” is not found in the specification as originally filed. Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning (MPEP 2111.01.I.) The plain meaning of “polyurethane reactive curing catalyst”, as the Examiner understands such a term, is a catalyst that is capable of curing a polyurethane reaction. RAHIM’s catalysts meets the plain meaning of “polyurethane reactive curing catalyst” as explained above.
Perhaps the Applicant may further define what the polyurethane reactive curing catalyst is in the claims (e.g. claim 20 including an organotin catalyst). It should be noted that a polyurethane reactive curing catalyst which comprises an organotin catalyst would be obvious as such catalysts are well known in the art of polyurethane adhesives (JOSEPH C7/L14-19).
It should be noted that the Examiner has not taken Official Notice nor acknowledge that such Official Notice has been taken.
“claimed properties or functions are presumed to be inherent.” This is in the rejection to address the property of maintaining adhesion to a membrane surface. Applicant’s argument is not understood as it does not relate to the property of maintaining adhesion to a membrane surface.
It is noted that RAHIM’s catalyst is just one of many catalysts known in the art that is capable of polymerizing a polyurethane and thus modification or substitution of the catalyst would in no way render the prior art invention being modified unsatisfactory for its intended purpose.
RAHIM is directed towards a two-component adhesive. The Examiner recognizes that the adhesive may be modified to improve the adhesive, either in its desired properties or to improve the adhesive for a particular application. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding the concentration of a short chain polyol, differences in concentration […] will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration […] is critical (MPEP 2144.05.II.A.
It is obvious to one having ordinary skill in the art, with the entirety of the teachings of RAHIM and JOSEPH to provide for the claimed adhesive as explained in the rejections.
Claim Interpretation
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003). If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of "consisting essentially of," applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989).
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 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(s) 1-2,18-20,22 are rejected under 35 U.S.C. 103 as being unpatentable over RAHIM (US 20150099818) in view of JOSEPH (US 5959775)
Regarding claims 1,18-19,22, RAHIM teaches a tri-curable adhesive composition (title, Figs) including an integrated hybrid, two component adhesive, comprising:
a first component (e.g. Part B; wt% based on part B; see e.g. par. [0020]) comprising:
e.g. 10-30% a multifunctional polyol (par. [0018]), which anticipates the claimed range of 10 to 35 wt. %,
a photoinitiator (par. [0004,0016]),
a polyurethane reactive curing catalyst (a catalyst that generates free radicals, which polymerize a polyurethane; abstract; par. [0018]),
Note that a (meth)acrylate monomer having a range including a 0 wt % means that the monomer is optional;
10-40% of a urethane acrylate oligomer (par. [0020]), which anticipates the claimed range of 10 to 50 wt.%; and
a second component (part A; wt% based on part A; see e.g. par. [0013]) comprising:
e.g. 30 wt. % to about 70 wt. % a polyisocyanate (par. [0011,0013]), which anticipates the claimed range of 20 to 75 wt. %,
a (meth)acrylate monomer (par. [0012-0013]), and
15-30% a urethane acrylate oligomer (par. [0020]; RAHIM claim 7), which anticipates the claimed range of 5 to 35 wt. %;
about 25-55 wt. % of a “linking component” or diluent is e.g. 2-hydroxyethyl (meth)acrylate, (par. [0015]), which overlaps the claimed range of 20 to 40 wt. % in either the first component or the second component (par. [0019]);
wherein the total of all materials in the first component is 100 wt.% by weight of the first component and the total of all materials in the second component is 100 wt.% by weight of the second component (all parts of a whole add up to 100%);
wherein the adhesive in mixed form has both a UV cure mechanism (par. [0005]) and a reactive cure mechanism (par. [0005]).
Note that while RAHIM teaches the “linking component” or diluent is based on the weight of Part A (par. [0015] on P3), part B may also contain a diluent (par. [0019]) and thus the concentration based on the total weight of the adhesive may not be significantly different.
Note that differences in concentration […] will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration […] is critical (MPEP 2144.05.II.A. The concentration has not been established to provide any criticality or to provide any unexpected result/benefit over the prior art of record. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980).
Note that overlapping ranges establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
RAHIM does not teach a short chain polyol. JOSEPH discloses an adhesive comprising a urethane/acrylate interpenetrating polymer network including polyisocyanate and a polyol cured by heat and radiation (abstract). A urethane component is included with a low molecular weight diol (e.g. ethylene glycol aka ethanediol), which provides the backbone rigidity to impart stiffness (C6/L14-43) in sufficient amounts (C5/L61-62).
The concentration of the short chain polyol has not been established to provide any criticality or to provide any unexpected result/benefit over the prior art of record. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980). MPEP 2144.05.II.A.
See also above regarding differences in concentration.
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to combine the adhesive of RAHIM with a short chain polyol in the claimed amounts of JOSEPH in order to provide rigidity to impart stiffness. The references are combinable, because they are in the same technological environment of adhesives. See MPEP 2141 III (A) and (G).
Furthermore, cured reaction products of RAHIM’s modified adhesive are capable of maintaining adhesion to a membrane surface in a bend test and cured reaction products of the mixed adhesive are capable of maintaining adhesion to a membrane surface after 10 days of an immersion test.
RAHIM’s modified adhesive has the same structure and function. This includes the property of maintaining adhesion to a membrane surface. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
Regarding claim 2, RAHIM teaches the adhesive in mixed form is capable of curing to a surface tack free state by exposure to UV radiation (par. [0005]).
Regarding claim 17, RAHIM teaches the first component and the second component each independently further comprise additives (par. [0017] and RAHIM claim 10).
Regarding claim 20, RAHIM does not teach the polyurethane reactive curing catalyst comprises an organotin catalyst; however, JOESEPH teaches as above including a polyurethane reactive curing catalyst comprising an organotin catalyst (JOSEPH C7/L14-27). JOSEPH further teaches that such catalysts are well known in the art of polyurethane adhesives, which enhance the cure rate (JOSEPH C7/L10-19).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to combine or substitute the adhesive catalyst of RAHIM with an organotin catalyst as taught by JOSEPH in order to provide a polyurethane reactive curing catalyst that is well known in the art to enhance the cure rate. The references are combinable, because they are in the same technological environment of adhesives. See MPEP 2141 III (A), (B) and (G).
Claim(s) 5-14,21 are rejected under 35 U.S.C. 103 as being unpatentable over BRAY (US 4842736) in view of RAHIM (US 20150099818) and JOSEPH (US 5959775).
Regarding claims 5-14,21, BRAY teaches a spiral wound membrane (title, Figs.) or filter assembly (e.g. Figs. 1,7) comprising a plurality of membranes (Figs. 1,7 #48) wound around a central tube or core (Fig. 7 #18) and a polyurethane adhesive (e.g. Figs. 7-9 #51) coated/bonded on a surface and/or sealing polyester felt backing layer/scrim (support surface; Fig. 7 #48) to the membrane (Fig. 7 #46) adjacent a fold line (Fig. 7 #50) leaving the remainder of the membrane surface free of adhesive (C1/L52-C2/L8, C4/L28-31, C5/L32-54; C6/L9-11,19-22; Fig. 7).
BRAY does not teach the adhesive details. However, RAHIM and JOSEPH teach an adhesive composition as above (the rejection of claim 1 is incorporated by reference).
RAHIM teaches that the adhesive is a two-part urethane acrylate adhesive composition that has the ability to both actinic radiation cure in light-accessible areas and chemically cure in shadowed areas improving the results for a tack-free satisfactory adhesive (par. [0005]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify the adhesive of BRAY with the adhesive of RAHIM and JOSEPH in order to improve the adhesive and thus the overall membrane/filter assembly. The references are combinable, because they are in the same technological environment of adhesives suitable for filter assemblies. See MPEP 2141 III (A) and (G). See also MPEP 2141.01(a).III.
BRAY’s modified device provides for an adhesive that has the same structure and function. This includes the property of maintaining adhesion to a membrane surface. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
Note that the adhesive on the filter assembly would be a mixed cured adhesive product so as to effectuate a rigid seal (see also RAHIM par. [0004] and BRAY C6/L19-22).
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
IKEMOTO (US 20210301070) discloses allophanate group-containing polyisocyanate composition, polyurethane resin-forming composition, seal material, membrane module including a low-molecular weight polyol (par. [0084-0085]).
Telephonic Inquiries
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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, Ben Lebron can be reached at (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1773
/Liam Royce/ Primary Examiner, Art Unit 1773
Prosecution Insights