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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 23 April 2026 has been entered.
Response to Arguments
In response to the final Office Action (dated 9 February 2026), the Applicant submits the following:
-- Independent base claim 1 has been amended to clarify the filler is an inorganic filler (Claim 1, lines 12 & 14), and ‘rheology additive’ was grammatically amended to ‘rheological additive’ (Claim 1, lines 13 & 15).
-- Dependent claim 2 was amended to maintain antecedent basis for the above amendments (Claim 2, line 3).
-- No new matter has been entered.
The arguments provided by the Applicant have been thoroughly reviewed & considered but are ultimately found unpersuasive in view of the amended claims.
The Applicant states the cited prior art fails to disclose or suggest a multi-component resin system comprising an inorganic filler and 0.1-3 wt. % of at least one rheological additive in the at least one isocyanate component (A) and/or an inorganic filler and 0.1-5 wt.% of at least one rheological additive in the at least one amine component (B) (Remarks, p. 6).
Applicant points to [0048] in Schmatloch, arguing that Schmatloch employs fumed silica as a desiccant (Remarks, p. 6, bottom paragraph). Applicant maintains no combination of the cited prior art teach the claimed invention comprising an inorganic filler and rheological modifier (Remarks, p. 7). Applicant challenges the assertation that “fumed silica is known in the art to elicit rheological performance changes in similar compositions” (see advisory action (dated 3 April 2026)), and requests evidence thereof (Remarks, bottom p. 7, - p.8).
Applicant continues, stating that if one of ordinary skill in the art were to use fumed silica as a rheology modifier in the composition of Finder et al., then there would have been no motivation to include an inorganic filler, and points to [0075] in Finder where structural fillers are taught to be organic polymers (Remarks, p. 8). Applicant concludes by stating Grunder is not sufficient to remedy the alleged deficiencies of the cited prior art above (Remarks, p. 9).
Examiner notes Applicant’s argue the prior art teaches silica as a desiccant and not as a rheology modifier. However, the language employed by the claims (i.e. “rheological additive”) is a statement of intended use. Any material capable of performing the intended use meets the compositional limitations of the claims, regardless of whether the prior art intends a compositionally identical additive for a different reason. The instant specification (p. 14, lines 20-25) identifies silica as a material capable of functioning as a rheology additive. The fumed silica disclosed by the prior art is indistinguishable from the fumed silica recognized by the Applicant, and therefore reads on the claimed rheology additive.
Examiner supplies Braun et al. (Rheology Modifiers Handbook; Practical Use and Application), which teaches fumed silica as a rheology modifier in various capacities (see p. 3).
Examiner notes that [0075] of Finder discusses structural fillers present in rigid substrates to which the 1K and 2K adhesives are applied. Finder contemplates the use of fillers exemplified by chalk (an inorganic material) at [0034]. Fillers are again suggested by Finder at [0035], [0047], [0050], and [0051]. At no point does Finder teach away from, disparage, or otherwise discourage the use of inorganic fillers, nor does Finder expressly limit suitable fillers only to organic polymers. Modification in view of Schmatloch to select a suitable inorganic filler performing the same purpose in a similar composition is therefore proper.
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.
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, 2, 4 & 6 – 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Finder et al. (US 2009/0247697 A1) in view of Schmatloch et al. (US 2018/0179426 A1).
Regarding claims 1, 6, 9 and 10, Finder teaches various isocyanate mixtures (Abstract) and discloses the reaction of the isocyanate component with at least one amine component in the form of a 2K system (p. 3, [0058]).
The isocyanate component is preferably 2,2’-diphenylmethane diisocyanate (2,2’-MDI) but may also be hexamethylene diisocyanate (HDI), isophorone diisocyanate (IPDI) or hydrogenated MDI (H12MDI) (p. 2, [0031]). HDI, IPDI & H12MDI have an average NCO functionality of 2. The isocyanate component is present in amounts of from 20 to 70 wt.% (p. 2, [0038], [0040]). The isocyanate component may further comprise rheology modifiers and fillers (p. 8, claim 5). Finder teaches the use of inorganic fillers, such as quartz stones, sand (p. 5, [0070]) or chalk (p. 2, [0034]).
The component containing groups reactive with isocyanate groups may be amine-terminated compounds such as polyamines (p. 2, [0032]), preferably having a functionality of 2 to 4. Finder suggests using N,N'-di-sec-butyl-p-phenylenediamine, among others, as the amine component (p. 3-4, [0060]). The component reactive towards isocyanate groups is present in amounts of at least 50 wt.% (p. 3-4, [0060]), however, Finder is silent on the isocyanate & amine components comprising a rheological additive in amounts as required by the claims.
In the same field of endeavor, Schmatloch two component polyurethane adhesives comprising a polyol component & a polyisocyanate component. Schmatloch details the invention exhibits an excellent combination of prolonged open time followed by curing (Abstract). The polyol component has at least two primary or two secondary amine groups (p. 1, [0012]-[0015]). The invention further comprises inorganic fillers, such as glass (p. 4, [0045]).
Schmatloch presents empirical data for the polyol component & isocyanate component of their invention, detailing the polyol component comprises 1.5 parts fumed silica and the isocyanate component comprises 0.5-1.0 parts fumed silica (p. 7, Tables 1 & 2).
Fumed silica aligns with the examples of suitable rheological additives for the instant application (Specification, p. 14, lines 19-22).
As Schmatloch details the prolonged open time enables the adhesive to remain flowable, allowing for manipulation of said adhesive as desired, it would have been obvious to one of ordinary skill in the art at the time of filing to observe that the amine-containing polyol component and isocyanate component both comprise fumed silica (1.5 pbw & 0.5-1.0 pbw, respectively) and modify the teachings of Finder with this in mind. Modification of Finder in view of Schmatloch in this way results in 2K system comprising an isocyanate component & an amine component, wherein, the isocyanate component comprises fumed silica in amounts of 0.5-1.0 pbw and the amine component comprises fumed silica in amounts of 1.5 pbw, as these values have been shown as suitable for rheological additives in similar compositions. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
The modification of Finder in view of Schmatloch detailed above reads on limitations established by claims 1, 6, 9 and 10.
Regarding claim 2, maintaining the modification of Finder in view of Schmatloch previously detailed, Finder discloses the isocyanate component may further comprise rheology modifiers and fillers (p. 8, claim 5). Finder discloses the amine component may further comprise adhesion promoters, diluents (i.e., a rheology modifier) & other fillers (p. 3-4, [0060]). Finder provides motivation to establish equal viscosities of the isocyanate component and the amine component, as this is the only way to ensure adequate miscibility of the system (p. 4, [0061]).
Regarding claim 4, maintaining the modification of Finder in view of Schmatloch previously detailed, Finder teaches the ratio of isocyanate groups to amine groups is from 0.90 to 1.20 (p. 4, [0060]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 7, maintaining the modification of Finder in view of Schmatloch previously detailed, two-component (2K) embodiments of Finder’s invention may comprise fillers in amounts of 5 to 80 wt.% (p. 5, [0075]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 8, maintaining the modification of Finder in view of Schmatloch previously detailed, Finder teaches the amine component may further comprise adhesion promoters (p. 3-4, [0060]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Finder et al. (US 2009/0247697 A1) in view of Schmatloch et al. (US 2018/0179426 A1) in further view of Grunder et al. (US 2020/0399513 A1).
Regarding claim 3, as stated, Finder teaches two-component (2K) embodiments may comprise fillers in amounts of 5 to 80 wt.% (p. 5, [0075]). Finder does not teach exact filler amount ranges for both the amine component & isocyanate component as described in claim 3.
In the same field of endeavor, Grunder teaches two-component adhesive formulations (Abstract) comprising an isocyanate component and an amine component (p. 7, claim 1). The isocyanate-reactive (amine) component comprises a filler in amounts of 5-60 wt.% and the isocyanate component comprises a filler in amounts of 0-50 wt.% (p.1, [0016], [0017]).
It would have been obvious to one of ordinary skill in the art at the time of filing to include between 5 and 60 wt.% of filler in Finder’s isocyanate-reactive (amine) component and up to 50 wt.% of filler in Finder’s isocyanate component such that the sum total falls within Finder’s range of 5-80 wt.%, as this distribution of fillers is recognized by the prior art as being suitable for similar 2K formulations. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Modification of Finder in view of Schmatloch in further view of Grunder as detailed above reads on the limitation established by claim 3.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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