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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/03/2026 has been entered.
Status of Claims
The examiner acknowledges the amendments to claims 1 and 5. Claims 1-14 are pending.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cork (US 20060058492) in view of Fairbanks (Macromolecules (2011) v.44, pages 2444-2450).
Regarding Claims 1, 5, 9, and 11,
Cork teaches a polyurethane composition in which a polyisocyanate prepolymer (which reads on main agent of the instant claim) is combined with an isocyanate reactive component (which reads on curing agent of the instant claim) (Abstract). The prepolymer can contain isocyanates such as HDI which are aliphatic (Paragraph 10) or such as MDI or TDI which are aromatic (Paragraph 12). The isocyanates can be reacted with polyols or with disulfide containing compounds such as those of the Thioplast or Thiokol families (Paragraph 18). Additionally, compounds such as those of the Thioplast or Thiokol families may also be used as the isocyanate reactive component of the composition (Examples II-IV, found in Tables VIII-IX) in addition to polyols such as PPG-2000 (Paragraph 59) or PPG-230 (Paragraph 52). Cork also teaches that the composition may include a catalyst such as an amine or organometallic complex (Paragraph 38). Cork also teaches that such compositions are used as adhesives or coatings (Paragraph 3).
Cork however does not teach that the composition contains a photoradical generator. Fairbanks teaches that disulfide containing polymers can be mixed with photoinitiators, which upon exposure to UV light can cleave the disulfides, and when included in sufficient amounts, can result in the degradation of the polymer network (Page 2445, Left Column, Third Paragraph). Fairbanks states that this degradation can result in soluble polymer segments (Page 2445, Left Column, Third Paragraph) and that these reactions result in photoadaptable polymers (Page 2445, Left Column, Fifth Paragraph) and in some cases flow of the polymer can occur after exposure (Page 2447, Right Column, Second Paragraph). As such, the ordinarily skilled artisan, seeking to develop a removable adhesive that still retains the strength of a regular adhesive would be motivated to incorporate this behavior into a polymer system that already incorporates disulfide bonds. As such, it would have been obvious prior to the effective filing date of the instant application to have added the photoradical generator as taught by Fairbanks into the disulfide containing polyurethane taught by Cork to obtain the predictable result of an adhesive that can be removed with UV light exposure with a reasonable expectation of success.
Cork also teaches that polyurethanes are commonly used as coatings, which it would necessarily follow that a coating is a film (Paragraph 3).
Finally, while claim 1 has the limitation of photo-fusibility of the cured product, the claim does not contain any language that requires the composition to be cured. As such, this language is read to be that the composition, when cured, would be capable of exhibiting photo-fusibility. Fairbanks teaches that disulfide linkages can be cleaved using photoinitiators (Page 2445, Left Column, Third Paragraph), and as such, Cork in view of Fairbanks teaches a composition that would meet this requirement.
Regarding Claims 2 and 3,
Cork teaches that both amine and organometallic catalysts may be used in the composition, including zirconium based (Paragraph 55) and tin based (Paragraph 56).
Regarding Claim 4,
Cork teaches the limitations addressed above in claim 1 and that compositions are prepared in an A and B side (Example IX, Table XIV) and that after mixing, a tack free item is obtained (Paragraph 67). Additionally, Cork tests materials in ASTM D638 in which a dumbbell-shaped test specimen is used (Paragraph 80), where it would logically follow that the test article would be cured.
Regarding Claim 6,
Cork teaches that polyurethane compositions are used as adhesives (Paragraph 3). It would necessarily follow that if such compositions are used as adhesives that they are capable of bonding two items together as required by the instant claim.
Regarding Claim 7,
Cork teaches a composition that is comprised of a polyurethane that contains disulfide bonds which can be used as an adhesive, but does not teach the degradation of those bonds to separate two bonded articles adhered by the composition. Fairbanks teaches the degradation of polymers containing disulfide bonds with exposure to UV light in the presence of photoinitiators where the polymer is degraded into smaller segments which are then more soluble (Page 2445, Left Column, Paragraph 3). Fairbanks states that this is due to decreased number of disulfide bonds (Page 2447, Left Column, Paragraph 1) and further goes on to say that the light exposure can cause the exposed material to flow (Page 2447, Right Column, Paragraph 2). As this process follows the process described by the applicant, it would logically follow that it would function similarly. The ordinarily skilled artisan, seeking to develop a removable adhesive that still retains the strength of a regular adhesive would be motivated to incorporate this behavior into a polymer system that already incorporates disulfide bonds. As such, it would have been obvious prior to the effective filing date of the instant application to have added the photoradical generator as taught by Fairbanks into the disulfide containing polyurethane taught by Cork to obtain the predictable result of an adhesive that can be removed with UV light exposure with a reasonable expectation of success.
Regarding Claims 8 and 10,
Cork teaches that the mercaptan functional moieties may be incorporated into the polyisocyanate prepolymer (Paragraph 16), which meets the requirements of the instant claim.
Regarding Claims 12-14,
Cork teaches that polyurethane-polyureas may be used as coatings (Paragraph 3), which reads on a film. While Cork is silent on the thickness of the film, one of ordinary skill in the art would recognize that by disclosing that the composition is useful as a coating that a variety of film thicknesses would be possible. The ordinarily skilled artisan would also be motivated to adjust the film thickness in order to tailor it to the use case and as such, it would have been obvious prior to the effective filing date of the instant application to have used the composition in a film of any thickness that was fit for purpose.
Response to Arguments
Applicant's arguments filed 6/03/2026 have been fully considered but they are not persuasive for the following reasons.
On page 7, the applicant argues that claim 1 contains the limitation that the cured composition exhibits photo-fusibility which distinguishes the claim from the prior art. However, the examiner notes that the claim language does not speak to a curing step being performed on the composition. As a result, the photo-fusibility requirement is thus read as the composition being capable of exhibiting this property. Cork teaches a composition that contains disulfide bonds as noted in the rejection and in view of Fairbanks, which teaches that such bonds can be cleaved using photoradical generators, the composition of Cork in view of Fairbanks would indeed be capable of photo-fusibility and thus meets the requirement.
On page 9, the applicant argues that Cork and Fairbanks are in different fields and therefore there would be no motivation to combine them. The examiner disagrees as argued in the prior office action. While the applicant correctly asserts that Cork is directed towards chemically resistant materials, Fairbanks, while primarily directed towards biomedical applications, also points towards broader use in polymer science of the incorporation of disulfide bonds that are cleavable in the presence of photoinitiators (Page 2444, abstract, Page 2445, left column, paragraph 5, Page 2450, conclusion paragraph). Indeed, on page 2445, Fairbanks points to disulfide containing materials as suitable for the development of photoadaptable polymers. As Cork describes compositions containing disulfide bonds, the ordinarily skilled artisan would note that the disclosed compositions might be useful in this context. Additionally, Cork does not provide any teachings that would direct one of ordinary skill in the art away from attempting such a combination, nor would the inclusion of a photoradical initiator destroy the properties of the polyurethane-polyurea polymers taught by Cork. Thus, when taking the teachings of both Cork and Fairbanks as a whole, the technical areas do in fact overlap.
Similarly, the applicant also argues on page 10 that there would be no reasonable expectation of success. The examiner reiterates the argument from the prior office action. The examiner points to the fact that Fairbanks intends the radical reaction to take place in the presence of peptides (Page 2449, left column, first paragraph), which contain amide groups that have substantially similar reactivities to the urethane and urea groups that would be present in the polymer taught by Cork. Given this similarity, while there would be no absolute guarantee of success, the ordinarily skilled artisan could reasonably conclude that if the presence of amide groups was not of issue that the structurally similar urea and urethane groups could be present as well. See MPEP 2143.02.I.
Finally, on page 9, the applicant argues that the incorporation of Fairbanks teaching of breaking bonds within the polymer would contradict the intent of Cork. While the examiner notes that this could be the case, the current claim language, as written, only requires that the composition be capable of such degradation as noted in the rejection. Because of this, the intent of Cork is not contradicted as the composition of Cork in view of Fairbanks would indeed be capable of this property.
As such, the prior rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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