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
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 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, 3, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ke et al. (CN 109553766 A, “Ke”) in view of Vinci et al. (WO 2015/057444 A1, “Vinci”). The disclosure of Ke is based off a machine translation of the reference included with the action mailed 25 June 2025.
With respect to claim 1, Ke discloses an adhesive composition having a first component including (A) a modified polyester polyol, (B) a polycarbonate polyol, and (C) a solvent ([0098]) and a second component comprising an isocyanate compound ([0017-0019]). The first component corresponds to the claimed isocyanate-reactive component. The second component corresponds to the claimed isocyanate component. The polycarbonate polyol includes Eternacoll UH-100 and UH-200 ([0057]); while there may be no explicit disclosure from Ke that these polycarbonate polyols are crystalline polycarbonate diols, given that they are identical to those described in the specification as originally filed as being crystalline polycarbonate diol compounds (instant specification, page 5, lines 5-7), it is clear they are inherently crystalline polycarbonate diols as presently claimed. Ke further discloses the adhesive is used to prepare a laminate ([0109]).
However, Ke does not disclose wherein the polyol component includes at least one acrylic polymer compound.
Vinci teaches an adhesive composition made from an isocyanate component (A) and a polyester polyol (B) (page 2, lines 10-13). The composition contains a solvent (page 4, lines 24-25). The adhesive contains additional components, including an acrylic polymer-based flow modifier that enhances wetting (page 5, lines 19-20 and 26-29). The additive is contained in the (B) component (i.e., is contained in the polyol component) (page 6, lines 3-4).
Ke and Vinci are analogous inventions in the field of solvent-containing polyurethane adhesive compositions having an isocyanate component and a polyester polyol-based component.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Ke to contain an acrylic polymer-based flow modifier in the polyol component as taught by Vinci in order to provide an adhesive composition having enhanced wetting (Vinci, page 5, lines 26-29).
Regarding the adhesive composition being used to form a laminate having an oxygen transmission rate of less than 750 cc/(m2·day), it is first noted that Ke discloses the adhesive is used to prepare a laminate ([0109]). While there may be no explicit disclosure from Ke in view of Vinci regarding the laminate having an oxygen transmission rate of less than 750 cc/(m2·day), given that Ke in view of Vinci discloses an otherwise identical adhesive made from otherwise identical components as that presently claimed which is used in making laminates, it is clear the laminate would necessarily inherently have an oxygen transmission rate of less than 750 cc/(m2·day), absent evidence to the contrary.
With respect to claim 3, Ke discloses the isocyanate includes 1,6-hexamethylene diisocyanate, toluene diisocyanate, and diphenylmethane diisocyanate ([0102-0104]).
With respect to claim 7, Ke discloses the solvent includes ethyl acetate and methyl ethyl ketone ([0100]).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ke et al. (CN 109553766 A, “Ke”) in view of Vinci et al. (WO 2015/057444 A1, “Vinci”) as applied to claim 1 above, and further in view of the evidence provided by Purin Global (Eternacoll UH-100 Material Safety Data Sheet) and Chemical Book (Diethyl ester carbonic acid polymer with 1,6-hexanediol). The disclosure of Ke is based off a machine translation of the reference included with the action mailed 25 June 2025.
With respect to claims 4-5, as set forth above, Ke discloses the polycarbonate polyol includes Eternacoll UH-100 ([0057]); while there may be no explicit disclosure that Eternacoll UH-100 is crystalline, given that it is identical to the compound of the present invention described as being a crystalline polycarbonate diol compound (instant specification, page 5, lines 5-7), it is clear it is inherently a crystalline polycarbonate diol as presently claimed. As evidenced by Purin Global, Eternacoll UH-100 is a hydroxyl-terminated polycarbonate diol (page 1, Section 1, “Product Name”), is identified under the CAS number 101325-00-2 (page 1, Section 2), and has a melting point of 39-44°C (page 3, Section 9, “Melting Point”) (i.e., is solid over the temperature range of 10°C to less than 39°C, overlapping the presently claimed range); as evidenced by Chemical Book, the compound identified under CAS NO. 101325-00-2 is a diethyl ester carbonic acid polymer with 1,6-hexanediol (page 1, structure, “CAS No.”, and “Chemical Name”) and therefore corresponds to the claimed crystalline polycarbonate diol comprising poly(hexanediol-carbonate).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ke et al. (CN 109553766 A, “Ke”) in view of Vinci et al. (WO 2015/057444 A1, “Vinci”) as applied to claim 1 above, and further in view of Brinkman et al. (US 2013/0018146 A1, “Brinkman”). The disclosure of Ke is based off a machine translation of the reference included with the action mailed 25 June 2025.
With respect to claim 6, while Ke in view of Vinci discloses the use of an acrylic polymer-based flow modifier that enhances wetting (corresponding to the claimed acrylic polymer) (Vinci, page 5, lines 19-20 and 26-29) which is contained in the polyol component (Vinci, page 6, lines 3-4), Ke in view of Vinci does not disclose wherein the acrylic flow modifier comprises the materials presently claimed.
Brinkman teaches a two-component urethane system ([0001]) comprising a hydroxy-functional acrylic polymer as a flow aid, where the polymer is made from monomers including acrylic acid ([0012]) (i.e., is an acrylic copolymer made of a monomer including acrylic acid). The flow aid produces a uniform coating of adhesive on a film ([0012]).
Ke in view of Vinci and Brinkman are analogous inventions in the field of two-component urethane compositions containing acrylic-based flow agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the acrylic flow agent of Ke in view of Vinci to be the hydroxy-functional acrylic polymer made from acrylic acid as taught by Brinkman in order to provide a uniform coating of adhesive on a film (Brinkman, [0012]).
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2015/0031815 A1, “Singh”).
With respect to claims 1-2, Singh discloses a two-component curable adhesive comprising (a) a first component comprising a polyester-polycarbonate polyol (corresponding to the claimed polycarbonate diol compound) and a solvent (corresponding to the claimed isocyanate-reactive component (b)) and (b) a second component comprising a reaction product of a polyol and an organic polyisocyanate (corresponding to the claimed at least one isocyanate component (a)) ([0011]). The first component (a) further includes a flow control agent ([0060]) that is a polyacrylic ester ([0065]) (i.e., an acrylic polymer). The first component (a) is present in an amount of 60-90% by weight of the two-component composition ([0012]); the second component (b) is present in an amount of 10-40% by weight of the two-component composition ([0013]). Thus, the ratio of the second component (b) to the first component (a) (corresponding to the claimed weight ratio of component (a) to component (b)) is 10/90 to 40/60, which is equivalent to 11/100 to 67/100, which overlaps the presently claimed range.
Singh does not disclose the polyester-polycarbonate polyol (corresponding to the claimed polycarbonate diol compound) is crystalline. However, Singh discloses the physical state of the polyester-polycarbonate polyol can be controlled by the ratio of the ester and carbonate in the copolymer and that such control is important since it affects the viscosity and the processing of the adhesive ([0010]). Therefore, it would have been obvious to one of ordinary skill in the art to control the physical state of the polyester-polycarbonate polyol of Singh, including having a crystalline polyester-polycarbonate polyol (corresponding to the claimed crystalline polycarbonate diol compound), in order to produce an adhesive with desired viscosity and having good processability.
Regarding the adhesive composition being used to form a laminate having an oxygen transmission rate of less than 750 cc/(m2·day), while there may be no explicit disclosure from Singh regarding the adhesive composition having an oxygen transmission rate of less than 750 cm3/[m2·day], given that Singh discloses an otherwise identical adhesive composition made from otherwise identical components as that presently claimed, it is clear the adhesive composition of Singh would necessarily inherently have an oxygen transmission rate of less than 750 cm3/[m2·day], absent evidence to the contrary.
With respect to claim 3, Singh discloses the polyisocyanate includes hexamethylene diisocyanate, diphenylmethane diisocyanate, and 2,4- and/or 2,6-toluene diisocyanate ([0047]).
With respect to claim 7, Singh discloses the solvent includes ethyl acetate and methyl ethyl ketone ([0042]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2015/0031815 A1, “Singh”) as applied to claim 1 above, and further in view of Brinkman et al. (US 2013/0018146 A1, “Brinkman”).
With respect to claim 6, while Singh discloses the use of an acrylic flow control agent as set forth above, Singh does not disclose wherein the at least one acrylic polymer compound comprises the compounds presently claimed.
Brinkman teaches a two-component urethane system ([0001]) comprising a hydroxy-functional acrylic polymer as a flow aid, where the polymer is made from monomers including alkyl acrylate and acrylic acid ([0012]) (i.e., is an acrylic copolymer made of a monomer including acrylic acid). The flow aid produces a uniform coating of adhesive on a film ([0012]).
Singh and Brinkman are analogous inventions in the field of two-component urethane compositions containing acrylic-based flow agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the acrylic flow agent of Singh to be the hydroxy-functional acrylic polymer made from alkyl acrylate and acrylic acid as taught by Brinkman in order to provide a uniform coating of adhesive on a film (Brinkman, [0012]).
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2015/0031815 A1, “Singh”) in view of Schreckenberg et al. (GB 1 587 481, “Schreckenberg”).
With respect to claims 1-2, Singh discloses a two-component adhesive comprising (a) a first component comprising a polyester-polycarbonate copolymer polyol (corresponding to the claimed polycarbonate diol compound) and a solvent (corresponding to the claimed component (b)) and (b) a second component comprising a reaction product of a polyol and an organic polyisocyanate (corresponding to the claimed component (a)) ([0011]). The first component (a) further comprises a flow control agent ([0060]) that is a polyacrylic ester ([0065]) (i.e., an acrylic polymer). The first component (a) is present in an amount of 60-90% by weight of the two-component composition ([0012]); the second component (b) is present in an amount of 10-40% by weight of the two-component composition ([0013]). Thus, the ratio of the second component (b) to the first component (a) (corresponding to the claimed weight ratio of component (a) to component (b)) is 10/90 to 40/60, which is equivalent to 11/100 to 67/100, which overlaps the presently claimed range. The adhesive is used to bond or laminate substrates ([0075], [0099]).
However, Singh does not disclose wherein the polyester-polycarbonate polyol is a crystalline compound.
Schreckenberg teaches a polyester-diol bis-diphenol carbonate (page 2, lines 31-33) that are crystalline polyester/polycarbonates (page 8, lines 12-15). The polyester/polycarbonates exhibit good transparency, highly elastic properties, and outstanding elongation at break (page 8, lines 54-56) and high heat distortion temperature (page 12, lines 38-40).
Singh and Schreckenberg are analogous inventions in the field of polyester-polycarbonate copolymer polyols.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester-polycarbonate copolymer polyol of Singh to be the crystalline polyester-polycarbonate copolymer polyol taught by Schreckenberg in order to provide a composition having good transparency, highly elastic properties, outstanding elongation at break, and high heat distortion temperature (Schreckenberg, page 8, lines 54-56; page 12, lines 38-40). The crystalline polyester-polycarbonate copolymer polyol of Singh in view of Schreckenberg corresponds to the claimed crystalline polycarbonate diol compound.
Regarding the adhesive composition being used to form a laminate having an oxygen transmission rate of less than 750 cc/(m2·day), while there may be no explicit disclosure from Singh regarding the adhesive composition having an oxygen transmission rate of less than 750 cm3/[m2·day], given that Singh discloses an otherwise identical adhesive composition made from otherwise identical components as that presently claimed, it is clear the adhesive composition of Singh would necessarily inherently have an oxygen transmission rate of less than 750 cm3/[m2·day], absent evidence to the contrary.
With respect to claim 3, Singh discloses the polyisocyanate includes hexamethylene diisocyanate, diphenylmethane diisocyanate, and 2,4- and/or 2,6-toluene diisocyanate ([0047]).
With respect to claim 7, Singh discloses the solvent includes ethyl acetate and methyl ethyl ketone ([0042]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2105/0031815 A1, “Singh”) in view of Schreckenberg et al. (GB 1 587 481, “Schreckenberg”) as applied to claim 1 above, and further in view of Brinkman et al. (US 2013/0018146 A1, “Brinkman”).
With respect to claim 6, while Singh in view of Schreckenberg discloses the use of an acrylic flow control agent as set forth above, Singh does not disclose wherein the at least one acrylic polymer compound comprises the compounds presently claimed.
Brinkman teaches a two-component urethane system ([0001]) comprising a hydroxy-functional acrylic polymer as a flow aid, where the polymer is made from monomers including alkyl acrylate and acrylic acid ([0012]) (i.e., is an acrylic copolymer made of a monomer including acrylic acid). The flow aid produces a uniform coating of adhesive on a film ([0012]).
Singh in view of Schreckenberg and Brinkman are analogous inventions in the field of two-component urethane compositions containing acrylic-based flow agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the acrylic flow agent of Singh in view of Schreckenberg to be the hydroxy-functional acrylic polymer made from alkyl acrylate and acrylic acid as taught by Brinkman in order to provide a uniform coating of adhesive on a film (Brinkman, [0012]).
Response to Arguments
Due to the cancellation of claim 8, the 35 U.S.C. 103 rejections of claim 8 are withdrawn.
Applicant’s arguments filed 06 April 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections over Ke in view of Vinci, Applicant argues neither Ke nor Vinci disclose a crystalline polycarbonate-based polyurethane adhesive composition used to form a laminate having an oxygen transmission rate of less than 750 cc/(m2·day). Specifically, Applicant argues the data shown in Table III demonstrates unpredictable results, and that the cited references fail to disclose the specific combination of components presently claimed. Applicant argues Ke fails to disclose the polycarbonate polyols are crystalline polyols, that Ke is directed to epoxy-modified polyester polyols for use in adhesives, and that Ke focused on obtaining an adhesive that exhibits moisture and heat resistance while being silent with respect to an oxygen transmission rate. Applicant argues there is no teaching or suggestion in Ke that would motivate one of ordinary skill in the art to modify its disclosure to achieve the claimed polyurethane having the specific oxygen transmission rate. Applicant further argues Vinci does not cure the alleged deficiencies of Ke, in that Vinci uses a different polyol system than Ke. Applicant argues there is an incompatibility between Ke’s epoxy-based crosslinked systems and Vinci’s requirement for controlled crystallization of polyesters, such that one of ordinary skill in the art would not combine the two references and arrive at the claimed invention. Applicant further argues Purin Global and Chemical Book are non-analogous art, and that the references fail to provide any teaching or suggestion to select a crystalline polycarbonate polyol. Applicant lastly argues Brinkman is directed to adhesive processability and bonding performance, and not oxygen barrier properties. The examiner respectfully disagrees.
In response to Applicant’s argument that the data provided in Table III demonstrates unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the data relates to specific polyurethane adhesives made from specific crystalline polycarbonate diols. In particular, the data relates to specific crystalline polycarbonate diols being ETERNACOLL® UH-100 and ETERNACOLL® UH-200 (instant specification, page 12, Table I), which are 1,6-hexanediol-based crystalline polycarbonate diols having molecular weights of 1,000 and 2,000, respectively, and melting points of about 45°C and 50°C, respectively (instant specification, page 10, lines 22-26). However, the present claims are broadly drawn to any polyurethane adhesive made from any crystalline polycarbonate diol compound having any molecular weight and any melting point.
Secondly, the data relates to specific polyurethane adhesives made from a specific acrylic copolymer. In particular, the data relates to the use of MODAFLOW® (instant specification, page 12, Table I), which is a specific (albeit undisclosed) acrylic copolymer (instant specification, page 10, line 30). However, the present claims are broadly drawn to any polyurethane adhesive made from any acrylic polymer compound.
Thirdly, the data relates to specific polyurethane adhesives made from a specific composition containing a specific solvent. In particular, the data relates to the use of ethyl acetate as the solvent (instant specification, page 12, Table I). However, the present claims are broadly drawn to any polyurethane adhesive made from any solvent.
Fourthly, the data relates to specific polyurethane adhesives made from specific isocyanate-reactive components. In particular, the data relates to isocyanate-reactive components made from co-reactant compositions containing: (1) 35 wt% ETERNACOLL® UH-100, 0.25 wt% MODAFLOW®, and 64.75 wt% ethyl acetate; (2) 25 wt% ETERNACOLL® UH-100, 0.25 wt% MODAFLOW®, and 74.75 wt% ethyl acetate; and (3) 35 wt% ETERNACOLL® UH-200, 0.25 wt% MODAFLOW®, and 64.75 wt% ethyl acetate (instant specification, page 12, Table I). However, the present claims are broadly drawn to any isocyanate-reactive component comprising any crystalline polycarbonate diol compound in any amount, any acrylic polymer compound in any amount, and any solvent in any amount.
Fifthly, the data relates to specific polyurethane adhesives made from specific isocyanate components. In particular, the data relates to the use of MOR-FREE™ C33 (instant specification, page 12, Table II) which is a specific (albeit undisclosed) aliphatic-based isocyanate (instant specification, page 10, lines 18-19). However, the present claims are broadly drawn to any isocyanate component made from any isocyanate.
Lastly, the data relates to specific polyurethane adhesives made from specific mixtures of specific isocyanate-reactive components and specific isocyanate components in specific amounts. In particular, the data relates to polyurethane adhesives made from: (1) 84.7 wt% of an isocyanate-reactive component made from 35 wt% ETERNACOLL® UH-100, 0.25 wt% MODAFLOW®, and 64.75 wt% ethyl acetate, reacted with 15.3 wt% of an isocyanate component being MOR-FREE™ C33; (2) 88.7 wt% of an isocyanate-reactive component made from 25 wt% ETERNACOLL® UH-100, 0.25 wt% MODAFLOW®, and 74.75 wt% ethyl acetate, reacted with 11.3 wt% MOR-FREE™ C33; and (3) 91.7 wt% of an isocyanate-reactive component made from 35 wt% ETERNACOLL® UH-200, 0.25 wt% MODAFLOW®, and 64.75 wt% ethyl acetate, reacted with 8.3 wt% MOR-FREE™ C33 (instant specification, page 12, Tables I-II). However, the present claims broadly allow for any polyurethane adhesive made from any polyurethane adhesive composition made from any isocyanate component in any amount and any isocyanate-reactive component made from any crystalline polycarbonate diol in any amount, any acrylic polymer compound in any amount, and any solvent in any amount, where the isocyanate-reactive component is present in any amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Ke does not disclose crystalline polycarbonate diol, that Ke is directed to epoxy-modified polyester polyols, and that Ke focuses on obtaining an adhesive exhibiting moisture and heat resistance while being silent with respect to an oxygen transmission rate, this is not found persuasive. It is acknowledged that Ke is drawn to epoxy-modified polyester polyols. However, Ke discloses the polyol component further includes polycarbonate polyols for increasing the crosslinking density after curing ([0094]). While Ke does not disclose the additional polycarbonate polyols are crystalline, Ke discloses the use of polycarbonate polyols including Eternacoll UH-100 and Eternacoll UH-200 ([0057]), and therefore it would have been obvious to one of ordinary skill in the art to use Eternacoll UH-100 and Eternacoll UH-200 as the polycarbonate polyols. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Eternacoll UH-100 and Eternacoll UH-200 are identical to the crystalline polycarbonate diols of the present invention (instant specification, page 5, lines 5-7) and thus Ke discloses the use of crystalline polycarbonate diols. Further, while Ke in view of Vinci may not explicitly disclose an oxygen transmission rate of less than 750 cc/(m2·day), given that Ke in view of Vinci discloses an otherwise identical adhesive made from otherwise identical components as that presently claimed which is used in making laminates, it is clear the laminate would necessarily inherently have an oxygen transmission rate of less than 750 cc/(m2·day), absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103. Thus, given that Ke in view of Vinci discloses a polyurethane adhesive made from at least one isocyanate component and at least one isocyanate-reactive component comprising at least one crystalline polycarbonate diol, at least one acrylic polymer compound, and at least one solvent as set forth above, the two references together disclose an identical polyurethane adhesive composition as that presently claimed and therefore it would necessarily have an oxygen transmission rate of less than 750 cc/(m2·day). Further, in response to Applicant’s argument that Ke has addresses a different problem than the present application, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
In response to Applicant’s argument that Vinci does not cure the alleged deficiencies of Ke, that Vinci uses a different polyol system from Ke, and that there is an incompatibility between Ke’s epoxy-based crosslinked system and Vinci’s requirement for controlled crystallization of polyesters, this is not found persuasive. As set forth above, Ke does not contain the deficiencies alleged by Applicant. Further, Vinci is not being used for its teaching of a polyol system, but rather for its teaching of an acrylic polymer-based flow modifier that enhances wetting (page 5, lines 19-20 and 26-29) which is contained in the polyol component (page 6, lines 3-4). Ke and Vinci are analogous inventions in the field of solvent-containing polyurethane adhesive compositions having an isocyanate component and a polyester polyol-based component. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyol component of Ke to contain an acrylic polymer-based flow modifier as taught by Vinci in order to provide an adhesive composition having enhanced wetting (Vinci, page 5, lines 26-29). Further, while Vinci may use a different polyol system, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The examiner is not suggesting replacing the polyol component of Ke with the polyols of Vinci, but instead utilizing the acrylic polymer-based flow modifier of Vinci in the polyol component of Ke in order to provide an adhesive composition having enhanced wetting (Vinci, page 5, lines 26-29).
In response to Applicant’s argument that Purin Global and Chemical Book are non-analogous art and fail to disclose a crystalline polycarbonate polyol, this is not found persuasive. Both Purin Global and Chemical Book are used as evidentiary references and not teaching references, and therefore it is unnecessary for them to be analogous art or for them to disclose a crystalline polycarbonate polyol. Purin Global is solely used to show that Eternacoll UH-100 is solid over the temperature range of 10°C to less than 39°C), and Chemical Book is solely being used to show that Eternacoll UH-100 is a diethyl ester carbonic acid polymer with 1,6-hexanediol, corresponding to the claimed crystalline polycarbonate diol comprising poly(hexanediol-carbonate).
In response to Applicant’s argument regarding Brinkman being silent regarding oxygen barrier properties, the examiner acknowledges Brinkman is silent with respect to this property. However, Brinkman is not being used to meet this limitation. Instead, Ke in view of Vinci meets this limitation for the reasons set forth above. Brinkman is used as a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention. In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973); In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, this reference teaches a certain concept, namely a hydroxy-functional acrylic polymer made from monomers including acrylic acid in order to provide a uniform coating of adhesive on a film (Brinkman, [0012]), and in combination with the primary reference, discloses the presently claimed invention.
Lastly, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the 35 U.S.C. 103 rejections over Singh, Applicant argues Singh does not explicitly disclose a crystalline polycarbonate, and that Singh is drawn to improving hydrolytic stability of polyurethane adhesives using non-crystalline polyester-polycarbonate polyols. Applicant further argues Singh discloses adjusting the ratio of ester to carbonate units in the copolymer to control the viscosity and physical state for processing. Applicant argues Singh directs one of ordinary skill in the art toward non-crystalline or less crystalline systems with tunable physical states and teaches away from using a crystalline polyester-polycarbonate that would undermine the processing advantages, and thus fails to provide any motivation or guidance for using the crystalline polycarbonate to arrive at the claimed laminate having the claimed oxygen transmission rate. Applicant further argues the examiner’s conclusion of obviousness is based off impermissible hindsight reasoning, and that Singh teaches away from using a crystalline polycarbonate diol. Applicant additionally argues Brinkman does not cure the alleged deficiencies of Singh, and that there is no motivation to combine the references. Applicant further argues Schreckenberg teaches segmented polyester/polycarbonates exhibiting crystalline domains for use in structural or thermoplastic applications, not adhesive compositions, and that incorporating the crystalline polyester-polycarbonates of Schreckenberg into Singh would result in materials that are solid under processing conditions and defeat Singh’s objective of processability. Applicant argues one of ordinary skill in the art would not combine Singh and Schreckenberg because they are direct to different material systems and technical objectives. Applicant further argues Brinkman does not cure the alleged deficiencies of Singh, and that Brinkman’s technical objective is to achieve low-viscosity urethane systems for high solids coating, and teaches away from the claimed polyurethane adhesive. Applicant concludes that one of ordinary skill in the art would not combine Brinkman with Singh because they are directed to different material systems and technical objectives. The examiner respectfully disagrees.
In response to Applicant’s arguments regarding Singh, Applicant’s arguments are not found persuasive. The examiner acknowledges Singh does not explicitly disclose a crystalline polycarbonate. However, Singh discloses the physical state of the polyester-polycarbonate polyol can be controlled by the ratio of ester and carbonate in the copolymer, and that such control is important since it affects the viscosity and the processing of the adhesive ([0010]). Therefore, it would have been obvious to one of ordinary skill in the art to control the physical state of the polyester-polycarbonate polyol of Singh, including having a crystalline polyester-polycarbonate polyol (corresponding to the claimed crystalline polycarbonate diol compound) in order to produce an adhesive with desired viscosity and having good processability ([0010]). Further, in response to Applicant’s argument that Singh teaches away from a crystalline polyester-polycarbonate, this is not found persuasive. Singh merely discloses pure polyester polyols and pure polycarbonate polyols are generally crystalline and solid at room temperature ([0010]) but this does not constitute a teaching away because the reference does not criticize, discredit, or otherwise discourage the use of crystalline polyester-polycarbonate polyols. Additionally, even a less crystalline system is considered crystalline since the present claims place no limitations on the degree of crystallinity. Further, while there may be no explicit disclosure from Singh regarding the adhesive composition having an oxygen transmission rate of less than 750 cm3/[m2·day], given that Singh discloses an otherwise identical adhesive composition made from otherwise identical components as that presently claimed, it is clear the adhesive composition of Singh would necessarily inherently have an oxygen transmission rate of less than 750 cm3/[m2·day], absent evidence to the contrary.
In response to Applicant’s argument that the examiner’s conclusion of obviousness is based off impermissible hindsight reasoning, this is not persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, the motivation to combine or modify the references come from themselves and not from Applicant’s disclosure, and thus does not constitute impermissible hindsight reasoning.
In response to Applicant’s argument that Brinkman fails to remedy the alleged deficiencies of Singh, that there is no motivation to combine Brinkman with Singh, and that Brinkman teaches away from the claimed polyurethane adhesive, this is not found persuasive. As set forth above, Singh does not contain the deficiencies alleged by Applicant, and thus Brinkman is not required to address them. 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). In this case, the motivation to combine the references comes from Brinkman. In particular, while Singh discloses the use of an acrylic flow agent ([0060], [0065]), Singh does not disclose wherein the at least one acrylic polymer compound comprises the compounds presently claimed. Brinkman teaches a two-component urethane system comprising a hydroxy-functional acrylic polymer as a flow aid, where the polymer is made from monomers including alkyl acrylate and acrylic acid ([0001], [0012]) (i.e., an acrylic copolymer made from a monomer including acrylic acid). The flow aid produces a uniform coating of adhesive on a film ([0012]). Singh and Brinkman are analogous inventions in the field of two-component urethane compositions containing acrylic-based flow agent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the acrylic flow agent of Singh to be the hydroxy-functional acrylic polymer made from alkyl acrylate and acrylic acid as taught by Brinkman in order to provide a uniform coating of adhesive on a film (Brinkman, [0012]). Further, Brinkman does not teach away from the claimed polyurethane because Brinkman does not criticize, discredit, or otherwise discourage the use of the claimed polyurethane adhesive.
In response to Applicant’s amendment that combining the teachings of Schreckenberg with Singh would result in materials that are solid under processing conditions and defeat Singh’s objective of processability, this is not found persuasive. Applicant has provided no evidence (i.e., data) demonstrating the combination of Schreckenberg with Singh would result in an inoperable invention. It is noted that “the arguments of counsel cannot take the place of evidence in the record”. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the Singh and Schreckenberg references must be supported by a declaration or affidavit.
In response to Applicant’s argument that one of ordinary skill in the art would not combine Singh and Schreckenberg because they are directed to different material systems and technical objectives, this is not found persuasive. Both Singh and Schreckenberg are drawn to polyester-polycarbonate copolymer polyols, and thus they are in the same field of endeavor and their combination is proper. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester-polycarbonate copolymer polyol of Singh to be the crystalline polyester-polycarbonate copolymer polyol taught by Schreckenberg in order to provide a composition having good transparency, highly elastic properties, outstanding elongation at break, and high heat distortion temperature (Schreckenberg, page 8, lines 54-56; page 12, lines 38-40). The crystalline polyester-polycarbonate copolymer polyol of Singh in view of Schreckenberg corresponds to the claimed crystalline polycarbonate diol compound.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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