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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, in the reply filed on 25 August 2025 is acknowledged.
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 25 August 2025.
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, 3, and 7-8 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.
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).
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]).
With respect to claim 8, 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 cm3/[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 cm3/[m2·day], absent evidence to the contrary.
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 7-8 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.
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]).
With respect to claim 8, 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.
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 7-8 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.
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]).
With respect to claim 8, 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.
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]).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787