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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 14, the claim recites “wherein the amine compound (C2-1) is polyether polyamine” in lines 1-2. There is no support in the specification as originally filed for this limitation in the claim. While the specification as originally filed provides support to recite specific polyether polyamines (see instant specification, [0034-0036] and [0108]), this does not provide support to broadly recite “polyether polyamines”, which include any polyether polyamine for which there is no support in the specification as originally filed.
Claim 15 is rejected under 35 U.S.C. 112(a) due to its dependency on claim 14.
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, 7-9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (JP 2004-292745 A, “Noda”). The disclosure of Noda is based off a machine translation of the reference included with the action mailed 21 October 2025.
With respect to claims 1 and 13, Noda discloses a two component adhesive composition ([0001]). The adhesive composition is solventless ([0048]). The adhesive comprises a polyurethane resin ([0009]). The polyurethane is made by reacting (i.e., is cured by reacting) polyol with polyisocyanate and a chain extender ([0026-0027]). Noda does not disclose the viscosity of the polyol at 50°C being 20-180 mPa·s. However, Noda discloses the use of low molecular weight polyols ([0028]) including polypropylene glycol having a molecular weight of 1,000 or 2,000 ([0061]). Given that Noda discloses using the same polyether polyol with the same molecular weight as the polyol in the present invention (instant specification, page 27, lines 21-24), the polyol would necessarily inherently have the same viscosity at 50°C as presently claimed. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the types and amounts of polyols to produce an adhesive with a desired viscosity, including values presently claimed, so that the adhesive has the desired pigment dispersion and workability ([0047]). Noda further discloses the chain extender includes ethylenediamine ([0034]). As seen by the structure below, ethylene diamine is an amine compound having an amino (–NH2) group.
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In light of the overlap between the claimed two-component curable adhesive and that taught by Noda, it would have been obvious to one of ordinary skill in the art to use a two-component curable adhesive that is both taught by Noda and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 7, Noda discloses the use of a terminal blocking agent/end-capping agent to stop the reaction between the polyol and the polyisocyanate, where the end-capping agent includes ethanol (i.e., a mono-alcohol) ([0035]).
With respect to claim 8, Noda discloses the use of a catalyst when forming the polyurethane ([0038]).
With respect to claim 9, Noda discloses the polyisocyanates includes diphenylmethane diisocyanate, 1,5-naphthalene diisocyanate, and xylylene diisocyanate ([0032]), which are identical to those of the present invention (instant specification, [0010]). Therefore, while there may be no explicit disclosure from Nakamura regarding a viscosity of the polyisocyanate composition at 50°C being 200-3,000 mPa·s, given Noda discloses identical polyisocyanates as those of the present invention, it is clear the polyisocyanate of Nakamura would necessarily inherently have a viscosity at 50°C of 200-3,000 mPa·s, absent evidence to the contrary.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (JP 2004-292745 A, “Noda”) as applied to claim 1 above, and further in view of Ogawa et al. (WO 2018/056293 A1, “Ogawa”). The disclosures of Noda and Ogawa are based off machine translations of the references included with the action mailed 21 October 2025.
With respect to claim 3, while Noda discloses the polyol includes an amine compound as set forth above, Noda does not disclose wherein the amine value of the polyol composition is 1-100 mg KOH/g.
Ogawa teaches a polyurethane made from chain extenders including ethylenediamine to produce a polyurethane having an amine value of 1-10 from the viewpoint of storage stability and pigment dispersibility ([0016]). While there is no explicit disclosure of the units of the amine value, they would necessarily have to be mg KOH/g.
Noda and Ogawa are analogous inventions in the field of polyurethanes made from chain extenders including ethylenediamine.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polyurethane having an amine value of 1-10 mg KOH/g, including a polyurethane made from a polyol having an amine value of 1-10 mg KOH/g in the two-component polyurethane adhesive of Noda in order to provide and adhesive with good storage stability and pigment dispersibility (Ogawa, [0016]).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (JP 2004-292745 A, “Noda”) as applied to claims 1 and 13 above, and further in view of Ikeda (JP 2001-164229 A) and the evidence provided by TCI (Polyoxypropylenediamine). The disclosure of Noda is based off a machine translation of the reference included with the action mailed 21 October 2025. The disclosure of Ikeda is based off a machine translation of the reference included with the IDS filed 06 September 2024.
With respect to claims 14-15, while Noda discloses the use of a chain extender including ethylenediamine ([0034]), Noda does not disclose wherein the amine compound is polyether polyamine, nor wherein the amine compound is selected from the group consisting of poly(propylene glycol)diamine, poly(propylene glycol)triamine, and poly(propylene glycol)tetraamine.
Ikeda teaches a solventless adhesive composition ([0004]) made from a first polyol component and a second polyisocyanate component ([0005]). The polyol component includes low molecular weight polyamines in order to adjust the molecular weight of the polyurethane polyisocyanate and the distribution of the hard and soft segments ([0016]); the low molecular weight polyamines include ethylenediamine and polyoxypropylenediamine ([0018]). As evidenced by TCI, polyoxypropylenediamine is poly(propylene glycol) diamine as claimed (pages 1-2).
Noda and Ikeda are analogous inventions in the field of solventless two-component adhesives made from ethylenediamine.
In light of the disclosure of the equivalence and interchangeability of ethylenediamine and polyoxypropylenediamine (i.e., poly(propylene glycol)diamine) as disclosed by Ikeda, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use polyoxypropylenediamine (i.e., poly(propylene glycol)diamine) in place of ethylenediamine in Noda in order to adjust the molecular weight of the polyurethane and the distribution of the hard and soft segments (Ikeda, [0016]).
Claims 1, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (WO 2018/058479 A1, “Nakamura”) in view of Allen et al. (US 2015/0344751 A1, “Allen”) and the evidence provided by Touchet et al. (Hierarchal structure-property relationships of segmented polyurethanes, “Touchet”).
With respect to claims 1 and 13, Nakamura discloses a solvent-free two-component adhesive comprising a polyisocyanate composition (X) containing a polyisocyanate (A) and a polyol composition (Y) containing a polyol (C) and a tertiary amine compound (B) having multiple hydroxyl groups (page 3, lines 7-10). The adhesive composition is cured (i.e., is curable) (page 3, line 17). The polyol (C) includes polyether polyols having a weight average molecular weight of 400-5,000 (page 10, line 6; page 11, lines 1-2) including polypropylene glycol (page 7, lines 17-19); given that Nakamura discloses the use of an identical polyether polyol with the same molecular weight as the polyol of the present invention (instant specification, page 27, lines 21-24), the polyol component would necessarily inherently have a viscosity at 50°C of 20-180 mPa·s, absent evidence to the contrary.
However, while Nakamura discloses the use of an amine compound in the polyol component as set forth above, Nakamura does not disclose wherein the amino compound is an amine compound having an amino group which is an NH2 group or an NHR group, where R is an alkyl group or an aryl group which may or may not have a functional group.
Allen teaches a two-part polyurethane adhesive, where the polyurethane is made by reacting a polyol and a polyisocyanate ([0058], [0066], [0259]). Small molecules reactive towards the polyisocyanate are included as chain extenders ([0264]). The small molecules include polyamines, such as ethylene diamine ([0266]); as seen in the structure below, ethylene diamine is an amine compound containing an amino (–NH2) group. It is well known, as evidenced by Touchet, that chain extenders increase polyurethane molecular weight and increase the block length of the hard segment, and that diamine chain extenders increase modulus and tensile strength while decreasing elongation (Touchet, page 9, 1.4.2 Chain extenders).
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Nakamura and Allen are analogous inventions in the field of two-part polyurethane adhesives made by reacting a polyol component and a polyisocyanate component and polyamines.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an ethylene diamine chain extender in the two-component polyurethane adhesive of Nakamura in order to provide an adhesive with desired molecular weight, hardness, modulus, tensile strength, and elongation (Touchet, page 9, 1.4.2 Chain extenders).
With respect to claim 9, Nakamura discloses the polyisocyanates includes toluene diisocyanate, diphenylmethane diisocyanate, 1,5-naphthalene diisocyanate, triphenylmethane triisocyanates, and xylylene diisocyanate (page 4, lines 11-15), which are identical to those of the present invention (instant specification, [0010]). Therefore, while there may be no explicit disclosure from Nakamura regarding a viscosity of the polyisocyanate composition at 50°C being 200-3,000 mPa·s, given Nakamura discloses identical polyisocyanates as those of the present invention, it is clear the polyisocyanate of Nakamura would necessarily inherently have a viscosity at 50°C of 200-3,000 mPa·s, absent evidence to the contrary.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (WO 2018/058479 A1, “Nakamura”) in view of Allen et al. (US 2015/0344751 A1, “Allen”) and the evidence provided by Touchet et al. (Hierarchal structure-property relationships of segmented polyurethanes, “Touchet”) as applied to claim 1 above, and further in view of Ogawa et al. (WO 2018/056293 A1, “Ogawa”).
With respect to claim 3, while Nakamura in view of Allen discloses the polyol includes an amine compound as set forth above, Nakamura in view of Allen does not disclose wherein the amine value of the polyol composition is 1-100 mg KOH/g.
Ogawa teaches a polyurethane made from chain extenders including ethylenediamine to produce a polyurethane having an amine value of 1-10 from the viewpoint of storage stability and pigment dispersibility ([0016]). While there is no explicit disclosure of the units of the amine value, they would necessarily have to be mg KOH/g.
Nakamura in view of Allen and Ogawa are analogous inventions in the field of polyurethanes made from chain extenders including ethylenediamine.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polyurethane having an amine value of 1-10 mg KOH/g, including a polyurethane made from a polyol having an amine value of 1-10 mg KOH/g in the two-component polyurethane adhesive of Nakamura in view of Allen in order to provide and adhesive with good storage stability and pigment dispersibility (Ogawa, [0016]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (WO 2018/058479 A1, “Nakamura”) in view of Allen et al. (US 2015/0344751 A1, “Allen”) and the evidence provided by Touchet et al. (Hierarchal structure-property relationships of segmented polyurethanes, “Touchet”) as applied to claim 1 above, and further in view of Shen (US 2019/0177536 A1).
With respect to claim 7, Nakamura in view of Allen does not disclose the use of a monofunctional alcohol (i.e., monool).
Shen teaches a polyurethane made from a two-component composition ([0060]). The polyurethane is made by reacting polyol ([0061-0062]), polyisocyanate ([0268-0271]), and monofunctional compounds including monofunctional alcohol (i.e., a monool) in order to control the molecular weight of the polyurethane ([0312]).
Nakamura in view of Allen and Shen are analogous inventions in the field of two-component polyurethane compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a monofunctional alcohol as taught by Shen in the two-component polyurethane composition of Nakamura in view of Allen in order to provide a polyurethane with desired molecular weight (Shen, [0312]).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (WO 2018/058479 A1, “Nakamura”) in view of Allen et al. (US 2015/0344751 A1, “Allen”) and the evidence provided by Touchet et al. (Hierarchal structure-property relationships of segmented polyurethanes, “Touchet”) as applied to claims 1 and 13 above, and further in view of Ikeda (JP 2001-164229 A) and the evidence provided by TCI (Polyoxypropylenediamine). The disclosure of Ikeda is based off a machine translation of the reference included with the IDS filed 06 September 2024.
With respect to claims 14-15, while Nakamura in view of Allen discloses a two-component solventless adhesive composition made from a chain extender includes ethylenediamine as set forth above, Nakamura in view of Allen does not disclose wherein the amine compound is polyether polyamine, nor wherein the amine compound is selected from the group consisting of poly(propylene glycol)diamine, poly(propylene glycol)triamine, and poly(propylene glycol)tetraamine.
Ikeda teaches a solventless adhesive composition ([0004]) made from a first polyol component and a second polyisocyanate component ([0005]). The polyol component includes low molecular weight polyamines in order to adjust the molecular weight of the polyurethane polyisocyanate and the distribution of the hard and soft segments ([0016]); the low molecular weight polyamines include ethylenediamine and polyoxypropylenediamine ([0018]). As evidenced by TCI, polyoxypropylenediamine is poly(propylene glycol) diamine as claimed (pages 1-2).
Nakamura in view of Allen and Ikeda are analogous inventions in the field of solventless two-component adhesives made from ethylenediamine.
In light of the disclosure of the equivalence and interchangeability of ethylenediamine and polyoxypropylenediamine (i.e., poly(propylene glycol)diamine) as disclosed by Ikeda, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use polyoxypropylenediamine (i.e., poly(propylene glycol)diamine) in place of ethylenediamine in Nakamura in view of Allen in order to adjust the molecular weight of the polyurethane and the distribution of the hard and soft segments (Ikeda, [0016]).
Response to Arguments
Due to the amendment to claim 3, the objection to claim 3 is withdrawn.
Due to the cancellation of claim 6, the 35 U.S.C. 112(b) rejection of claim 6 is withdrawn.
Due to the cancellation of claims 2, 4, and 6, the 35 U.S.C. 102(a)(1) rejections of claims 4 and 6 are withdrawn.
Due to the cancellation of claims 2 and 5, the 35 U.S.C. 103 rejections of claims 2 and 5 are withdrawn.
Applicant’s arguments filed 20 January 2026 have been fully considered, but they are not persuasive.
Regarding the rejections using Nakamura as a primary reference, Applicant argues Nakamura fails to disclose the invention of amended claim 1. Applicant further argues Nakamura’s tertiary amine compound (B) does not read on the claimed amine compound (C2) having an amino group that is an NH2 or NHR group, and that the secondary references Allen, Touchet, and Shen do not remedy the deficiencies of Nakamura. The examiner respectfully disagrees.
In response to Applicant’s arguments, it is acknowledged that Nakamura does not anticipate the present claims. However, the anticipation rejections (i.e., the 35 U.S.C. 102 rejections) have been withdrawn, and new obviousness rejections (i.e., 35 U.S.C. 103 rejections) have been made. As set forth above, the examiner acknowledges the tertiary amine compound of Nakamura does not read on the claimed amine compound (C2) having an amino group that is an NH2 or NHR group; however, Nakamura is not being used to meet this limitation. Instead, Allen is used. Allen teaches a two-part polyurethane adhesive, where the polyurethane is made by reacting a polyol and a polyisocyanate ([0058], [0066], [0259]). Small molecules reactive towards the polyisocyanate are included as chain extenders ([0264]). The small molecules include polyamines, such as ethylene diamine ([0266]); as seen in the structure below, ethylene diamine is an amine compound containing an amino (–NH2) group. It is well known, as evidenced by Touchet, that chain extenders increase polyurethane molecular weight and increase the block length of the hard segment, and that diamine chain extenders increase modulus and tensile strength while decreasing elongation (Touchet, page 9, 1.4.2 Chain extenders). Nakamura and Allen are analogous inventions in the field of two-part polyurethane adhesives made by reacting a polyol component and a polyisocyanate component and polyamines. Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an ethylene diamine chain extender in the two-component polyurethane adhesive of Nakamura in order to provide an adhesive with desired molecular weight, hardness, modulus, tensile strength, and elongation (Touchet, page 9, 1.4.2 Chain extenders).
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Regarding the rejections using Noda as the primary reference, Applicant argues the action mailed 21 October 2025 appears to equate: the polyurethane resin (E) to the claimed polyol (B); the polyisocyanate (F) to the claimed polyisocyanate compound (A); and the amine chain extender to the claimed amine compound (C), and that the polyisocyanate (F) and chain extender are used only as starting materials to produce the polyurethane resin (E), which Applicant contends is equated to the claimed polyol (B), and that the polyisocyanate (F) and chain extender are consumed in the reactions to be part of the polyurethane resin (E) and no longer exist as diamines in the resulting adhesive composition. Applicant further argues Ogawa’s ethylenediamine chain extender does not remain in the product after the urethanization reaction, such that the combination of references do not read on the amended claim 1. The examiner respectfully disagrees.
In response to Applicant’s arguments, it is unclear why Applicant argues the action mailed 21 October 2025 equated the polyurethane resin (E) to the claimed polyol (B), the polyisocyanate (F) to the claimed polyisocyanate compound (A), and the amine chain extender to the claimed amine compound (C). As set forth in both the action mailed 21 October 2025 and above, Noda discloses a two component solventless adhesive ([0001], [0048]). The adhesive comprises a polyurethane resin ([0009]). The polyurethane is made by reacting (i.e., is cured by reacting) polyol with polyisocyanate and a chain extender ([0026-0027]). The polyol of [0027-0028] corresponds to the claimed polyol (B). Similarly, the polyisocyanate (F) of [0026-0028] corresponds to the claimed polyisocyanate compound (A). The chain extender corresponds to the claimed amine compound (C). Noda does not disclose the viscosity of the polyol at 50°C being 20-180 mPa·s. However, Noda discloses the use of low molecular weight polyols ([0028]) including polypropylene glycol having a molecular weight of 1,000 or 2,000 ([0061]). Given that Noda discloses using the same polyether polyol with the same molecular weight as the polyol in the present invention (instant specification, page 27, lines 21-24), the polyol would necessarily inherently have the same viscosity at 50°C as presently claimed. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the types and amounts of polyols to produce an adhesive with a desired viscosity, including values presently claimed, so that the adhesive has the desired pigment dispersion and workability ([0047]). Noda further discloses the chain extender includes ethylenediamine ([0034]), which is an amine compound having an amino (–NH2) group. Further, while the components of Noda and Ogawa may be consumed by the urethanization reaction, given that they exist before the reaction (i.e., are intermediate products before a final product), they read on the presently claimed invention.
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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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
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