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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/6/2025 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections are withdrawn in light of applicant’s amendment filed on 6/6/2025. New grounds over Mitsuji (US 5,227,422) are set forth below.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuji (US 5,227,422).
With respect to claims 1, 8, 11, and 17, Mitsuji discloses an aqueous coating composition comprising a resin for use in aqueous coating compositions, a urethane resin emulsion, and a crosslinking agent (abstract). While the “coating composition” is not explicitly an “adhesive composition,” the coating composition disclosed by Mitsuji is capable of being an adhesive composition because it adheres to a single substrate. The urethane resin emulsion is derived from preferred high molecular weight polyester polyols (col. 8, lines 1-5), 0.3-5 wt % carboxylic acid for introducing anionic hydrophilic groups (col. 8, lines 8-24), and 0.3-30 wt % chain lengthening agent such as N-hydroxyethylethylenediamine (same as aminoethylethanolamine) based on the high-molecular weight polyol (col. 8, lines 25-51)
Mitsuji fails to explicitly disclose (i) the enthalpy of fusion of the polyurethane, (ii) the hydroxyl content of anionic aqueous polyurethane dispersion of 0.001-0.08 wt % (or 0.01-0.03 wt % for claim 17), or (iii) the amount of high molecular weight polyester polyol of 70-94 wt % relative to a polyurethane system.
With respect to (i), Mitsuji fails to disclose the enthalpy of fusion of the polyurethane dispersion, however, enthalpy of fusion is dependent on crystallinity of the polyurethane. Because Mitsuji’s exemplified polyurethane (B-3) is derived from polyester diols (i.e., a crystalline polymer), it would have been obvious to one of ordinary skill in the art to expect or obtain an enthalpy of fusion of at least 3 J/g.
With respect to (ii), while Mitsuji does not explicitly disclose the hydroxyl content, it appears from the instant specification as originally filed in Table 1 PUD 4 hydroxyl content of 0.018 wt % is exclusively derived from aminoethylethanolamine and not from the diethanol amine (also exemplified by Mitsuji) because PUD2 includes diethanol amine but has no 0 wt % hydroxyl content. In Mitsuji’s Preparation Example 6 includes 990 parts of a urethane resin emulsion (B-3) and 7.9 parts by weight aminoethylethanolamine. This amount in the polyurethane emulsion is 0.7 wt % which is higher than the 0.06 wt % in Applicant’s PUD-4. Even so, Mitsuji teaches that there is a range of amounts of aminoethylethanolamine as chain lengthening agent, i.e., 0.3-30 wt % chain lengthening agent based on the high-molecular weight polyol (col. 8, lines 25-51). In Mitsuji’s Preparation Example 6, the amount of exemplified chain lengthening agent is about 6 wt % based on high-molecular weight polyol. Case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Because Mitsuji discloses suitably significantly and relatively lower amounts of chain lengthening agent, it would have been obvious to one of ordinary skill in the art to utilize less of the chain lengthening agent and thereby arrive at the presently claimed hydroxyl content derived from aminoethylethanolamine—absent a showing of unexpected or surprising results that are reasonably commensurate in scope with the scope of the claims.
With respect to (iii), Mitsuji discloses that the equivalent ratio of polyisocyanate to polyol is about 0.7-1.3 (col. 9, lines 3-7) and the polyol has a high molecular weight (e.g., 500-5000) (col. 8, lines 5-7). Because the conversion from moles to wt % provides for significantly higher amounts in wt % for polyester polyol given its high molecular weight per OH groups, it would have been obvious to one of ordinary skill in the art to utilize 70-94 wt % of polyester polyol in the system to prepare Mitsuji’s anionic polyurethane.
The resin other than polyurethane is preferably a water-dispersible acrylic resin include a monomer (M-2) that is a hydroxyl-containing vinyl monomer (col. 3, lines 35-58), e.g., (A-7) which is a 20 wt % solids aqueous acrylic dispersion of 100 parts by weight ethylenically unsaturated monomer which includes 5 parts by weight of hydroxypropyl methacrylate (128 g/mol) (col. 13, line 58 to col. 14, line 23), 5*(17 g/mol ÷ 128 g/mol)/100 × 20 wt % = 0.13 wt % hydroxyl content. While this calculated hydroxyl content is below claimed range of 0.5-1.8 wt %, Mitsuji discloses that a range of hydroxyl values are permitted including 20-200 (col. 2, lines 34-37). Therefore, it would have been obvious to one of ordinary skill in the art to utilize only a little additional hydroxyl-containing vinyl monomer to arrive at a relatively higher amount of hydroxyl content. Also, because the hydroxyl content is sensitive to solids content of the dispersion, one of ordinary skill in the art could readily adjust the amount of solids to a higher amount thus providing for higher hydroxyl group content.
Mitsuji teaches that the polyurethane dispersion to polyacrylic dispersion and crosslinking agent is 5/95 to 80/20 (col. 10, lines 59-68), which provides for an amount of polyurethane dispersion of 5-80 wt %. The polyacrylic dispersion and crosslinking agent are used in an amount of 95/5 to 60/40, which provides for an amount of polyacrylic dispersion of 12-90 wt %. These amounts overlap with the claimed range of 30-91 wt % and 9-70 wt %, respectively.
With respect to claim 2, Mitsuji discloses that the polyurethane resin has a particle size of 1-1000 nm (col. 9, lines 16-18).
With respect to claim 3, Mitsuji fails to disclose the molecular weight of the polyurethane.
Even so, molecular weight is readily controlled by one of ordinary skill in the art based on reaction time. Therefore, it would have been obvious to one of ordinary skill in the art to obtain a polyurethane having the claimed molecular weight of 190000-300000 g/mol. Also, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Should applicant argue criticality of molecular weight, it will be noted that applicant’s examples do not indicate or suggest a critical molecular weight. Such data has little to no probative value.
With respect to claim 6, Mitsuji exemplifies a polyurethane dispersion that includes about 0.8 wt % aminoethylethanolamine as a terminator (col. 15, line 58 to col. 16, line 5), which is outside the claimed range of 0.01-0.5 wt %. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Because Mitsuji discloses relatively lower amounts of chain lengthening agent than exemplified, it would have been obvious to one of ordinary skill in the art to utilize amounts than exemplified.
With respect to claim 7, Mitsuji teaches that the water-dispersible acrylic resin is crosslinked (col. 46-47), i.e., self-crosslinked.
With respect to claim 9, exemplified acrylic dispersion (A-7) has a Tg of 46°C (col. 14, lines 9-10) which does not overlap with claimed 50-80°C. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Given that Mitsuji discloses other suitable comonomers and further given that 46°C is close to claimed minimum 50°C, it would have been obvious to one of ordinary skill in the art to obtain an acrylic resin having a Tg within the claimed range.
With respect to claim 10, Mitsuji teaches that water-dispersible acrylic resin has particle size of 50-1000 nm (col. 3, lines 35-37).
Response to Arguments
Applicant's arguments filed 6/6/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Mitsuji does not disclose the claimed hydroxyl content of 0.001-0.085 wt % or (0.01-0.03 wt % of new claim 17).
While Mitsuji does not explicitly disclose the hydroxyl content, it appears from the instant specification as originally filed in Table 1 PUD 4 hydroxyl content of 0.018 wt % is exclusively derived from aminoethylethanolamine and not from the diethanol amine (also exemplified by Mitsuji) because PUD2 includes diethanol amine but has no 0 wt % hydroxyl content. In Mitsuji’s Preparation Example 6 includes 990 parts of a urethane resin emulsion (B-3) and 7.9 parts by weight aminoethylethanolamine. This amount in the polyurethane emulsion is 0.7 wt % which is higher than the 0.06 wt % in Applicant’s PUD-4. Even so, Mitsuji teaches that there is a range of amounts of aminoethylethanolamine as chain lengthening agent, i.e., 0.3-30 wt % chain lengthening agent based on the high-molecular weight polyol (col. 8, lines 25-51). In Mitsuji’s Preparation Example 6, the amount of exemplified chain lengthening agent is about 6 wt % based on high-molecular weight polyol. Case law holds that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Because Mitsuji discloses suitably significantly and relatively lower amounts of chain lengthening agent, it would have been obvious to one of ordinary skill in the art to utilize less of the chain lengthening agent and thereby arrive at the presently claimed hydroxyl content derived from aminoethylethanolamine—absent a showing of unexpected or surprising results that are reasonably commensurate in scope with the scope of the claims.
Conclusion
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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