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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 11/5/2025.
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 11/5/2025. In particular, claim 1 has been amended to limit the polyester polyol with an enthalpy of fusion of 3 J/g, and claim 18 is new. This combination of limitations was not present in the original claims. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
Claims 1-3, 6-11, 17, and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, the enthalpy of fusion of the polyester polyol of 3 J/g does not specify under which conditions the measurement is made. If the same as for the polyurethane of part a, such should be made clear.
With respect to claims 2, 3, 6-11, 17, and 18, they are rejected for failing to cure the deficiency of the claim from which they depend.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-11, 17, and 18 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 or the polyester diol, (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 teaches that the polyurethane resin is preferably derived from high molecular weight polyester polyols having molecular weight of 500-5000 (col. 8, lines 1-7) such as polybutylene adipate diol and other adipate diols (col. 7, lines 60-64), e.g., neopentyl adipate diol having molecular weight of 2000 is used to prepare polyurethane (B-3) (col. 15, line 58 to col. 17, line 5). These polyester diols based on adipic acid and having molecular weight of about 2000 are like those used by Applicant in the examples of the specification as originally filed and would be expected to have about the same enthalpy of fusion of at least 3 J/g. Regarding the enthalpy of fusion of the polyurethane, 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 for the polyurethane and the polyester diol.
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).
With respect to claim 18, Mitsuji does not require the addition of an emulsifier having a carboxylic acid group.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Mitsuji does not fairly disclose a polyurethane or a polyester polyol used to prepare the polyurethane has an enthalpy of fusion at least 3 J/g.
Mitsuji teaches that the polyurethane resin is preferably derived from high molecular weight polyester polyols having molecular weight of 500-5000 (col. 8, lines 1-7) such as polybutylene adipate diol and other adipate diols (col. 7, lines 60-64), e.g., neopentyl adipate diol having molecular weight of 2000 is used to prepare polyurethane (B-3) (col. 15, line 58 to col. 17, line 5). These polyester diols based on adipic acid and having molecular weight of about 2000 are like those used by Applicant in the examples of the specification as originally filed and would be expected to have about the same enthalpy of fusion of at least 3 J/g. Regarding the enthalpy of fusion of the polyurethane, 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 for the polyurethane and the polyester diol.
Applicant argues that Mitsuji includes an extremely broad disclosure that one of ordinary skill could not be fairly directed to the claimed anionic aqueous polyurethane dispersion.
Mitsuji exemplifies a polyurethane derived from polyester diol and aminoethylethanolamine (i.e., hydroxyl-bearing diamine). It is the examiner’s position that the broad disclosure Mitsuji is significantly narrowed in view of the examples as cited and discussed in the rejection above.
Applicant argues that Mr. Mayo’s 132 declaration filed on 11/5/2025 that the instant claims are not suggested by Mitsuji because Mitsuji desires a transparent or bright and sparkly visual appearance.
Mitsuji desires a transparent or bright and sparkly visual appearance and yet also discloses a polyurethane derived from claimed polyester diol and hydroxyldiamine. Therefore, Mitsuji’s preferred polyurethane allows for some crystallinity.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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