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
Applicant' s claim amendments and remarks filed December 3, 2025 are entered and have been fully considered. Applicant has amended claims 2, 3, and 6 to overcome the 112 rejections and has amended claims 3 and 16 to overcome the objections, therefore they are withdrawn.
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 1-6, 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yao, Hong US20180305597A1.
Regarding claims 1-4, 6 Yao teaches a polyurethane adhesive comprising a reaction product of at least one polyether polyol and at least one polyisocyanate, abstract. The polyether polyols preferably comprise a bifunctional and a trifunctional polyether polyol, ¶¶[0014,0031], and are polyoxyethylene diols and/or triols and/or polyoxypropylene diols and/or triols ¶[0027].
The polyisocyanate(s) are selected from aromatic polyisocyanates including toluene diisocyanate (TDI) and methylene diphenyl diisocyanate (MDI) ¶[0056]. The polyisocyanates comprise 2-20 wt.% of the total adhesive composition, ¶[0060]. Yao does not explicitly state combining two polyisocyanates in the prepolymer, but the language of “at least one” suggests that more than one polyisocyanate can be used at any point in the adhesive composition.
Yao teaches that some of the polyols can react with some of the polyisocyanates separately as prepolymers, the polyols can be separated into different prepolymers, and more than one prepolymer can be then mixed together for the polyurethane adhesive, ¶¶[0059, 0086-0091], also see table 9 for composition C-3 where Yao blends three pre-made polyurethane prepolymers where the polyether diols and/or triols are reacted with an aromatic polyisocyanate, which reads on claim 4.
The amount of the at least one polyether diol is in an amount of 0.25-15 wt.% and the at least one polyether triol in an amount of 5-35 wt.%, based on the total weight of the adhesive composition, where the total polyether polyol is 5-50 wt.% of the composition, ¶¶[0030-0032], which means the ratio of triol to diol is 0.33/1 minimum (calculated from 5/15) and 140/1 maximum (calculated from 35/0.25). This range encompasses the claimed weight ratio of claim 1.
Yao also teaches adding at least one filler to the adhesive composition, which preferably comprises carbon black, ¶[0067, 0069]. The total amount of filler is 10-70 wt.% based on the overall adhesive composition, ¶[0070], which encompasses the claimed range of carbon black for instant claim 1 and the total filler amount of instant claim 6. Furthermore, Yao exemplifies 17.42 wt.% of carbon black in example C-3, table 9, page 10, which falls within the claimed range of carbon black.
Yao does not state the exact weight range for the total prepolymers in the adhesive composition, but with the disclosure of total amounts of polyether polyol and polyisocyanates stated above, the prepolymer formed therefrom can comprise 7-70 wt.% of the total adhesive composition, encompassing the claimed range of instant claim 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select carbon black from the list of fillers and the mixture of polyether triols and diols for the polyurethane adhesive because Yao teaches the carbon black is a preferred filler and the polyether triols and diols are the preferred polyol combination for a polyurethane adhesive with high green strength. Furthermore, it would have been obvious to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 5, Yao teaches the free isocyanate content is between 0.8-3.5%, ¶[0059], which encompasses the claimed range.
Regarding claim 8, Yao teaches the molecular weight for the polyoxyethylene and polyoxypropylene diols and triols is in the range of 400-8,000 g/mol ¶[0027], which encompasses the claimed ranges.
Regarding claim 9, Yao teaches the composition further comprises a catalyst, ¶[0061], a plasticizer ¶[0076], stabilizers, pigments, and adhesion promoters, ¶[0077].
Regarding claim 10, Yao does not teach adding a polyaldimine to the composition, and therefore it is 0 wt.%, satisfying the limitation of the claim.
Regarding claims 11-15, Yao teaches a cured polyurethane composition, ¶[0126], where the composition is used as an adhesive for glass, metal, or ceramic substrates, ¶[0097], and is suitable for the windows of buildings and vehicles, ¶[0098].
Yao teaches a bonding method comprising applying the adhesive to a substrate S1, contacting the adhesive with a substrate S2, and crosslinking the adhesive with moisture, ¶¶[0100-0103]. The substrates S1 and S2 are the same or different, ¶[0104], and can be glass, concrete, plastic or metal, ¶[0116].
Regarding claim 16, the claim is directed to an intended use of the carbon black and does not state a quantifiable measurement related to the blistering and matte finish of the composition. In the instant specification, the tests for these effects are observational, subjective, and not measured analytically. Yao teaches similar adhesive compositions with similar ingredients, ratios, and the necessary amount of carbon black and filler. The adhesive is also for the same end use as applicant’s adhesive, therefore it is reasonably suggested, when tested appropriately, the adhesive composition of Yao must have the properties of instant claim 16.
Regarding claim 17, Yao teaches in the examples that prepolymer 1 PR1 of table 1, page 9 comprises polyether diol, and PR2 of table 6, page 10, comprises polyether triol and a polyether diol, and PR3 of table 7, page 10, comprises a polyether triol. Then in table 9, example C-3, which is a composition, comprises the three prepolymers which contain the polyether polyols that are only polyether diols and polyether triols.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yao, Hong US20180305597A1 in view of Schaetzle et al US20040176522A1.
Regarding claim 7, Yao teaches the claimed invention according to claim 1 as explained above. Yao further teaches including a (meth)acrylosilane, ¶[0077], and such compounds are known to be photo-curable. Yao also teaches adding stabilizers such as UV stabilizers, ¶[0077], but does not go into further detail about the specific types.
Yao does not teach adding a hindered amine light stabilizer.
Schaetzle discloses a high strength adhesive/sealant comprising high percentages of carbon black for automobile construction, abstract. The adhesive comprises a polyurethane prepolymer ¶[0027] which is made from di and/or trifunctional polypropylene glycols ¶[0028] and aromatic polyisocyanates such as TDI and MDI, ¶[0033]. Schaetzle also adds stabilizers such as UV stabilizers, exemplifying hindered amine light stabilizers, HALS, ¶[0038].
Yao and Schaetzle are analogous to the claimed invention because both are in the field of polyurethane adhesives for automobile construction.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Yao adding in the hindered amine light stabilizer with the motivation of creating a polyurethane adhesive for automobile construction with resistance to UV degradation.
Response to Arguments
Applicant’s arguments, see pages 1-2, filed 12/3/2025, with respect to claim 4 have been fully considered and are persuasive. The 112d rejection of claim 4 has been withdrawn.
Applicant's arguments filed 12/3/2025 regarding the 10 have been fully considered but they are not persuasive.
In response to applicant’s argument that the office has made no finding regarding the features of claim 1 that applicant has emphasized in the remarks, examiner points to Yao’s teaching that the polyether polyol PO comprises both a bifunctional polyether polyol PO1 and a trifunctional polyether polyol PO2, ¶¶[0014, 0031], and the amount of the at least one polyether diol is 0.25-15 wt.% and the at least one polyether triol is 5-35 wt.%, which means the ratio of triol to diol is 0.33/1 minimum (calculated from 5/15) and 140/1 maximum (calculated from 35/0.25). This range encompasses the claimed weight ratio of claim 1. Yao also teaches adding at least one filler to the adhesive composition, which preferably comprises carbon black, ¶[0067, 0069]. The total amount of filler is 10-70 wt.% based on the overall adhesive composition, ¶[0070], which encompasses the claimed range of carbon black for instant claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Furthermore, Yao exemplifies embodiments where multiple prepolymers are blended together, where the prepolymers are separately comprised of a polyether diol and polyether triol, PR1 of table 1, PR3 table 7, and a prepolymer with both, PR2 table 6. The embodiment of adhesive C-3, table 9, blends all three prepolymers together, and has 17.42 parts (also equal to 17.42%) of carbon black. The total of the prepolymer amount for this example is 51.28%, just outside of the claimed range of 20-50 wt.%, which is one reason this example does not anticipate the claim; a second reason is only one aromatic polyisocyanate is utilized in the examples for all the prepolymers, MDI. The ratio of triol to diol for example C-3 falls within the claimed range, with a ratio of 8/1. This is calculated from the composition of each prepolymer, where PR1 has 18% polyether diol, PR2 has 64.28% polyether triol and 23.772% polyether diol, PR3 has 67.276% polyether triol. Then using the number of parts for each prepolymer given in table 9, the total polyether triol in C-3 is 27.564% and the total polyether diol is 3.447%, therefore 27.564/3.447 = 8. So Yao in fact teaches the emphasized features of claim 1, but does not have an embodiment that utilizes two different aromatic polyisocyanates to anticipate all of claim 1.
In response to applicant’s argument that Yao does not recognize the significance of the features, of claim 1, particularly feature A, examiner reminds applicant that prior art is not required to recognize or emphasize the significance of claims, as long as the prior art teaches, discloses, or suggests the claimed features as written, then the prior art either anticipates or renders obvious those features. Additionally, prior art is not required to have an embodiment for every disclosed variation in a composition, a reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Applicant's argument of unexpected results is unpersuasive and insufficient. Unexpected results must be commensurate in scope with the claims. Claim 1 is directed to a triol:diol ratio range of 4:1 to 13:1, which is broader than the ratios given in the examples. The examples are also directed to specific diols and triols, while the claim is directed to generic polyether diols and polyether triols. The total polyurethane prepolymer amount claimed in claim 1 is also broader than the total prepolymer amount used in the examples. Examiner questions the reliance on the comparative example, Ref. 1, where the ratio of triol: diol is so far above the claimed upper limit that it is unclear how it illustrates the importance of the claimed range for a composition that requires both diol and triol. There is not a comparative example with both diol and triol that is above the claimed 13:1 ratio to support the unexpected results of the claimed upper limit.
Examiner also notes that Ref. 2, which has the lower 3:1 triol to diol ratio, produced the same outdoor test results, good matte effect, and no blistering, but is outside the claimed triol:diol ratio. The one property that worsened for Ref. 2 is the tensile strength at 1.66 MPa, but it is not unexpected to have a decrease in tensile strength as the crosslink density is also decreased.
Examiner notes that claim 1 is directed to a broader range of carbon black than is exemplified in the inventive examples. Examiner also points to comparative example Ref. 5, which has just below the 12.5% carbon black amount, and is the only comparative example that showed blistering in table 2. It is unclear if the lower amount of carbon black caused the blistering of Ref. 5 or if it was due to something else because the result of Ref. 4, which has a much lower amount of carbon black at 3%, did not produce a blistering result; therefore examiner questions how much the carbon black alone actually affects the blistering result, as mentioned in claim 16. Ref. 4 also has a curing agent that is not used in the other trials, and raises the question of what deviating aspect of this example is responsible for the higher VOC amount. Additionally, Ref. 6, which has carbon black above the claimed range but performed similarly to the inventive examples, especially in the outdoor tests, the blistering test, the matte effect, and the VOC amount.
Examiner acknowledges that the inventive examples 1 and 2 produce the intended results of applicant’s invention, but the claim of unexpected results is not convincing nor commensurate in scope with the claims.
For the reason given above, the 103 rejections over Yao and Yao in view of Schaetzle are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765