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 § 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.
Claims 1-13, 15-19, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Golombowski (WO 2019/156737 A1, hereinafter referring to US 2021/0071054 A1 as the United States equivalent). Dynacol (Dynacol product range pp. 1-13) is cited as an evidentiary reference.
Regarding claim 1, Golombowski teaches a polyurethane adhesive composition (Abstract), and teaches example inventive formulations including 1.20 wt% of a polyester prepolymer and 57.36, 58.75, 58.85, and 59.15 wt% of a polyether prepolymer (c.f. p. 8, Table 2, [0065]-[0068], and [0088]). In each case, the amounts of the respective prepolymers fall within the claimed ranges of “30-75 wt%” and “0.5-2.0 wt%.”
The aforementioned exemplified formulations of Golombowski further incorporate between 0.5 and 0.8 wt% of an aliphatic polyisocyanate (Desmodur N3300, c.f. p. 8, Table 2 and [0075]) and 0.6 wt% of an aromatic polyisocyanate (Voranate M600, c.f. p. 8 Table 2 and [0076]). In each case, these amounts fall within their respectively claimed ranges of “0.5-3.0 wt%” and “0.2-2.0 wt%,” establishing prima facie cases of obviousness. Combined, these amounts comprise between 1.1 and 1.4 wt% of the formulation, which falls within the claimed “total polyisocyanate content” range of “105 wt%,” establishing a prima facie case of obviousness.
Golombowski further teaches the incorporation of an isocyanate-functionalized silane (e.g., Example 4 of Table 2, p. 8, Silquest A-Link 35, also see [0046]) at 0.8 wt% of the formulation, which falls within the claimed range of “0.2-3.0 wt%,” establishing a prima facie case of obviousness. Golombowski teaches a preferred class of isocyanate-functionalized silanes, operating as adhesion promoters, which result from the reaction of isocyanates with alkoxysilanes ([0042]), including mercaptosilanes ([0043]-[0044]), with structures which read on the claimed structures because they are identical to the claimed structures when W is a mercapto group, R is a hydrocarbon group, R4 is a C1-C20 alkyl group, X is a hydrolysable alkoxy group, and b is 2, or 1. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06); therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute one of the aforementioned preferred isocyanate-functional silanes in place of Silquest A-Link 35, as Golombowski additionally teaches it as a preferred adhesion promoting isocyanate-functionalized silane.
Golombowski further exemplifies the incorporation of an amine catalyst (Examples 1-5 of Table 2, p.8, DMDEE, also see [0080]) at 0.4 wt% of the formulation, which falls within the claimed range of “0.1-0.6 wt%,” establishing a prima facie case of obviousness.
Golombowski further exemplifies the incorporation of a mercapto silane and/or an aminosilane (Examples 1-3 and 5 and Examples 1-2 and 5, respectively, Table 2, P. 8, Silquest A189 and Silquest 1170, also see [0077] and [0078]) at 0.8-0.99 wt% and 0.11-0.8 wt%, respectively, all of which fall within the respectively claimed ranges of “0-1.5 wt%,” establishing prima facie cases of obviousness. Furthermore, Examples 1-2 and 5 all include a combined total of 1.2 or 1.1 wt% of these two components, which falls within the claimed range of “at least 0.5 wt%,” establishing a prima facie case of obviousness. Golombowski further teaches experimental examples containing, for example, Silquest A189 at a concentration of 0.8% and Silquest 1170 at 0% (c.f. p. 8, Table 2, Example 3). These amounts fall within the claimed ranges of “0-1.5 wt%,” establishing prima facie cases of obviousness.” Compositions which are devoid of either product meet the claimed compositional limitations because claim 1 recites that a compositional amount of 0% is suitable for the composition.
Golombowski teaches mercaptosilanes, aminosilanes, and isocyanatosilanes as equivalents ([0042]). It is prima facie obvious to select known materials based on their art recognized suitability for its intended use (see MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to select an isocyanate-functional silane and a mercaptosilane and/or an aminosilane in the same formulation or embodiment. It further would have been obvious to select the amounts of said components taught by Golombowski within the exemplified formulations, which collectively read on the claimed formulation.
Golombowski further exemplifies the incorporation of carbon black at 21 wt% (p. 8,Table 2, Examples 1-5, Printex 30, also see [0071]), which falls within the claimed range of “10-35 wt%,” establishing a prima facie case of obviousness.
Golombowski further exemplifies the incorporation of calcium carbonate at 14 wt% (p. 8,Table 2, Examples 1-5, Carbital 120, also see [0073]), which falls within the claimed range of “0-20 wt%,” establishing a prima facie case of obviousness.
Golombowski further exemplifies the incorporation of pyrogenic silica (p. 8, Table 2, Examples 1-4, Aerosil 208, also see [0070]) at 0.8 wt% of the formulation, which falls within the claimed range of “0-20 wt%,” establishing a prima facie case of obviousness. Furthermore, the combined amounts of calcium carbonate and silica (which reads on the claimed “filler”) within these exemplifies formulations total to 14.8 wt%, which falls within the claimed combined range of “0-20 wt%,” establishing a prima facie case of obviousness.
Golombowski further exemplifies the incorporation of a dimethyl-tin-dilaurate catalyst (p. 8, Table 2, Examples 1-5, UL 28, also see [0081]), which reads on the claimed “organometallic catalyst” (c.f. instant Specification at p. 16, lines 15-27, which states that organotin catalysts are suitable).
Regarding claims 2 and 3, Golombowski teaches the formation of prepolymers by reacting (optionally) polyether polyols with polyisocyanates (c.f. [0017] and [0023]).
Regarding claim 4, Golombowski specifically teaches that the polyether polyol may be formed from, inter alia, propylene oxide ([0023]), which forms a poly(propylene oxide) diol
Regarding claim 5, as described above, Golombowski specifically teaches that the polyether polyol may be formed from, inter alia, propylene oxide ([0023]), which forms a poly(propylene oxide) diol. Furthermore, Golombowski teaches that the diisocyanate may be inter alia MDI and TDI ([0019]).
Regarding claim 6, Golombowski teaches that the isocyanate-reactive compound (which may be polyether polyols as described above) may have equivalent weights ranging from 200 to 2,500 ([0024]), which includes the claimed values. Furthermore, Golombowski exemplifies the formation of a prepolymer containing a polyoxypropylene diol, a polyoxypropylene triol, and MDI ([0065]).
Regarding claim 7¸ Golombowski exemplifies the formation of a polyester prepolymer using Dynacol 7381 ([0068]), which reads on the claimed limitations because Dynacol 7381 is a copolyester with primary hydroxy functionality (c.f. Dynacol p. 6). Furthermore, Golombowski teaches the reaction of Dynacol 7380 with diphenylmethane 4,4’-diisocyanate ([0068]), which is a diisocyanate.
Regarding claim 8, as described above, Golombowski teaches that the diisocyanates used in the prepolymers may be inter alia MDI and TDI ([0019]).
Regarding claim 9, as described above, Golombowski teaches the use of MDI within the inventive prepolymers. Furthermore, Golombowski teaches that the isocyanate-reactive compounds have functionalities ranging from 1.5 to 4.0, and have equivalent weights ranging from 200 to 5,000 ([0024]). Therefore, the molecular weights of the isocyanate-reactive compounds (including polyester polyols) ranges from about 300 to 20,000 g/mol, which encompasses the claimed value of “3,500 Da,” establishing a prima facie case of obviousness.
Regarding claims 10 and 11, Golombowski exemplifies the incorporation of trimerized hexamethylene diisocyanate ([0075]), which reads on the isocyanurate-modified MDI from the claimed list.
Regarding claims 12 and 13, Golombowski exemplifies the incorporation of polymeric MDI ([0076]), which reads on PDMI and polymethylene polyphenylisocyanate.
Regarding claim 15, Golombowski specifies the use of N,N-bis [(3-triethoxysilyl)propyl]amine ([0045]) and also teaches the use of isocyanates including biurets and HMDI ([0019]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize an isocyanate functionalized silane produced from the claimed starting materials.
Regarding claims 16-18, as described above, Golombowski exemplifies the incorporation of 2,2’-dimoropholinodiethylether (DMDEE, [0080]), which is a tertiary amine catalyst.
Regarding claim 19, as described above, Golombowski exemplifies the incorporation of gamma-mercaptopropyltrimethoxysilane (SILQUEST A189, [0077]), which reads on the claimed structure because it is identical to the claimed structure when R1-R3 are methoxy groups and R4 is an alkylene group wherein n is 3.
Regarding claim 51, the limitations of claim 51 represent a combination of the compositional limitations of claims 1, 6, 9, 11, 13, 15, 18, and 19, alongside a requirement that the claimed mercaptosilane is gamma-mercaptopropyltrimethoxysilane and the aminosilane is bis(gamma-trimethoxysilylpropyl)amine. As described above in the rejections of the aforementioned claims, Golombowski teaches the incorporation of all of the components and compositional amounts required by claims 1, 6, 9, 11, 13, 15, 18, and 19 (and thus, claim 51). Furthermore, Golombowski exemplifies the use of gamma-mercaptopropyltrimethoxysilane and bis-(trimethoxysilylpropyl)amine (c.f. [0077] and [0078]). Golombowski therefore meets all of the compositional limitations required by claim 51.
Response to Arguments
Applicant’s arguments, see applicant’s remarks, filed January 1, 2026, with respect to 35 USC 112(b) have been fully considered and are persuasive. The 35 USC 112(b) rejection of claims 2, 7, and 14 have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that Golombowski fails to disclose a composition containing all three of an isocyanate-functionalized silane, a mercaptosilane, and an aminosilane. However, Golombowski does not teach away from the incorporation of multiple silanes (by contrast, at least one silane is required in claim 1 of Golombowski, implying that an unbounded number may be added therein), and Golombowski teaches the incorporation of each of the claimed components. It therefore would have been obvious to one having ordinary skill in the art to include all three silanes as claimed.
Furthermore, the presently amended claims do not require all three of the claimed silane components. This is because while the newly amended version of claim 1 has removed the word “or” (thereby intending to remove optionality from the claimed components), the compositional ranges of the mercapto- and amino-silanes remains inclusive to 0 wt% of each (c.f. the ranges of “0-1.5 wt%” for each component). The composition as claimed therefore does not require both components; one component may be included at 0 wt% which is functionally equivalent to not being included, so long as the other component is included in amounts of at least 0.5 wt% as required by the limitation which follows.
Applicant finally argues that Silquest A-Link 35 does not fall within the purview of the claimed isocyanate-functionalized silane “(E),” however as described above, Silquest A-Link 35 is merely one embodiment of silane adhesion promoter contemplated by Golombowski. Furthermore, the claimed isocyanate functionalized silanes are specifically indicated as being preferred (c.f. Golombowski at [0042]-[0043]). Even if the isocynate-functionalized silanes which read on the claimed components were not preferred within Golombowski, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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