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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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.
Claim(s) 1-4, 6-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietmar et al (WO 2019156737 A1).
Regarding claims 1-4, 6-20, Dietmar teaches a polyurethane adhesive composition comprising (a) one or more urethane prepolymers having isocyanate moieties; (b) a catalytic amount of one or more catalysts; (c) one or more forms of carbon black; (d) one or more calcium carbonates; and (e) one or more silane adhesion promoters [abstract]. The polyurethane adhesive composition can be formed by blending the components together [0055]. Therefore, the adhesive composition is a one-component composition.
The (a) one or more urethane prepolymers having isocyanate moieties is obtained by reacting an isocyanate-reactive compound with a polyisocyanate [0016]. The isocyanate-reactive compound includes polyether polyols such as polyethylene oxide diol and polypropylene oxide diol; and polyester polyols such as DYNACOL 7381 [0023, 0065]; the total amount of the prepolymer is 20-85 wt% [0030]. The polyisocyanate includes MDI [0019].
The examiner submits that the prepolymer made by reacting polyethylene oxide diol or polypropylene oxide diol with MDI reads on the claimed (A) specified in claims 2-4.
As evidenced by Evonik (Evonik “DYNACOL”), DYNACOL 7381 is a linear copolyester-polyol with primary hydrocyl functionality having molecular weight of 3500 and melting point of 65 °C [P5 and P7], reading on the claimed copolyester specified in claims 6-7.
Dietmar teaches adhesive composition examples containing 1.2 wt% of Prepolymer 2 with is an Isocyanate Functional Polyester Prepolymer made from DYNACOL 7381 [0064-0065, Table 2]. The amount of 1.2 wt% meets the claimed total content of (B) polyester prepolymer of 1.2-2.0 wt %.
Since Dietmar teaches the total amount of the prepolymer is 20-85 wt% [0030], the amount of (A) prepolymer made by reacting polyethylene oxide diol or polypropylene oxide diol with MDI should be about 20-85 wt% minus 1.2-2.0 wt%, or about 18-84 wt%, which overlaps the claimed total content of polyether prepolymer of 50-57 wt %. A prima facie case of obviousness exists where the claimed ranges overlap or are merely close to ranges disclosed by the prior art (MPEP 2144.05.I).
Dietmar’s composition comprises Desmodure N3300 which is a hexamethylene diisocyanate trimer having an NCO content: 21.8 + 0.3% [0072], reading on the claimed (C) aliphatic polyisocyanate as specified in claims 8 and 9. Its amount of 0.5 wt% and 0.8 wt% in the examples [Table 2] falls within the claimed total aliphatic polyisocyanate content of 0.4-1.2 wt %.
Dietmar’s composition comprises VORANATE M600 which is a polymeric MDI (polymeric methylene diphenyl diisocyanate) having an isocyanate content of 30.2 - 31.1 [0018, 0020, 0073], reading on the claimed (D) aromatic polyisocyanate as specified in claims 10-11. Its amount of 0.6 wt% in the examples [Table 2] falls within the claimed total aromatic polyisocyanate content of 0.4-1.2 wt %.
Dietmar’s composition comprises alkoxysilane adhesion promoters which react with isocyanate moieties [0040]. The alkoxysilane adhesion promoters include SILQUEST A1170 which is bis-(trimethoxysilylpropyl)amine [0043, 0075]. The isocyanate moieties include hexamethylene diisocyanate (HDI) biuret [0019]. Thus, the reaction product of SILQUEST A1170 with HDI biuret reads on the claimed (E) isocyanate functionalized silane as specified in claims 12-14. Dietmar’s examples contain 0.8 wt% and 0.4 wt% of SILQUEST A1170 [Table 2]. Thus, the reaction product of SILQUEST A1170 and HDI would be about 0.6-1.2 wt%, meeting the claimed total isocyanate functionalized silane content of 0.4-1.5 wt %.
Dietmar’s composition comprises catalyst DMDEE which is 2,2’-dimorpholinodiethyl ether [0032, 0077], which reads on the claimed (F) amine catalyst specified in claims 15-17. Its amount of 0.01-2.0 wt% [0032] overlaps the claimed 0.50-0.99 wt %.
Dietmar’s composition comprises SILQUEST A 189 is gamma- mercaptopropyltrimethoxysilane [0074], which reads on the claimed (G) mercaptosilane specified in claims 18-20. It’s amount of 0.8 wt% [Table 2] meets the claimed total mercaptosilane content of <1.2 wt %.
Dietmar’s composition comprises carbon black [0015], reading on the claimed (H) carbon black. Its amount of 10-35 wt% [0036] overlaps the claimed 17-20 wt%.
Dietmar’s composition comprises calcium carbonate [0015], reading on the claimed (I) calcium carbonate. Its amount of 5-25 wt% [0038] meets the claimed 3-30 wt %.
Dietmar’s 0.8 wt% of Desmodure N3300 plus 0.6 wt% of VORANATE M600 results in 1.4 wt% of total polyisocyanate content, meeting the claimed 1.2 to 3 wt %.
Dietmar’s composition does not contain clay. Dietmar’s 5-25 wt% of calcium carbonate overlaps the claimed total of calcium carbonate plus clay is 20-30 wt %.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietmar as applied to claim 1 above, further in view of Sophiea et al (US 20190225736 A1). Dow (“polyurethane Components for coating, adhesive, sealant and elastomer (CASE) Applications”) is cited as evidentiary reference.
Regarding claim 5, Dietmar teaches the composition in claim 1. The isocyanate-reactive compound includes polyether polyols that may contain branched chain alkylene units and can have trios [0023]. Dietmar does not specifically teach a nominally trifunctional poly(propylene oxide) having a hydroxyl number of 36 (equivalent weight 1558) and a nominally trifunctional poly(propylene oxide) having a hydroxyl number of 56 (equivalent weight 1000).
In the same field of endeavor, Sophiea teaches a polyurethane adhesive composition comprising isocyanate terminated prepolymers made from polyether polyol triols [0029]. The trios include VORANOL 232-036N (propylene glycol initiated polyoxypropylene with Hydroxyl Equivalent Weight (HEW) of 1558) [Table 1] and VORANOL 230-056 (glycerine-initiated homopolymer polyether triol) [0033]. As evidenced by Dow, VORANOL 230-056 is a hydroxyl equivalent weight of 1000 [P4 “Polyether Triols”].
It would have been obvious to one of ordinary skill in the art at the time of filing to select VORANOL 232-036N and VORANOL 230-056 as the isocyanate-reactive compound in Dietmar’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
VORANOL 232-036N reads on the claimed nominally trifunctional poly(propylene oxide) having a hydroxyl number of 36 (equivalent weight 1558); VORANOL 230-056 reads on the claimed nominally trifunctional poly(propylene oxide) having a hydroxyl number of 56 (equivalent weight 1000).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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