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 .
Status of Claims
The examiner acknowledges the amendment to claim 1 and the cancellation of claims 5 and 13. Claims 1-4 and 6-12 are pending.
Claim Interpretation
The amendment to claim 1 introduces the limitation that the silane-containing polyol must be at least a diol. However, as this compound can be a component in an isocyanate compound, in this instance the limitation reads as a product-by-process claim where only the final compound determines the patentability. As such, any isocyanate in which the structure includes a segment which would read upon this component would meet the requirements. See MPEP 2113.I.
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 1-4 and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Laas (US 20110082273, US Patent Application reference #1 from IDS dated 5/30/2023).
Regarding Claim 1,
Laas teaches a high-functional polyisocyanate that contain silane groups (Abstract) which are comprised of at least one silane-group containing hydroxyamide (Paragraph 21), at least one polyol (Paragraph 22), and at least one diisocyanate (Paragraph 24) which is to be used in a two-part polyurethane composition (Paragraph 117) in which the high-functional polyisocyanates is combined with other polyols, which may be polyether or polyester polyols (Paragraph 117). While Laas does not explicitly use this composition as an adhesive, Laas notes that other compositions of this type including silane groups are used as adhesives (Paragraph 6). As such, it would have been obvious prior to the effective filing date of the instant application to have used compositions as described by Laas as adhesives.
Regarding the use of a silane containing polyol, Laas teaches that the silane are hydroxy functionalized (Paragraph 80) and further teaches that the groups attached to the silicon atom may be substituted with heteroatoms (Paragraph 59), which would result in such compounds containing more than one hydroxyl group. Additionally, Laas teaches that the polyols used in the formation of the isocyanate component can include trimethylolpropane (Paragraph 94), which would result in a structure that contains a polyol that also includes a silane group, meeting the requirements of the instant claim.
Regarding Claim 2,
Laas teaches that the compositions using the high-functional polyisocyanates that contains silane groups can be used without solvent (Paragraph 116).
Regarding Claim 3,
Laas teaches that compositions using the high-functional polyisocyanates that contains silane groups should have ratios of isocyanates to isocyanate reactive groups preferably between 0.8 and 1.6 to 1 (Paragraph 127), which is contained within the range of the instant claim.
Regarding Claim 4,
Laas teaches in example 1 (Paragraph 151) and 2 (Paragraph 152) that the silane-group containing polyol is used in an amount greater than the polyol and in both cases represents more than 0.05% by weight of the prepolymer (7.8% for example 1, 12.7% for example 2), meeting the requirement of the instant claim.
Regarding Claims 6-8,
Laas teaches that the silane containing compound be a reaction product of the following structure:
PNG
media_image1.png
130
312
media_image1.png
Greyscale
with a cyclic carbonate (Paragraph 77) in which the cyclic carbonate can be glycerol carbonate (Paragraph 78), which would result in a compound of the structure defined in claim 7 which contains two unreacted hydroxyl groups. Additionally, Laas particularly prefers the use of aminopropyl trimethoxy silane and aminopropyl triethoxysilane as well as variants which contain only two hydrolysable groups (Paragraph 76). In the case of aminopropyl trimethoxysilane, R1, R2, and R3 are methoxy, X is a 3 carbon chain, and R4 is hydrogen, which meets the requirements of the instant claims.
Regarding Claims 9-12,
While Laas does not explicitly use the high-functional polyisocyanate that contain silane groups in a composition as an adhesive, Laas does point to the use of such compositions as adhesives (Paragraph 6) and teaches that compositions containing the high-functional polyisocyanate that contain silane groups have good adhesion with a variety of substrates (Paragraph 129). It would necessarily follow that on the basis of this information, compositions as described by Laas would be useful as adhesives and it would therefore have been obvious prior to the effective filing date of the instant application to have used the composition as an adhesive. With regard to the method of Claim 10, adhesives would necessarily have to be applied to the substrate in order to bond two substrates together and in the case of a two component adhesive, the adhesive would have to be mixed prior to application. As Laas teaches that the high-functional polyisocyanate that contain silane groups can be used in two component systems (Paragraph 118), it would necessarily follow that the composition as described by Laas would similarly require mixing prior to application. As such, it would have been obvious prior to the effective filing date of the instant application to have mixed components as described by Laas to form the adhesive mixture, then apply to a substrate and then bring the substrate with the adhesive applied in contact with a second substrate for the purposes of adhering them together. Finally, as a laminate is broadly defined to be an article with multiple layers, any article in which multiple layers are adhered together would be a laminate. Additionally, as adhesives bond two substrates together, it would logically follow that an article adhered together by the adhesive would also be a laminate. Laas teaches that compositions of the type described can be used as adhesives (Paragraph 6), it would necessarily follow that when utilizing the composition in this way, a laminate would be formed and as such, it would have been obvious prior to the effective filing date of the instant application to have created a laminate from the composition of Laas.
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive for the following reasons.
On page 6, the applicant states that the compounds taught by Laas are structurally distinct because of Laas’ preference for propylene carbonate or ethylene carbonate. However, the teachings of Laas must be taken in their totality and are not limited only to preferred embodiments. As Laas also teaches the use of higher order polyols that can be reacted with the silane component as noted in the rejection, Laas teaches that not only monofunctional, but also higher order functional components can be made and used, rendering the applicant’s compound to be obvious in light of this information. As noted above, the construction of claim 1 as it relates the isocyanate component is read as a product-by-process claim, and as such only the final compound determines the patentability. Because the resulting structure as described in the rejection would meet the requirement of containing a segment that would arise from a polyol containing a silane, it would therefore meet the requirements. Further, while the applicant states that Laas does not use glycerol carbonate in the exemplified examples, as previously stated, the teachings of Laas must be taken in their totality, and as Laas explicitly lists glycerol carbonate as a component useful in the composition, Laas thus teaches its use and therefore rendering its use to have been obvious. In summary, the arguments have not been found to be persuasive and the rejection is therefore maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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, Heidi Kelley can be reached at 571-270-1831. 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.
/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765