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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/24/2026 has been entered.
Status of Claims
The examiner acknowledges the amendment to claim 1 and the cancelation of claim 3. Claims 1-2, 4, and 6-12 are pending.
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 1-2, 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.
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.
The requirement that at least polyol B or the polyol used for A and the polyol used for B are required to contain a silane, while not explicitly constructed as a product-by-process limitation, is interpreted as such. This is because in the formation of a polyurethane or polyurea, the reaction that occurs is between the NCO functionality of the isocyanate and the hydroxyl group of polyol or amine group in the case of a polyurea. No reaction occurs between the two hydroxyls or two amines. Therefore, in the case of the formation of a prepolymer which is subsequently reacted with a second polyol, there would be no expected difference in the final product, as only the NCO functionality can react with the hydroxyl group, rendering the order of addition of the two polyols to be of no effect to the final polymer since both polyols would still be reacting with isocyanate functionality regardless of addition order. As such, because Laas teaches that the silane is incorporated into the polyol to form the prepolymer, this would result in an identical polymer and would thus meet the material requirements.
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 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:
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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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 10 of copending Application No. 18/577375 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application requires the components of a polyisocyanate, a first polyol, and a second polyol which also includes a silane which in claims 9 and 10 is then used as a laminate, which are the same requirements in the instant applications claims 1-2 and 10-11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive for the following reasons.
On page 5, the applicant argues that Laas does not teach the use of a polyol (B) that contains a silane. This has been addressed in the above rejection, but is reiterated that while the claim is not explicitly written with a product-by-process limitation, functionally because the reaction that occurs in generating a polyurethane is between the hydroxyl group of the polyol and the isocyanate functionality contained in the polyisocyanate, whether the polyol used to form a prepolymer contains a silane or whether a subsequently added polyol contains a silane would not result in a different polymer. As such, the order of addition is irrelevant and therefore as long as the final polymer contained silane, the requirement would be met.
Also on page 5 as well as page 6, the applicant argues that Laas teaches polyisocyanates that are crosslinkers for paints and coatings and not adhesives. The examiner disagrees. Firstly, while the applicant refers to the polyisocyanates of Laas as crosslinkers, this does not alter the reactivity of the isocyanate, which is still reactive with a polyol as noted in paragraph 117 to result in a polyurethane, which is the same polymer that the instant invention is directed towards. With regard to Laas referring to paints and not to an adhesive, the examiner notes that under the broadest reasonable interpretation, paints are adhesives that simply lack the application of a second substrate, or in the reverse, an adhesive is simply a paint to which a second substrate has been applied, as both a paint and an adhesive require adhering to a surface and there is no limitation of a paint that would prevent one of ordinary skill in the art from simply placing a second substrate onto a coating, thus adhering it to the first substrate after curing.
Also on page 5, the applicant argues that Laas provides no working examples of a solventless adhesive composition. The examiner argues that Laas teaches the required components to generate the composition of the instant claims and that Laas is not required to provide working examples but only the teachings required to do so. As Laas notes the use of such compositions as adhesives (Paragraph 9), teaches the reaction of the silane-containing isocyanate prepolymer with polyols (Paragraph 117), and noting that they are useful in compositions without solvent due to the low viscosity of the isocyanate prepolymer containing the silane group (Paragraph 116), Laas discloses all of the required components. When combined, the ordinarily skilled artisan would have all of the required knowledge to have assembled a composition that would result in a polyurethane containing a silane with the knowledge that such a composition could be used as an adhesive.
On page 6, the applicant argues that Laas does not teach the benefits of using the silane containing polyurethane as an adhesive. The examiner argues that Laas teaches that such compounds can be used as adhesives as previously stated and further, while the applicant argues the improved properties of the composition, these properties are not only not limitations within the claims, but that these properties would logically follow the composition, with Laas noting that incorporation of silanes leading to improved water resistance (Paragraph 8) as well as improved adhesion (Paragraph 18).
On page 6, the applicant also argues that one of ordinary skill in the art would not have a reasonable expectation of success as Laas provides no guidance for how to prepare an adhesive without improper hindsight. The examiner disagrees as Laas teaches the use of similar compositions as adhesives, the required components, as well as the lack of solvent which are all discussed above.
Finally, on page 7, the applicant argues that Laas does not teach the correct NCO/OH ratio. The examiner disagrees. The applicant appears to be referring to the paragraph describing the ratio of NCO/OH for the formation of the prepolymer (equivalent to the isocyanate component) and not for the formation of a polyurethane polymer. Paragraph 99 referenced by the applicant in fact talks about ratios “to form allophanate polyisocyanates”, not the final polymer. Paragraph 127 referenced by the examiner refers to paint combinations, which read upon the adhesive of the instant application, and specifically prefer a 0.8 to 1.6 ratio of isocyanate reactive groups to isocyanate groups, which is contained within the applicant’s preferred range.
Taken together, the applicant’s amendment to claim 1 fails to distinguish the instant application from the prior art and a result, the rejection stands.
Conclusion
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.
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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.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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