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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set
Response to Amendment
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 amendment is supported by the original claims.
The previous restriction and rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1-4 and 9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Anderson et al. (US 20180291125) in view of Feng et al. (US 20220025231, eff. F/D=12/6/18) and in further view of Sato et al. (JP 2016196626, machine translation provided).
As to claims 1-4 and 9, Anderson (abs., claims, examples, figures, tables, schemes, 3, 151, 268-273,) discloses a hot melt adhesive composition comprising 30-90 wt% of hydroxyl functional polymer including a polyester polyol:
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and 4-60 wt% (overlapping with the range of claim 4, It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05) of silane functional resin bond to the hydroxyl functional polymer:
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,e.,g.:
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Anderson silent on the claimed hydroxyl functional polymer having the claimed hydroxyl number.
In the same area of endeavor of producing hot melt adhesives, Feng (abs., claims, examples, Tables, 3, 6, 16, 38, 49, 102, 161) disclosed a polyester polyol (15-120 mg KOH/g, Mn=1500-9000) comprising comonomers including 1,1,1-trimehtylopropane (TMP), isophthalic acid (TPA), 2,2,4,4-tetramehtylcyclobutane-1,2-diol (TMCD), and 2-methyl-1,2-propanediol (MPDiol), the same comonomers used in instant EX.3. The TMCD based polyester polyol renders improved cure time, green bond strength, solvent resistance, chemical resistance, hydrolytic stability, thermal stability, impact resistance, weatherability, improved applicability, and reduced VOC, as compared to conventional adhesive compositions.
Anderson and Feng are silent on the claimed polyol comprising acrylic polyol.
In the same area of endeavor of producing hot melt adhesives comprising polyester and acrylic polyol, Sato (abs., claims, examples, 6-7, 18, 36) discloses adding an acrylic polyol (2-20 mg KOH/g, overlapping with the range of claim 1) to the composition to obtain balanced properties of sufficient adhesion and optimal hardness (36).
Therefore, as to claims 1-4 and 9, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Anderson and replaced polyester polyol with the aforementioned TMCD based polyester polyol in view of Feng and further added acrylic polyol in view of Sato, because the resultant process would yield improved adhesion, hardness, cure time, green bond strength, solvent resistance, chemical resistance, hydrolytic stability, thermal stability, impact resistance, weatherability, improved applicability, and reduced VOC, as compared to conventional adhesive compositions.
The references are silent on the claimed peel strength, shear strength, and bond strength of claim 3. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components (disclosed same structures, monomer components, Mn, and hydroxyl number, etc.). Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. peel strength, shear strength, and bond strength, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process. Based on the same rationale, one of ordinary skill in the art would expect the resultant composition would form Si-O-C covalent bonds between Anderson’s silane functionalized resin with Feng’s TMCD based polyester polyol as claimed in instant claim 1. As to claim 1, one of ordinary skill in the art would expect the resultant composition would yield the claimed hydroxyl/silane ratio because of the disclosed same structures (formulae, Mn, and hydroxyl number) and wt% of the silane functionalized resin and polyester polyol.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The examiner disagrees with applicant’s argument (3-4) that the citation of Sato is unclear. Sato (abs., claims, examples, 6-7, 18, 36) discloses adding an acrylic polyol (2-20 mg KOH/g, overlapping with the range of claim 1) to the composition to obtain balanced properties of sufficient adhesion and optimal hardness (36). The examiner hereby corrects a clerical error in the last action citing Sato as Feng.
The examiner disagrees with applicant’s argument (4-5) that the references fail to teach the claimed properties. The examiner asserts a prima facie case of obviousness has been established to meet the claimed properties, because the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components (disclosed same structures, monomer components, Mn, and hydroxyl number, etc.). Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. peel strength, shear strength, and bond strength, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process. Based on the same rationale, one of ordinary skill in the art would expect the resultant composition would form Si-O-C covalent bonds between Anderson’s silane functionalized resin with Feng’s TMCD based polyester polyol as claimed in instant claim 1. As to claim 1, one of ordinary skill in the art would expect the resultant composition would yield the claimed hydroxyl/silane ratio because of the disclosed same structures (formulae, Mn, and hydroxyl number) and wt% of the silane functionalized resin and polyester polyol. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). The applicant fails to provide evidence to defeat the rationale.
The applicant individually attacked Sato (6-7) for not teaching silane chemistry. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145. The primary reference, Anderson, teaches a silane functional resin, and Sato is not defective. In the same area of endeavor of producing hot melt adhesives comprising polyester and acrylic polyol, Sato (abs., claims, examples, 6-7, 18, 36) discloses adding an acrylic polyol (2-20 mg KOH/g, overlapping with the range of claim 1) to the composition to obtain balanced properties of sufficient adhesion and optimal hardness (36). Sato, in the same area of endeavor of producing hot melt adhesives, teaches a motivation to be combined with Anderson and Feng to meet the claims.
Therefore, as to claims 1-4 and 9, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Anderson and replaced polyester polyol with the aforementioned TMCD based polyester polyol in view of Feng and further added acrylic polyol in view of Sato, because the resultant process would yield improved adhesion, hardness, cure time, green bond strength, solvent resistance, chemical resistance, hydrolytic stability, thermal stability, impact resistance, weatherability, improved applicability, and reduced VOC, as compared to conventional adhesive compositions.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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