DETAILED ACTION
Claim Status
Claim(s) 1, 3-13, 15-17, 19-20 is/are pending.
Claim(s) 1, 3-13, 15-17, 19-20 is/are rejected.
Claim(s) 2, 14, 18 is/are cancelled by Applicant.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 11/06/2025 have been withdrawn in view of the Claim Amendments filed 01/20/2026.
Claim Rejections - 35 USC § 103 (AIA )
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.
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, 3-10, 15-17, 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DENG ET AL (US 2022/0033688),
in view of PALLIARDI ET AL (US 2024/0209247),
and in view of KOMATSUZAKI (US 2022/0251378),
and in view of BAE ET AL (US 2017/0066950),
and in view of OHARA ET AL (US 2016/0272751),
and in view of FANDREY ET AL (US 2020/0316820),
and in view of WHAT IS HOT MELT MADE OF?,
and in view of ADHESIVE VISCOSITY INFORMATION AND
COMPARISON CHART,
and in view of YANG ET AL (US 6,020,429),
and in view of HEIDER (US 6,136,136),
and in view of TAMOGAMI ET AL (US 2012/0283370) and/or
MASUDA ET AL (US 2020/0087543).
DENG ET AL ‘688 discloses a reactive hot-melt adhesive, wherein the adhesive comprises:
(a) 5-95 wt% of a first polyester polyol with a Tg of -70 ºC to 150 ºC (e.g., 20-70 ºC; etc.), wherein the first polyester polyol is derived from:
(i) at least one dicarboxylic acid (e.g., isophthalic acid; terephthalic acid; succinic acid; adipic acid; etc.);
(ii) at least one 2,2,4,4-tetraalkylcyclobutane-1,3-diol (TACD) (e.g., 2,2,4,4-tetramethylcyclbutane-1,3-diol (TMCD); etc.);
(iii) optionally at least one diol other than the TACD diol (e.g., 1,4-cyclohexanedimethanol (CHDM); etc.);
(b) up to 55 wt% of one or more optional second polyol(s) (e.g., semi-crystalline polyester polyols; amorphous polyester polyols; polyether polyols; mixtures, thereof; etc.);
(c) an isocyanate (e.g., but not limited to, diisocyanates, etc.);
• other optional additives (e.g., tackifiers; other polymers; etc.).
The hot-melt adhesive is useful in a variety of applications (e.g., packaging; electronics; etc.), including bonding two layers or substrates together (e.g., but not limited to, polyethylene terephthalate (PET); aluminum-coated PET; polypropylene; polyethylene; etc.). (entire document, e.g., paragraph 0001-0006, 0016-0018, 0023-0025, 0040-0041, 0044, 0053-0054, 0076-0088, 0090, 0093-0094, 0102-0103, 0124-0128, etc.) However, the reference does not specifically discuss the use of “sustainable” polyols or the Brookfield viscosity of the hot melt adhesive.
PALLIARD ET AL ‘247 discloses that it is well known in the art to utilize isocyanate-reactive components (e.g., polyols, etc.) from sustainable sources as at least part of the isocyanate-reactive components in polyurethane-type adhesives in order to maximize the sustainable content of the adhesive compositions and thereby minimize usage of petrochemical feedstocks or non-renewable sources. (paragraph 0006, 0043-0044, 0065, 0094, etc.)
KOMATSUZAKI ‘378 discloses that it is well known in the art to utilize biomass-derived polyester polyols derived from: (x) biomass-derived polybasic acids; and (y) biomass-derived glycols; optionally in combination with other types of polyester polyols, in curable polyurethane hot-melt adhesives in order to produce polyurethane-type adhesive materials capable of having a biomass degree of 40% or more (preferably 70% or more) and is thereby environmentally friendly. The reference further discloses that it is well known in the art to incorporate additional thermoplastic resins into hot-melt adhesives as an additive. (paragraph 0001, 0007-0009, 0011-0017, 0021-0022, 0031-0032, etc.)
BAE ET AL ‘950 discloses that it is well known in the art to utilize semi-crystalline polyester polyols (i.e., exhibiting at least some degree of crystallinity) (corresponding to the recited “bio-based crystalline polyester polyol”) from sustainable sources in polyurethane polymer products (e.g., reactive hot-melt adhesives, etc.) wherein the polyester polyols preferably contain: (i) 1-50 wt% of recycle content; (ii) more than 50 wt% of bio-renewable content (e.g., polyester polyols derived from dicarboxylic acids and diols from renewable sources; etc.); and/or (iii) a “green content” (i.e., the combined recycle and bio-renewable content) of more than 50 wt% (preferably greater than 65 or 80 or 95 or 99 wt%). The reference further discloses that the disclosed hot-melt adhesives are useful for forming laminates or composite structures a variety of substrates (e.g., wood; paper; glass; ceramic; plastic (such as polyethylene, polypropylene, polycarbonate, polyvinyl chloride, etc.); metal (such as aluminum, etc.)). (paragraph 0007-0010, 0012, 0035, 0038-0043, 0047, etc.)
OHARA ET AL ‘751 discloses that it is well known in the art to produce polyurethane materials (e.g., adhesives, etc.) which are at least partially derived from biomass resources (corresponding to the recited “sustainable”), wherein the polyester polyol component(s) of the bio-based polyurethane materials are at least partially derived from biomass-based dicarboxylic acid components (e.g., adipic acid, succinic acid, etc.) and optionally biomass-based diols (e.g., 1,4-butandiol, etc.) (paragraph 0002, 0033, 0036, 0044-0050, 0266-0267, 0269-0270, etc.)
FANDREY ET AL ‘820 discloses that it is well known in the art to formulate hot-melt adhesives to have typical Brookfield viscosities at 120 ºC of 1,000-30,000 mPa-s (1,000-30,000 cP). The reference further discloses that hot-melt adhesives are typically applied at temperatures of 60-150 ºC (preferably 100-140 ºC). (paragraph 0016-0017, etc.)
WHAT IS HOT MELT MADE OF? discloses that the viscosity of hot melt adhesives can be adjusted by selecting the content of various conventional components of the hot melt adhesive -- for example: (i) the polymer content, with greater polymer content generally resulting in higher viscosity and lower polymer content generally resulting in lower viscosity; (ii) wax content, with lower wax contents generally resulting in higher viscosity and higher wax content generally resulting in lower viscosity; (iii) the use of plasticizers, which produce lower melt viscosity and faster wetting. (page 4-5, etc.)
ADHESIVE VISCOSITY INFORMATION AND COMPARISON CHART discloses that it is conventional that the viscosity of hot melt adhesives are dictated by their intended use (e.g., lower viscosity hot melt adhesives can be used in packaging applications, while higher viscosity hot melt adhesives can be used as gap filling formations, etc.). (page 2, etc.)
YANG ET AL ‘429 discloses that it is well known in the art that it can be advantageous to use crystalline polyester polyols in reactive polyurethane-type hot melt adhesives in order to produce hot melt adhesives with increased green peel strength and/or increased rate of set. The reference further discloses that it is well known in art that conventional hot melt adhesive additives (e.g., plasticizers, etc.) can be incorporated into reactive polyurethane-based hot melt adhesives to modify various properties of the hot melt adhesive (e.g., viscosity, etc.). (line 9-35, col. 1; line 24-27, 46-55, col. 4; etc.)
HEIDER ‘136 discloses that it is well known in the art that the melt viscosity of moisture-curable (i.e., reactive) polyurethane-type hot melt adhesives can be adjusted by the appropriate selection of the molecular weight of the polyester polyol(s) utilized as components in the hot melt adhesives -- e.g., increased molecular weight of the polyester polyol can lead to unacceptably increased melt viscosity of the resulting polyurethane adhesive. The reference further discloses that it can be advantageous to use at least partially crystalline polyester components (e.g., in the form of polyester polyols) (corresponding to the recited “crystalline polyester polyol) in moisture-curable (i.e., reactive) polyurethane-type hot melt adhesives in order to produce hot melt adhesives with high green peel strength. (line 25-33, col. 5; line 1-7, col. 6; etc.)
MATSUDA ET AL ‘743 discloses that it is well known in the art that the melt viscosity of moisture-curable (i.e., reactive) polyurethane-type hot melt adhesives can be advantageously modified (e.g., maintained or lowered) by the use of plasticizers (e.g., but not limited to, paraffin oils, phthalates, mineral spirits, etc.) wherein low viscosity in hot melt adhesives improves coatability and increases wetting of surfaces, thereby improving the initial adhesion strength. (paragraph 0003-0004, 0103, etc.)
TAMOGAMI ET AL ‘370 discloses that it is well known in the art that the melt viscosity of moisture-curable (i.e., reactive) polyurethane-type hot melt adhesives can be modified with the use of viscosity-enhancing (i.e.,, viscosity-lowering) resin additives which helps to improve the initial adhesive strength by increasing the initial wetting of surfaces. (paragraph 0002, 0010, etc.)
Regarding claims 1, 5, 8-10, 17, 19-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known biomass-derived polyester polyols which are at least partially derived from biomass (corresponding to the recited “sustainable polyol” and the recited “sustainable content”) as suggested in BAE ET AL ‘950 and KOMATSUZAKI ‘378 as the at least one second polyol(s) (b) in the reactive hot-melt adhesive of DENG ET AL ‘688 in order to improve sustainability and to reduce usage of petroleum feedstocks and/or non-renewable raw materials.
Further regarding claim 1, one of ordinary skill in the art to formulate the reactive hot-melt adhesive of DENG ET AL ‘688 to have Brookfield viscosities at 120 ºC comparable to conventional and/or commercial hot-melt adhesives (as disclosed in FANDREY ET AL ‘820) in order to optimize application and usage of the hot-melt adhesive for specific applications and usage conditions (as suggested in ADHESIVE VISCOSITY INFORMATION AND COMPARISON CHART), wherein the melt viscosity of the hot melt adhesive can be adjusted using known, well-recognized techniques (e.g., appropriate selection of the molecular weight of polyester polyols and thereby the molecular weight of the resulting polyurethane hot melt adhesive, as suggested in HEIDER ‘136; appropriate selection of the amount of various hot melt adhesive components and/or additives, as suggested in WHAT IS HOT MELT MADE OF?, such as plasticizers as suggested in MATSUDA ET AL ‘743 and/or viscosity-lowering resins as suggested in TAMOGAMI ET AL ‘370 and/or other additives as suggested in YANG ET AL ‘429), wherein lowered hot melt viscosity is advantageous for improved wetting of surfaces and therefore improved initial adhesive strength (as suggested in MATSUDA ET AL ‘743 and TAMOGAMI ET AL ‘370).
Further regarding claims 1, 10, 17, one of ordinary skill in the art would have utilized crystalline polyester polyols as at least part of the (b) optional second polyol(s) of reactive hot-melt adhesive of DENG ET AL ‘688 in order to provide improved green strength and/or improved rate of set (as suggested in YANG ET AL ‘429) and/or improved green peel strength (as suggested in HEIDER ‘136).
Regarding claims 3-4, the phrase “no greater than 10% by weight” reads on 0%, therefore, the presence of acrylic polymer or polypropylene glycol is not required in the recited reactive hot-melt adhesive.
Regarding claims 6-7, 17, one of ordinary skill in the art would have utilized:
(i) known polyester polyols primarily or entirely derived from biomass (corresponding to the recited “sustainable polyol”) as disclosed in BAE ET AL ‘950 and KOMATSUZAKI ‘378 as the second polyester polyol(s) (b) in the reactive hot-melt adhesive of DENG ET AL ‘688; and
(ii) known biomass-derived dicarboxylic acids and biomass-derived diols as suggested in OHARA ET AL ‘751 as at least part (and preferably the entirety) of the dicarboxylic acid(s) (a)(i) and additional diol(s) (a)(iii) used to form the first TACD-based polyester polyol (a) in the reactive hot-melt adhesive of DENG ET AL ‘688;
in order to maximize usage of biomass-derived components (corresponding to the recited “sustainable content” and the recited “bio-based carbon content”) reactive hot-melt adhesive of DENG ET AL ‘688 and thereby produce an environmentally friendly reactive hot-melt polyurethane-type adhesives containing a high content of sustainable and bio-based content (e.g., having a biomass degree of 40% or more, preferably 70% or more, as suggested in KOMATSUZAKI ‘378).
Regarding claim 15-17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the reactive hot-melt adhesive of DENG ET AL ‘688 to tailor the Brookfield viscosities at 110 ºC of the hot-melt adhesive for specific substrates (e.g., to provide Brookfield viscosities similar to the Brookfield viscosities at 120 ºC for conventional and/or commercial hot-melt adhesives, but at lower temperatures for more heat-sensitive materials, etc.) and/or for specific application methods (as suggested in ADHESIVE VISCOSITY INFORMATION AND COMPARISON CHART), wherein the melt viscosity of the hot melt adhesive can be adjusted using known, well-recognized techniques (e.g., appropriate selection of the molecular weight of polyester polyols and thereby the molecular weight of the resulting polyurethane hot melt adhesive, as suggested in HEIDER ‘136; appropriate selection of the amount of various hot melt adhesive components and/or additives, as suggested in WHAT IS HOT MELT MADE OF?, such as plasticizers as suggested in MATSUDA ET AL ‘743 and/or viscosity-lowering resins as suggested in TAMOGAMI ET AL ‘370 and/or other additives as suggested in YANG ET AL ‘429), wherein lowered hot melt viscosity is advantageous for improved wetting of surfaces and therefore improved initial adhesive strength (as suggested in MATSUDA ET AL ‘743 and TAMOGAMI ET AL ‘370).
Claim(s) 11, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DENG ET AL (US 2022/0033688), in view of PALLIARDI ET AL (US 2024/0209247), and in view of KOMATSUZAKI (US 2022/0251378), and in view of BAE ET AL (US 2017/0066950), and in view of OHARA ET AL (US 2016/0272751), and in view of FANDREY ET AL (US 2020/0316820), and in view of WHAT IS HOT MELT MADE OF?, and in view of ADHESIVE VISCOSITY INFORMATION AND COMPARISON CHART, and in view of YANG ET AL (US 6,020,429), and in view of HEIDER (US 6,136,136), and in view of TAMOGAMI ET AL (US 2012/0283370) and/or MASUDA ET AL (US 2020/0087543),
as applied to claims 1, 3-10, 15-17, 19-20 above,
and further in view of SPYROU ET AL (US 2012/0073472).
SPYROU ET AL ‘472 discloses that it is well known in the art to utilize diisocyanates and derivatives thereof based on renewable materials (corresponding to the recited diisocyanates which are “bio-based”) as components for urethane chemistry (e.g., urethane-based adhesives, coatings, etc.) wherein said diisocyanates and derivatives thereof based on renewable materials can have treated (e.g., via distillation, etc.) to have low monomeric diisocyanate contents of less than 2 wt% (e.g., less than 0.5%; as low as 0.1 wt%; etc.) in order to provide sustainability and/or reduce costs. (paragraph 0001, 0003, 0006, 0012-0014, 0025-0026, 0055-0062, 0064, 0072, etc.)
Regarding claim 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known diisocyanate and derivatives thereof based on renewable materials (corresponding to the recited “bio-based”) as suggested in SPYROU ET AL ‘472 as diisocyanate (c) in the reactive hot-melt adhesive of DENG ET AL ‘688 in order to further increase usage of bio-based materials and thereby improve sustainability and reduce usage of petroleum feedstocks and/or non-renewable raw materials.
Regarding claim 16, one of ordinary skill in the art would have utilize known diisocyanate and derivatives thereof based on renewable materials and very low monomeric diisocyanate content (e.g., less than 0.5 wt%) as suggested in SPYROU ET AL ‘472 as diisocyanate (c) in the reactive hot-melt adhesive of DENG ET AL ‘688 in order to produce hot-melt adhesives with very low (e.g., less than 0.5 wt%) monomeric diisocyanate content.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DENG ET AL (US 2022/0033688), in view of PALLIARDI ET AL (US 2024/0209247), and in view of KOMATSUZAKI (US 2022/0251378), and in view of BAE ET AL (US 2017/0066950), and in view of OHARA ET AL (US 2016/0272751), and in view of FANDREY ET AL (US 2020/0316820), and in view of WHAT IS HOT MELT MADE OF?, and in view of ADHESIVE VISCOSITY INFORMATION AND COMPARISON CHART, and in view of YANG ET AL (US 6,020,429), and in view of HEIDER (US 6,136,136), and in view of TAMOGAMI ET AL (US 2012/0283370) and/or MASUDA ET AL (US 2020/0087543),
as applied to claims 1, 3-10, 15-17, 19-20 above,
and further in view of RICHARDS (US 2007/0037955) or CHOI ET AL (US 2021/0324136).
RICHARDS ‘955 discloses that it is well known in the art to incorporate additional thermoplastic polymers (e.g., polyurethane (co)polymers; polyesters; etc.) in reactive hot-melt adhesives, wherein the thermoplastic polymers can be at least partially derived from biomass. (paragraph 0020, etc.)
CHOI ET AL ‘136 discloses that it is well known in the art to incorporate bio-based aliphatic polyesters with a bio-based content of at least 50% as components in reactive hot-melt adhesives in order to modify the melting point of the hot-melt adhesive. (paragraph 0016-0017, 0023-0025, 0055-0059, etc.)
Regarding claims 12-13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known bio-based thermoplastic polymers (as suggested in RICHARDS ‘955 or CHOI ET AL ‘136) as an additive in the reactive hot-melt adhesive of DENG ET AL ‘688 in order to modify or optimize one or more performance properties (e.g., melting temperature; melt viscosity; melt strength; elasticity and/or flexibility, tensile strength; cohesive strength; adhesiveness; etc.) of the hot-melt adhesive for specific applications while maintain a high degree of sustainability and therefore environmental friendliness.
Response to Arguments
Applicant's arguments previously filed 10/20/2026 have been fully considered but they are not persuasive for the reasons discussed in detail in the Advisory Action mailed 11/06/2025.
Applicant's arguments and the WANG Declaration filed 01/20/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that the claimed reactive hot melt adhesive “unexpectedly shows improved properties when the first polyester is used within a particular range.” While the specification and the WANG Declaration provide some limited evidence of superior performance (e.g., lap shear, elongation at break, Young’s modulus) with certain percentages of first polyester polyol a), the showings provided are not commensurate in scope with the present claims -- for example, but not limited to:
• the type and amount of first polyester polyol (a);
• the type and amount of sustainable crystalline polyester polyol (b);
• the type(s) and amount(s) of other sustainable polyol(s) (b);
• the presence, type, and amount of polyether polyol;
• the type and amount of diisocyanate (c);
• etc.
However, the extent of the showing provided by the specification and the WANG Declaration cannot be clearly determined because the specification and the WANG Declaration fail to clearly specify the chemical compositions of the various commercially available polyols and diisocyanate used in Example 2 in the specification and Example 5 of the WANG Declaration.
As an illustrative example, regarding the first polyester polyol (a), the following compositional information for EASTMAN HM45 is not provided:
• the amount and type of dicarboxylic acid (a)(i) (e.g., aromatic?; (cyclo)aliphatic?; mixtures thereof, and in what ratios?; etc.);
• the amount of TACD (a)(ii) (e.g., 1 mol% or 5 mol% or 30 mol% or 50 mol% or 70 mol% or 90 mol% or 99 mol%?);
• the type(s) and amount(s) of additional monomer(s) (a)(iii) (especially diols, polyols with OH functionalities of 3 or more, polycarboxylic acids with COOH functionalities of 3 or more, etc.); etc.
Each of the above compositional factors can materially affect the physical properties of a polyester polyol (e.g., Tg, reactivity, curing characteristics, etc.) derived therefrom, and therefore can materially affect the performance properties (Tm, rheological properties, mechanical and/or adhesive properties, etc.) of cured reactive hot melt adhesives containing said TACD-containing polyols. In particular, the present claims encompass a very wide range of first polyester polyols (a) -- e.g., but are not limited to:
• a polyester polyol derived from:
(i) an acid component containing: 100 mol% aromatic dicarboxylic acid (e.g., terephthalic acid; isophthalic acid; 2,6-naphthalenedicarboxylic acid; etc.);
(ii) a polyol component containing 10 mol% TACD and 90 mol% of one or more other diols (e.g., linear aliphatic diols such as ethylene glycol, diethylene glycol, 1,4-butanediol, etc.; linear cycloaliphatic diols such as 1,4-cyclohexanedimethanol, etc.); branched diols such as neopentyl glycol, etc.; unsaturated diols; etc.);
• a polyester polyol derived from:
(i) an acid component containing: 100 mol% (cyclo)aliphatic dicarboxylic acid (e.g., adipic acid, succinic acid, cyclohexanedicarboxylic acid, etc.);
(ii) a polyol component containing 80 mol% TACD and 20 mol% of one or more other diols (e.g., linear aliphatic diols such as ethylene glycol, diethylene glycol, 1,4-butanediol, etc.; linear cycloaliphatic diols such as 1,4-cyclohexanedimethanol, etc.); branched diols such as neopentyl glycol, etc.; unsaturated diols; etc.);
• a polyester polyol derived from:
(i) an acid component containing: 50 mol% aromatic dicarboxylic acid (e.g., terephthalic acid; isophthalic acid; 2,6-naphthalenedicarboxylic acid; etc.) and 50 mol% (cyclo)aliphatic dicarboxylic acid (e.g., adipic acid, succinic acid, cyclohexanedicarboxylic acid, etc.)
(ii) a polyol component containing 50 mol% TACD and 50 mol% of one or more other diols (e.g., linear aliphatic diols such as ethylene glycol, diethylene glycol, 1,4-butanediol, etc.; linear cycloaliphatic diols such as 1,4-cyclohexanedimethanol, etc.); branched diols such as neopentyl glycol, etc.; unsaturated diols; etc.);
• etc.;
For example, a polyester polyol derived from mostly or entirely aliphatic dicarboxylic acids would be reasonably expected to produce in a cured adhesive material which can exhibit materially (and potentially unpredictably) different performance properties (e.g., mechanical and/or adhesive strength, etc.) compared to a cured adhesive material utilizing a polyester polyol derived mostly or entirely of aromatic dicarboxylic acids. Similarly, a polyester polyol derived from mostly or entirely TACD would be reasonably expected to result in a cured adhesive material which can exhibit materially (and potentially unpredictably) different performance properties (e.g., mechanical and/or adhesive strength, etc.) compared to a cured adhesive material utilizing a polyester polyol derived mostly or primarily from other aliphatic diols (e.g., ethylene glycol, cyclohexanedimethanol, neopentyl glycol, etc.). Applicant has not provided objective evidence that: (i) the relied upon unexpected results (e.g., lap shear, Young’s modulus, elongation, etc.) would be present for the wide range of polyester polyols conforming to the first polyester polyol (a) recited in the present claims; and (ii) the very limited showings provided by the specification and the WANG Declaration can be reasonably extended to the wide range of polyester polyols conforming to the first polyester polyol (a) recited in the present claims.
Similarly, the Examiner has reason to believe that the compositions of the other recited components in the claimed reactive hot melt adhesive (i.e., sustainable crystalline polyester polyol (b); diisocyanate; optionally other bio-based amorphous polyester polyols and/or bio-based polyether polyols; etc.) would materially affect the performance properties (e.g., rheological properties; mechanical and/or adhesive strength, etc.) of a cured hot melt adhesive. Applicant has not provided objective evidence that: (i) the relied upon unexpected results (e.g., lap shear, Young’s modulus, elongation, etc.) would be present if different bio-based crystalline polyester polyols (b) are used; and (ii) the very limited showings provided by the specification and the WANG Declaration can be reasonably extended to the wide range of reactive hot melt adhesive compositions encompassed by the present claims, particularly when the present claims use the open phrase “comprising” (which allows for any amount(s) of any additional components, as long as the recited components are present in the specified minimum amounts) and allow for over 50 wt% of other unspecified components.
Additionally, Example 2 in the specification and Example 5 of the WANG Declaration both utilize: (i) about 16-21 wt% of an aliphatic amorphous polyether polyol (composition unspecified); and (ii) about 15-20 wt% of an amorphous aliphatic polyester polyol (composition unspecified). Applicant has not provided objective evidence that the relied upon unexpected results (e.g., lap shear, Young’s modulus, elongation, etc.) would be present if the aliphatic amorphous polyether polyol only identified as VELVETOL H2000 and/or the amorphous aliphatic polyester polyol only identified as PRIPLAST 3238 are absent from the claimed reactive hot melt adhesive.
While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
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Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
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I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
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The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
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To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Conclusion
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April 4, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787