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
Response to Amendment
Applicant's amendments filed on 01/06/2026 have been entered. Claims 1-6, 9-15 and 18-21 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Claim Rejections - 35 USC § 103
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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2, 4-6, 9-15 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (WO2019/060658, ‘658 hereafter) in view of Takeuchi et al (JP H11-269245, of record, ‘245 hereafter).
Regarding claims 1-2, 4-6, 9-14 and 18-21, ‘658 discloses a moisture reactive hot melt adhesive polyurethane composition ([0008]-[00021]), comprising a product of a mixture comprising a polyisocyanate being MDI in a content of 5 to 40 wt% based on the total adhesive weight, satisfying present claims 11 and 18 ([0014], [00015], [00037]); one or more polyol being polyester polyols satisfying Formula 1 and Formula 2 as in the present claim 2, which include poly(alkyldiol adipate) with R1 being a residue of a glycol being 1.4-butanediol, 1,5-hexanediol or ethylene glycol, and number average molecular weight being 2,000 to 10,000, in a content range of 10 to 35 wt% based on the total adhesive weight, satisfying instant claims 2 and 4-6 ([0008]-[0009], [00031]-[00032], Examples, Table 1 and 3, polyester polyol A to N); an inorganic filler being calcium carbonate in a content of 10 to 50 wt% ([00016], [00017], [00036]) as in the present claims 12 and 19; a thermoplastic polymer being an acrylic polymer having a weight average molecular weight 30,000 to 80,000, Tg from 35 to 85 °C, a hydroxyl number less than 8, and in a content of 10 to 40 wt%, satisfying present claims 9-10 and 20 ([00012], [00013], [00038]); and one or more additives including additional filler, plasticizer, catalyst, colorant, rheology modifier, flame retardant, UV pigment, nanofiber, defoamer, tackifier, curing catalyst, anti-oxidant, adhesion promoter, stabilizer, a thixotropic agent or mixtures thereof as in present claims 13 and 20 ([00018], [0041]). The composition also comprises a catalyst being dimorpholinodiethylether ([00040]) as in the present claim 14. ‘658 dose not specifically set forth that the adhesive composition further comprises a MA-SCA acid having a content as recited in the present claims 1 and 21. However, in the same field of endeavor, ‘245 discloses a polyurethane composition, wherein a MA-SCA acid such as phosphoric acid with a preferred content range of about 500 ppm to 10,000 ppm based on total amount of polyester in the polyurethane composition, satisfying presently claimed range as in claims 1 and 21 (0.05 to 1 parts per 100 parts polyester polyol, [0014], maximum polyester in the composition of ‘658 is 35 w% (00031], thus the acid content in the polyurethane composition could be 175 ppm to 3500 ppm), is used to improve stability by suppressing thickening and gelation of the composition. In light of these teachings, one of ordinary skill in the art would have been motivated to use a MA-SCA acid as taught by ‘245, to modify the polyurethane hot-melt adhesive of ‘658, in order to render an polyurethane hot-melt adhesive having better stability.
Regarding claim 3, modified ‘658 teaches all the limitations of claim 1, but ‘658 does not specifically set forth that the composition comprising both polyester diol of Formula 1 and a polyester diol of Formula 2. However, since ‘658 teaches each of the polyester diols can be used to form the holt melt polyurethane composition, it would have been obvious to one of ordinary skill in the art to be motivated to further use these polyester diols together in the adhesive composition of ‘658. It is well settled that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. The idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06).
Regarding claim 15, modified ‘658 teaches all the limitations of claim 1, ‘658 also discloses that the adhesive can be used to make an article ([00042]).
Response to Arguments
Applicant's arguments filed on 01/06/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
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 RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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