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 .
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-12, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CROFT(5,688,860).
CROFT discloses polyurethane sealant/adhesive composition as claimed comprising polyisocyanate, polyol, catalyst, thermally expandable microspheres and other additives as defined by the claims in amounts as claimed {see abstract, column 3 line 53-column 8 line 33, column 12 line 13 – column 13; Glossary, Examples, Tables and Claims}. Additionally, Croft discloses Index values as claimed {see Claims and Table IV, Example 14}
Regarding claim 9, though starting temperatures for the microspheres are not specifically identified by CROFT, owing to the closeness of the make-up of the microsphere materials disclosed, it is held that the microspheres of CROFT would inherently possess the starting temperature requirements laid out by this claim.
Regarding claim 11, though debonding times are not specifically identified by CROFT, owing to the closeness of the make-up of the compositions disclosed, it is held that the compositions of CROFT would inherently possess the debonding times as laid out by this claim.
Applicants’ arguments have been considered. However, rejection is maintained. Without distinction being set forth in the material make-up of the compositions defined by the claims, distinction is not evident based on referring to it as a de-bondable polyurethane adhesive in the preamble of the claims {Note: MPEP 2112.01 I. & II.}. Additionally, applicants’ claims do not exclude additional elements such as ureas and polyols from the limits of their claims. However, in this regard it is to be noted that component (B) of applicants’ claims recites “at least one polyol”.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 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.
/JOHN M COONEY/Primary Examiner, Art Unit 1765