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 .
Claim Objections
Claims 2 – 8 and 13 – 17 are objected to because of the following informalities:
for consistency, Claims 2 – 8 and 13 – 17 should be amended to recite “The aqueous dispersion” and “the aqueous dispersion” in each instance;
a process should set forth one or more active, positive steps. Consequently, Claim 7 should be amended to recite, for example, “A process for producing the aqueous dispersion as claimed in claim 1, comprising mixing an aqueous dispersion containing at least one polyurethane with at least one fresh sol”; and
Claim 17 should be amended to recite “diamino sulfonic acids, .
Appropriate correction is required.
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.
Claims 5 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 set forth “the” compound employed as component c). However, Claim 4 sets forth “c) at least one chain extender”. It is then unclear to which of the at least one chain extender(s) “the” compound in Claim 5 refers. For the purposes of further examination, Claim 5 will be interpreted as setting forth the at least one chain extender employed as component (c).
It is unclear to which of the previously recited compounds “their” refers in Claim 17. For the purposes of examination, “their” will be interpreted as referring to all of the previously recited species of acids.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 set forth a process for producing an adhesive laminated with the adhesive composition as claimed in claim 9. Claim 11 does then include all limitations of Claim 9 on which it depends, as Claim 9 is directed to an adhesive laminate containing the adhesive composition rather than an adhesive composition itself.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 – 5 and 7 – 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0131109 to Arndt et al. (hereinafter Arndt).
Regarding Claim 1. Arndt teaches an aqueous dispersion [0017] containing:
at least one polyurethane [0018];
at least one silicon dioxide dispersion [0019]. The silicon dioxide dispersion may specifically be a silica sol [0076]. Arndt describes silica sols as colloidal solutions of silicon dioxide in water [0077], i.e. aqueous solutions of silicon dioxide/silica. The instant specification defines “fresh sol” as meaning an aqueous solution of silica (see [0081] of the PG-PUB of the instant application). The silica sol in Arndt is therefore reasonably considered to correspond to a fresh sol as defined by applicant; and
optionally further additives [0074].
In preferred embodiments of Arndt, the at least one polyurethane is anionically hydrophilized [0061].
Regarding Claim 2. Arndt teaches the aqueous dispersion of Claim 1 in which the at least one polyurethane may correspond to DISPERCOLL® U53 (Table 1). Table 1 of the instant specification describes DISPERCOLL® U53 as a semicrystalline polyurethane.
Regarding Claim 3. Arndt teaches the aqueous dispersion of Claim 1 contains
55 to 99 weight percent of the at least one polyurethane;
1 to 45 weight percent of the silica sol dispersion/fresh sol [0090]; and
0.2 to 0.6 weight percent of a wetting agent [0092], i.e. a further additive.
As all other ingredients are indicated to be optional [0092], the sum of the aforementioned ingredients will total 100% by weight of the dispersion in embodiments in which other ingredients are not included.
Regarding Claims 4, 5, and 17. Arndt teaches the aqueous dispersion of Claim 1 wherein the at least one polyurethane may be formed from:
a polymeric polyol [0020] – [0022], which may be a polyester polyol. The polymeric polyol preferably has a functionality of 2 to 3 [0034], i.e. it is preferably at least difunctional;
polyisocyanates [0021]; and
a component (A4) [0025]. Component (A4) may be a mono- or dihydroxycarboxylic acid [0052]. Such compounds are set forth as chain extenders bearing at least on anionically hydrophilizing group in instant Claim 17.
Regarding Claim 7. Arndt teaches a process for producing the aqueous dispersion of Claim 1 comprising mixing an aqueous polyurethane dispersion with the silicon dioxide dispersion/fresh sol and auxiliary substances/additives ([0062] and [0098]).
Regarding Claim 8. Arndt teaches an adhesive composition containing the aqueous dispersion of Claim 1 [0101].
Regarding Claims 9 and 11. Arndt teaches gluing together substrates with the adhesive composition of Claim 8 [0101], corresponding to the preparation of an adhesive laminate containing two substrates bonded with said adhesive composition.
Regarding Claim 10. Arndt teaches the adhesive laminate of Claim 9 wherein at least one substrate may be wood [0101].
Regarding Claim 12. Arndt teaches the process of Claim 11 wherein the adhesive composition may be applied by rolling [0099].
Regarding Claim 13. Arndt teaches a process for bonding substrates, such as wood, to each other by applying the aqueous dispersion of Claim 1 [0101].
Regarding Claim 14. Arndt teaches a process for preparing the aqueous dispersion of Claim 1 [0098].
Arndt does not expressly characterize this process as achieving a thickening effect in an aqueous polyurethane dispersion. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Arndt teaches a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. process which achieves a thickening effect in an aqueous polyurethane dispersion, would implicitly be achieved by a process employing all of the claimed steps and processing conditions, as well as the claimed ingredients in the claimed amounts. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties using only the claimed process employing the claimed steps, processing conditions, and ingredients in the claimed amounts.
Regarding Claim 15. Arndt teaches the aqueous dispersion of Claim 1 in which the at least one polyurethane may correspond to DISPERCOLL® U53 (Table 1). As DISPERCOLL® U53 is one of the same polyurethanes used in the inventive examples in the instant specification, it would be reasonably expected that this polyurethane has a glass transition temperature in the claimed range of -65°C to 10°C.
Regarding Claim 16. Arndt teaches the aqueous dispersion of Claim 1 wherein the at least one difunctional polyester polyol has a molecular weight of preferably 600 to 2,500 g/mol [0034].
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0131109 to Arndt et al. (hereinafter Arndt), as applied to Claim 1 above, and further in view of US 3,468,813 to Mindick et al. (hereinafter Mindick).
Regarding Claim 6. Arndt teaches the aqueous dispersion of Claim 1 but does not expressly teach the pH of the fresh sol. However, Mindick teaches the concept of providing acidic silica sols with pHs of 2.5 to 4.0 as modifiers for plastics (Column 1, Lines 31 – 39; and Column 5, Lines 21 – 22). Arndt and Mindick are analogous art as they are from the same field of endeavor, namely silica sol compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the acidic silica sol with a pH in the range of 2.5 to 4.0 as taught by Mindick as the the silica sol in the aqueous dispersion of Arndt. The motivation would have been that Mindick teaches many advantages associated with the disclosed silica sols, including increased production efficiency and reduced silica loss associated with their manufacture and increased hardness and strength when used as binders (Column 2, Lines 55 – 57).
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to polyurethane dispersions in which silica sols are provided.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764