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 Rejections - 35 USC § 103
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 factual inquiries 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bai et al. (US 2019/0127617 A1, “Bai”) in view of Wu et al. (WO 2018/140116 A1, “Wu”).
With respect to claims 1-4, Bai discloses a two-component solventless adhesive composition (Abstract, [0001], [0007]) comprising an isocyanate component ([0010]) and a polyol component ([0030]). The polyol component comprises 2-45 wt% polyester polyol ([0019]) and 5-45 wt% polyether polyol ([0022]). The polyester polyol is a polycondensate of a diol and a dicarboxylic acid, where the dicarboxylic acid includes aliphatic dicarboxylic acids ([0016-0018]), which would necessarily form an aliphatic polyester polyol. The polyether polyol includes polypropylene glycol ([0021]). The weight ratio of the isocyanate component to the polyol component is 1:1 to 5:1 ([0040]), which overlaps the presently claimed range of 100:100 (i.e., 1:1) to 100:80 (i.e., 1.25:1).
However, Bai does not disclose wherein the polyol component includes an amine-initiated polyol having the claimed structure and present in the claimed amount.
Wu teaches a two-component solventless polyurethane adhesive composition that includes an isocyanate component and an isocyanate-reactive component including an amine-initiated polyol (page 3, line 24-page 4, line 3). The amine-initiated polyol has the structure shown below, where R1, R2, and R3 are each independently a linear or branched alkyl group including C1-C6 linear or branched alkyl groups (page 7, line 23-page 8, line 3) and is present in an amount of 0.2-30 wt% (page 8, lines 19-23). The amine-initiated polyol provides an adhesive composition having a significantly faster reactivity profile (page 13, lines 3-5). The isocyanate-reactive component further includes additional polyols, such as polyester polyols and polyether polyols (page 7, lines 14-19). The mix ratio of the isocyanate component to the isocyanate-reactive component is 100:100 (1:1) to 100:80 (1.25:1) (page 10, lines 11-15).
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Amine-initiated polyol structure
Bai and Wu are analogous inventions in the field of solventless two-component polyurethane adhesives made from an isocyanate component and a polyol component containing polyether polyols and polyester polyols.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyol component of Bai to contain 0.2-30 wt% of the amine-initiated polyol having the structure taught by Wu in order to provide a two-component solventless adhesive composition having a significantly faster reactivity profile (Wu, page 13, lines 3-5).
Response to Arguments
Due to the amendment to claim 2, the 35 U.S.C. 112(b) rejection of claim 2 is withdrawn.
Applicant's arguments filed 22 April 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the claimed two-component solventless laminating adhesive composition exhibits high lamination speeds in a one-shot lamination process while maintaining good quality with no visual defects; Applicant points to the Examples of the specification for support. Applicant argues the comparative examples containing no aliphatic polyester polyols exhibit inconsistent lamination speeds, and that the use of an aliphatic polyester polyol is a critical distinguishing feature. Applicant argues Bai does not explicitly disclose a two-component solventless laminating adhesive containing an aliphatic polyol, and that Bai is silent regarding the specific composition and its effects. Applicant argues Bai provides a generic disclosure of polycondensates but does not specifically describe the use of an aliphatic polyester polyol, such that one of ordinary skill in the art would not have arrived at the claims based off the teachings of Bai. Applicant further argues Bai provides no motivation or guidance to select the claimed combination in order to achieve the claimed advantages. Applicant additionally argues Wu does not cure the alleged deficiencies of Bai, and argues that Wu addresses a different problem than Bai. Applicant argues one of ordinary skill in the art would recognize that replacing or modifying the isocyanate prepolymer in Bai with the amine-initiated polyols of Wu would alter the adhesive’s performance profile. Applicant further argues Wu avoids premixing, while Bai is drawn to premixing, such that one of ordinary skill in the art would recognize that the teachings of Bai and Wu are incompatible. The examiner respectfully disagrees.
In response to Applicant’s argument that they have discovered unexpectedly superior results and their reliance on the Examples of the specification for support, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the data relates to a specific polyol component comprising 14.83 wt% BESTER™ 101, 9.40 wt% ISONATE™ M 125, 50.75 wt% VORANOL™ CP755, 10.82 wt% IP 9001, 4.00 VORANOL™ CP450, and 10.20 wt% SPECFLEX ACTIVE™ 2306 (instant specification, page 18, Table II; page 19, lines 11-14). However, the present claims broadly allow for any polyol component comprising any amount of any amine-initiated polyol, any amount of any aliphatic polyester polyol, and any amount of any polyether polyol.
Secondly, the data relates to specific isocyanate components being SYMBIEX™ 100 or SYMBIEX™ 200 (instant specification, page 20, Table III). However, the present claims broadly allow for any isocyanate component comprising any isocyanate.
Thirdly, the data relates to the components being present in specific amounts of 1.0 g/m2 on the laminate, whereas the present claims broadly allow for any amount of the components.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “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 occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Bai does not explicitly disclose a two-component solventless laminating adhesive containing an aliphatic polyol and only generically discloses the use of polycondensates, this is not found persuasive. The examiner acknowledges that Bai does not explicitly disclose the polyester polyol is an aliphatic polyol. However, Bai discloses the polyester polyol is a polycondensate of a diol and a dicarboxylic acid, where the dicarboxylic acid includes aliphatic dicarboxylic acids ([0016-0018]), which would necessarily form an aliphatic polyester polyol. Further, Applicant has provided no evidence (i.e., data) demonstrating the polycondensate polyester polyol of Bai made from an aliphatic dicarboxylic acid and a diol would not form an aliphatic polyester polyol. It is noted that “the arguments of counsel cannot take the place of evidence in the record”. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
In response to Applicant’s argument that Bai does not provide motivation or guidance to select the claimed combination and does not recognize the effects of using an aliphatic polyol, this is not found persuasive. Given that Bai does disclose an aliphatic polyester polyol as set forth above, it would have been obvious to one of ordinary skill in the art to use any polycondensate disclosed by Bai, including an aliphatic polyester polyol, absent evidence to the contrary. Further, while Bai may not exemplify an aliphatic polyester polyol, Applicant must “look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). Bai does not have to explicitly disclose the same technical advantages to meet the present claims. Additionally, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to Applicant’s argument that Wu does not remedy the alleged deficiencies of Bai, that Bai and Wu address different problems, that incorporating the amine-initiated polyol of Wu in the composition of Bai would alter the adhesive’s performance profile, that Wu avoids premixing while Bai is drawn to premixing, and that one of ordinary skill in the art would recognize that Bai and Wu are incompatible, these arguments are not found persuasive. In response to Applicant’s argument that Wu does not remedy the alleged deficiencies of Bai, this is not persuasive because Bai does not contain the alleged deficiencies for the reasons set forth above. In response to Applicant’s argument that Bai and Wu address different problems, this is not found persuasive. Both Bai and Wu are drawn to two-component solventless polyurethane adhesives (Bai, Abstract, [0006]; Wu, Abstract, page 1, lines 8-10). Further, both Bai and Wu disclose keeping the polyol and isocyanate components separate before being brought into contact with each other (Bai, [0041]; Wu, page 11, lines 2-7); while the method of contacts the two components may vary, the fact remains the two components are eventually mixed and react with each other, forming a final product. It is also noted that Applicant is claiming a product and not a method. Further, Applicant has provided no evidence (i.e., data) demonstrating that incorporating the amine-initiated polyol of Wu into the composition of Bai would alter the adhesive’s performance profile or even render the combination of references inoperable. Regardless, since the polyol component and isocyanate component are kept separately until the laminate is formed, it is the examiner’s position that change to the adhesive’s performance profile, if any, would be negligible.
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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