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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claim 1-17, in the reply filed on 22 September 2025 is acknowledged.
Claim Interpretation
Regarding claims 4-5, the bonding agent implicitly has a total weight. Accordingly, while the total weight of the bonding agent is not previously recited, it is still considered to have sufficient antecedent basis. Applicant may prefer --a total weight-- since this is the first use of the term.
Regarding claim 7, the PVB implicitly has polyvinyl acetate content, polyvinyl alcohol content, acetal content and a total weight. Accordingly, even though these terms are not previously recited, they are considered to have sufficient antecedent basis. Applicant may prefer to precede each of these terms with --a-- instead of “the” since this is the first use of each of these terms.
Regarding claims 9-11, as noted above, the PVB implicitly has a total weight, and Applicant may prefer --a total weight of the PVB-- since this is the first use of this term.
Regarding claim 13 and 16-17, a solvent mixture implicitly has a total weight. Accordingly, even though this term is not previously recited, it is considered to have sufficient antecedent basis. Applicant may prefer to precede this term with --a-- instead of “the” since this is the first use of this term.
Claim Objections
Claims 2, 7-8 and 10-11 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 2, the unit of “hPA” should be corrected to --hPa--.
Regarding claim 2, the spelling of “vapour” should be corrected to --vapor--.
Regarding claims 7 and 10, the claims use the abbreviation PVB for polyvinylbutyral. The examiner suggests inserting --(PVB)-- after “polyvinylbutryal” in claim 1 to improve the claim readability by explicitly defining this abbreviation for the dependent claims.
Regarding claim 8, this claim lacks a period at the end of the claim. See MPEP 608.01(m).
Regarding claim 11, the unit of “g/l” should be corrected to --g/L--.
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 2, 4-6, 8, 10-11, 14 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.
Regarding claim 2, the phrases “more preferably” and “particularly preferably” make it unclear if the limitations of at least 10 hPa and at least 20 hPa are required.
Regarding claims 4-6, parent claim 1 already indicates the bonding agent comprises phenolic resole resin. It is unclear why these claims again recite the bonding agent comprises phenolic resole resin. This also makes it unclear if the previously recited phenolic resole resin is being referenced in claims 4-6. The examiner suggests more clearly indicating an amount of the phenolic resole resin is 5 to 20 wt% based on the total weight of the bonding agent (claim 4), 7 to 15 wt% based on the total weight of the bonding agent (claim 5) and 11-12 wt% (claim 6), respectively.
Regarding claim 5-6, it is unclear if “phenolic resin” is referencing the previously recited phenolic resole resin. The examiner suggests consistently using --phenolic resole resin-- to more clearly reference previously recited terms.
Regarding claim 8, there is insufficient antecedent basis for “the acetal”. This term is not previously recited. It is also unclear if “the acetal” is referring to acetal groups in the previously recited PVB.
Regarding claim 10, it is unclear if (m) and (l) are attempting to reference the chemical formula of claim 7. Claim 10 is dependent on claim 1. Claim 1 does not include this chemical formula.
Regarding claim 11, it is unclear if 210 g/L is correct. This density is very different than typical PVB density values of about 1.1 g/cm3, equivalent to about 1100 g/L.
Regarding claim 14, it is unclear if the group “selected from xylenes, toluene and ethyl benzene” is a closed group, i.e. it is unclear if the group is limited to the recited elements. If the group is open, then it is indefinite because it is unclear what elements are included in the group. The examiner suggests using --selected from the group consisting of-- to clearly indicate a closed group.
Claim Rejections - 35 USC § 102
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 1-2 and 12-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Putten (US 2966475).
Regarding claim 1, Putten teaches a bonding agent comprising (1) a phenolic resole resin, (2) polyvinyl butyral (PVB), and a solvent capable of solvating the ingredients (1) and (2), while being sufficiently volatile to be removed at atmospheric pressure (column 1, lines 16-72; column 2, lines 1-7). It is noted that Putten’s alternative of the one-stage condensate reaction of phenol and excess formaldehyde (column 1, lines 61-68) indicates a phenolic resole resin. As to the intended use recited in the preamble of bonding castable polyurethane and/or polyamides, this intended use does not distinguish over the composition of Putten since Putten teaches the claimed components. Given that Putten teaches the claimed components and is directed to a bonding agent, Putten is considered capable of being used for bonding castable polyurethane and/or polyamides.
Regarding claim 2, Putten teaches ethyl alcohol as the solvent, which has a vapor pressure well within the claimed range.
Regarding claims 12-17, these claims further limit the solvent mixture alternative of claim 1. The solvent mixture is not required. This rejection relies upon the solvent alternative. Accordingly, these claims are satisfied for the reasons provided above.
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.
Claims 1-2 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Putten as applied to claims 1-2 and 12-17 above, and further in view of Gillern (US 4264671).
Regarding claim 1, above the examiner took Putten’s one stage condensate reaction to indicated a phenolic resole resin. Here, Gillern is applied to satisfy the claimed phenolic resole resin.
Putten differs from claim 1 in that:
i. Putten does not explicitly recite the phenolic resin is a phenolic resole resin.
(i) As noted above, Putten suggests the phenolic resin may be produced in a one step reaction with excess formaldehyde. Gillern teaches a phenolic resole resin produced in such a reaction with excess formaldehyde useful in adhesive compositions (column 1, lines 6-10; column 9, line 57 to column 10 line 68). It would have been obvious to one having ordinary skill in the art at the time the application was filed to use the phenolic resole resin of Gillern as the phenolic resin of Putten because one having ordinary skill in the art would have been motivated to a known suitable phenolic resin for adhesive compositions, as suggested by the teachings of Gillern.
Claims 2 and 12-17 are satisfied for the reasons provided above.
Claims 7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Putten as applied to claims 1-2 and 12-17 above, and further in view of Ronay (US 3308008), and optionally further in view of Gillern, and optionally further in view of Song (US 2017/0355871 A1).
Claim 1 is satisfied by Putten as applied to claims 1-2 and 12-17 above, or alternatively, by Putten in view of Gillern as applied to claims 1-2 and 12-17 above.
Regarding claims 7 and 9-10, Putten does not recite details of the PVB component. However, Ronay is drawn to adhesive compositions comprising phenolic resin and PVB. Ronay suggests PVB with 70 to 90 wt% acetal content and 2 to 3 wt% polyvinyl acetate content (column 1, lines 11-72). Naturally the balance of about 7 to 28 wt% is the polyvinyl alcohol content. Song is optionally cited to show that the person of ordinary skill in the art would have understood the acetal, polyvinyl acetate and polyvinyl alcohol content of PVB to add up to 100 wt%. See Song (Abstract; paragraphs 4-9 and 24-29). Additionally, Song teaches commercially available PVB products with about 88 wt% acetal content, less than 2.5 wt% polyvinyl acetate content, and about 11.5 to 13.5 wt% or about 11 to 13.5 wt% polyvinyl alcohol content (paragraph 28). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these PVB limitations in Putten because one having ordinary skill in the art would have been motivated to use known suitable PVB materials as suggested by Ronay optionally in view of the teachings of Song, or because one having ordinary skill would have been motivated to use a commercially available PVB falling within the component contents suggested by Ronay, as evidenced by the teachings of Song.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 4-6, 8 and 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claims 3-5 and 11, the closest prior art of record is applied above. In combination with the claimed limitations, no teaching or suggestion was found in the prior art of record to provide the additional limitations of these claims. Regarding claim 3, none of the prior art of record teaches or suggests the additional combined limitations of claim 3. Regarding claims 4-5, Putten suggests a significantly higher phenolic resin content than what is claimed. See Putten (column 2, lines 31-35). Ronay also suggests a phenolic resin content higher than what is claimed (column 3, lines 30-35). Moreover, Ronay is particularly drawn to novolac phenolic resin rather than phenolic resole resin (column 2, lines 4-8). Regarding claim 11, none of the prior art of record teaches or suggests the additional combined limitations of claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745