DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Claim 29 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/6/26.
Applicant's election with traverse of Group I, claims 16-28, in the reply filed on 2/6/26 is acknowledged. The traversal is on the ground(s) that Sanz fails to teach the claimed structural adhesive (see Response to Election of 2/6/26 and Requirement for Restriction of 12/15/25). This is not found persuasive because, as described in the rejection below, Omachi teaches the claimed two-component polyurethane structural adhesive composition.
The requirement is still deemed proper and is therefore made FINAL.
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 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.
Claim(s) 16-21 and 23-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Omachi et al. (PCT/JP2020/004413, for which the English language equivalent application US 2022/0089871 will be used as the citation copy).
Regarding claim 1, Omachi teaches a polyurethane adhesive ([0091], may be a two component system) that may consist of first and second components (i.e., components A and B, [0021] – [0023], [0091] corresponding to NCO components and hardener components), each of which may be considered to comprise further components ([0021] – [0023], [0040], [0071], [0080] – [0085]). This components may have a subcomponent having a molecular weight on the range of from 50 to 2000 g/mol (e.g., [0036]). The components may include aliphatic amines to be reacted with diisocyanate components (e.g., [0030] – [0034]). The amount of bis-urea compound may be on the range of up to 10% for each component ([0060] – [0062], [0038], [0039]). Omachi teaches the inclusion of plasticizers in amounts of from 0 to 50% of the total weight of the curable composition (including alkyl phthalates, [0082], [0083]). However, fillers may be incorporated in an amount of from 10% by mass to 70% by mass ([0081]). Therefore, the amount of plasticizer based on the amounts of NCO component (i.e., components A of Omachi) and the hardener composition (i.e., component B of Omachi) would read on the presently claimed range of greater than 60% by weight. It should be noted that claim 16 includes product-by-process limitations. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113. Omachi teaches that the components may be reacted and blended in manners convention in the art. It therefore would have been obvious to the ordinarily skilled artisan to have reacted the components in such a way as to arrive at a two-component polyurethane structural adhesive composition (see [0091] – [0093]).
Regarding claim 17, Omachi additionally teaches the inclusion of diisocyanates as a polyisocyanate (e.g., [0033], [0034]).
Regarding claims 18 and 19, Omachi additionally teaches the inclusion of triisocyanates, or biuret adducts of diisocyanates ([0033], [0034], including biuret modified diisocyanates such as hexamethylene diisocyanate).
Regarding claims 20 and 21, Omachi additionally teaches that the hardener may comprise a polyol having a hydroxyl functionality of from 1.5 to 4 (e.g., [0037], including a polyol having hydroxyl functionality of from 1.5 to 4; and see also component B, [0054] – [0057], having hydroxyl number on the range of from 2 to 8).
Regarding claim 23, Omachi additionally teaches that the bis-urea may be made by reading an n-alkylamine ([0030], e.g., ethylenediamine), with a diisocyanate reading on the claimed formula II ([0034], including isophorone diisocyanate).
Regarding claim 24, Omachi additionally teaches that the plasticizer may be diisodecyl phthalate ([0082], [0083]).
Regarding claims 25 and 26, Omachi teaches that the urea-bis prepolymer may be included in an amount of from 10 to 80% by weight of the total curable composition ([0039]) and the content of the urethane prepolymer (B) may be on the range of up to 10% by mass ([0061]). Omachi teaches the inclusion of plasticizers in amounts of from 0 to 50% of the total weight of the curable composition (including alkyl phthalates, [0082], [0083]). However, fillers may be incorporated in an amount of from 10% by mass to 70% by mass ([0081]). Therefore, the amount of plasticizer based on the amounts of NCO component (i.e., components A of Omachi) and the hardener composition (i.e., component B of Omachi) would read on the presently claimed range of greater than 60% by weight.
Regarding claim 27, Omachi additionally teaches that alumina may be generally included and thus would have been obvious to have included such a powder, including as a filler powder, in the hardener or other component of the (see [0071], describing latent curing agent including alumina, [0078] – [0082]).
Regarding claim 28, Omachi additionally teaches the inclusion of various fillers, including mineral fillers, and thus their inclusion in a hardener component in order to improve the physical properties thereof would have been obvious to the ordinarily skilled artisan ([0080] – [0082]).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Omachi as applied to claim 16, above, and further in view of Sophiea et al. (US 2016/0297918, “Sophiea”).
Regarding claim 22, while Omachi teaches the components of the urethane composition may include polyols (e.g., [0022], [0029], [0037]), Omachi fails to teach the claimed polyether polyol components. However, such polyol components are known to be included in isocyanate prepolymer compositions for the formation of urethane adhesives (see Sophiea, [0030], [0031], [0006]). For example, Sophiea teaches to include polyether polyol components ([0023] – [0028]) in order to create isocyanate terminated prepolymers ([0023] – [0025]), that these polyols may be included in combination ([0023] – [0028]), and that they may have varying molecular weights on the range of from 200 to 8000 g/mol ([0026], and generally [0023] – [0028]). These polyol components are conventional in the art and are known to contribute to desired properties of a urethane adhesive (e.g., [0022], [0006], [0035]) and thus their use as specific polyol components in the adhesive of Omachi would have been obvious to the person of ordinary skill in the art at the time of filing (e.g., [0022], [0006], [0035], [0023] – [0028]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron 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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/ANTHONY J FROST/Primary Examiner, Art Unit 1782