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
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 4,954,199 to Rains et al. (Cited on IDS).
As to claims 1-9, Rains discloses a two component polyurethane adhesive comprising an isocyanate component (Mondur CR or Mondur MR) based on diphenylmethane diisocyanate having an NCO content of 30% or 31.5% (6:40-47) and a curing agent comprising a 75 parts of a dispersion polyol having an OH number of 28 (6:14-16) and 100 pbw of a glycerin initiated polyether triol having a molecular weight of 4,800 (6:25-27), 20 parts of glycerin, and 12 parts of 1,4-butanediol, 1,6-hexanediol, propylene glycol, or ethylene glycol (Table 3, Examples 15-25) reacted at an isocyanate index of 1 (See Examples).
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 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,954,199 to Rains et al. (Cited on IDS).
As to claim 10, Rains discloses a two component polyurethane adhesive comprising an isocyanate component (Mondur CR or Mondur MR) based on diphenylmethane diisocyanate having an NCO content of 30% or 31.5% (6:40-47) and a curing agent comprising a 75 parts of a dispersion polyol having an OH number of 28 (6:14-16) and 100 pbw of a glycerin initiated polyether triol having a molecular weight of 4,800 (6:25-27), 20 parts of glycerin, and 12 parts of 1,4-butanediol, 1,6-hexanediol, propylene glycol, or ethylene glycol (Table 3, Examples 15-25) reacted at an isocyanate index of 1 (See Examples). Rains discloses an overlapping range of glycerin of 0 to 50 parts by weight based on the total amount of hydroxy functional materials (2:47-66). It is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. It would therefore have been obvious that in this particular instance to use more glycerin that falls within the claimed range based on prior art presented that disclosed wherein increasing the amount of glycerin improves bond integrity of the adhesive (1:41-42, compare Table 1 vs. Table 3 lap shear values).
As to claim 11 with regard to the elastic modulus, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. elastic modulus would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763