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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation wherein the first polyol is derived from a polyol having at 3 hydroxyl groups is not supported by the instant specification. The specification teaches polyols having 3 hydroxyl groups. The specification teaches trimethylolpropane, which has 3 hydroxyl groups. The specification teaches a reaction product of linoleic acid and trimethylolpropane. However, the preparation of the first polyol component from at least one saturated or unsaturated fatty acid and any type of polyol having at least 3 hydroxyl groups is not supported.
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.
Claims 7 and 8 are 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. The claims fail to limit the first polyol component, in particular, with regards to the formula 1 of instant claim 1. 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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2017/0204310 to Ostlund et al.
As to claims 1, 7-8, and 12-14, Ostlund discloses a one-part polyurethane adhesive comprising the reaction product of 4,4-MDI and a polyol mixture comprising a first polyol obtained by reacting soybean oil with pentaerythritol and a second polyol, preferably polypropylene glycol (Examples 1-4) and a filler (0017). The adhesive force of to polyethylene is 148.2 or 574 g/25mm (Table 1, Examples 1-2).
As to claims 3-5, Ostlund discloses a polyurethane polymer derived from the polyol component that is used as an adhesive for aluminum substrates (0079). Ostlund further teaches adhesive properties relating to adhesion force. Ostlund is silent with respect to the claimed properties. However, the reference teaches the same reaction components used within amounts taught by the instant specification. Accordingly, the properties would be inherently present.
As to claim 9, Ostlund discloses a molecular weight of the first polyol of 558 g/mol (56,100 x 2 (functionality) / OH number).
As to claims 10-11, Ostlund discloses the use of additional polyols with more than 3 hydroxyl groups with molecular weights that range from 100 to 5,000 g/mol (0064).
As to claim 15, Ostlund discloses the addition of plasticizers to the composition (0017).
Claim Rejections - 35 USC § 103
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2017/0204310 to Ostlund et al.
As to claims 2-5, Ostlund discloses a one-part polyurethane adhesive comprising the reaction product of 4,4-MDI and a polyol mixture comprising a first polyol obtained by reacting soybean oil with pentaerythritol and a second polyol, preferably polypropylene glycol (Examples 1-4) and a filler (0017). The adhesive force of to polyethylene is 148.2 or 574 g/25mm (Table 1, Examples 1-2). However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. adhesive properties. 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.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2017/0204310 to Ostlund et al. in view of U.S. Patent Pub. No. 2019/0309207 to Kang et al.
As to claims 16-17, Ostlund discloses a one-part polyurethane adhesive comprising the reaction product of 4,4-MDI and a polyol mixture comprising a first polyol obtained by reacting soybean oil with pentaerythritol and a second polyol, preferably polypropylene glycol (Examples 1-4) and a filler (0017). The adhesive force of to polyethylene is 148.2 or 574 g/25mm (Table 1, Examples 1-2).
Ostlund fails to teach the preferred fillers and wherein the fillers are present in the polyol component and the curing component.
However, the use of alumiumin nitride or boron nitride within polyurethane adhesives wherein the fillers may be added to the polyol component or the polyisocyanate component was known at the time of invention. This is supported by Kang (0036-0040).
At the time of filing it would have been obvious to a person of ordinary skill in the art to add the fillers taught in Kang to the composition of Ostlund to obtain desired physical properties of the adhesive and provide improved insulation (0037). As to claim 18, Ostlund in view of Kang teach the use of polyurethane cured adhesives adjacent to heat-generating components (0067, Kang).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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