Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Indefiniteness Rejection
2. 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.
3. Claims 1-20 are 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.
With respect to claim 1, it is unclear what definitive limitation is conveyed by the language, “as essential raw materials”.
Prior Art Rejection
4. 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.
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.
5. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/255844 A1 in view of Matsumura et al. (US 2014/0031500 A1).
WO 2020/255844 A1 discloses a curable composition that may be used as an adhesive comprising a blocked polyurethane prepolymer and an epoxy resin. The prepolymer is produced by reacting diisocyanate with a polyether polyol of 2000 to 4000 molecular weight, wherein additional polyol species may be employed that satisfy the instantly claimed branching agent. Blocking agents corresponding to those claimed are employed to block the prepolymer. Furthermore, curing agents and accelerators are disclosed that correspond to those claimed. See pages 1-9 of the provided translation.
6. The teachings of the primary reference differ from the instant claims in that the reference (1) fails to teach the use of polytetramethylene glycol as the polyether reactant, (2) fails to teach the use of a lower NCO/OH ratio to produce the prepolymer, and (3) fails to teach the claimed mole percent value of functional groups for the branching agent. Regarding difference (1), Matsumura et al. disclose the use of polytetramethylene glycol to produce prepolymers to be used in analogous adhesive compositions, wherein improved compatibility with the epoxy results and high strength and elongation result. See paragraph [0037] within the secondary reference. Regarding difference (2), Matsumura et al. disclose the use of the claimed lower NCO/OH ratio to produce prepolymer having more suitable viscosities and appropriate physical properties. See paragraph [0041], within the secondary reference. Accordingly, the position is taken that it would have been obvious to use polytetramethylene glycol and lower NCO/OH ratios to produce the prepolymer of the primary reference with the expectation that improved properties would result. Regarding difference (3), the position is taken that one would have been motivated to operate at the claimed levels, as opposed to lower ones, in situations, for example, where increased crosslink densities were desired.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765