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 .
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive.
The Applicant argues that examples 47-52 indicate that the location of the sulfonyl isocyanate prior to the reaction significantly impacts structure and stability of the final product.
The Examiner acknowledges the examples indicate that the importance of structure and stability in the final product. However, examples 47-52 are not commensurate in scope with the claims.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Example 47 teaches a polyol A3, the sulfonyl isocyanate PTSI, and the filler A. (Page 50, (Table)).
Example 50 teaches a polyol A1, sulfonyl isocyanate chlorosulfonyl isocyanate (CSI). and the filler A. (Page 50, (Table)).
Claim 1 can include any polyester polyol, A1 and A3 are two specific polyester polyols. A1 is a butane diol adipic acid polyester polyol with a number average molecular weight of 5,000 and acid number of 1.44. A3 is also a butane diol adipic acid polyester polyol with a number average molecular weight of 5,000 and acid number of 1.28.
Any other polyester polyol which can comprise different repeat units, a different molecular weight and a different PDI also falls under the scope of claim 1, while A1 and A3 teach very similar polyester polyols seemingly only differing by acid number. Therefore, A1 and A3 do not encompass the scope of polyester polyols in claim 1.
The filler of claim 1 encompasses any type of filler while the examples 47 and 50 only teach calcium carbonate.
The sulfonyl isocyanate of claim 1 encompasses any sulfonyl isocyanate while examples 47 and 50 only teach two different sulfonyl isocyanate compounds chlorosulfonyl isocyanate (CSI) and PTSI.
The Examiner highly recommends the inclusion of additional data, arguments that indicate the examples are representative of the entire claim scope, and/or amended claims that can indicate the data in the examples in commensurate in scope with the claims.
Claim Rejections - 35 USC § 103
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 1-8, 10-14, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Das US 20160251552 A1 as evidenced by PTSI, IMPAG Australia, in view of Smits US 20180355092A1.
Regarding claims 1-3, and 23, Das teaches a moisture curable hot melt adhesive composition (Abstract).
Das teaches the composition comprises a reaction product of an amorphous polyester polyol (Abstract).
Das teaches the composition also has the reaction product of a comprises a crystalline polyester polyol. (Abstract). Das also teaches the composition comprises a polyisocyanate (Abstract).
Das also teaches the composition can comprise a thermoplastic polymer (Paragraph [0069]).
Das also teaches the composition comprises filler (Paragraph [0068]).
Das teaches the composition can comprise a stabilizer (Paragraph [0068]) However Das is silent on the stabilizer being a sulfonyl isocyanate.
Smits teaches a composition comprising a reaction product of at least one polyester polyol and a polyisocyanate (Paragraph [0086, Paragraph [0087]). Smits also teaches more than one polyol can be used (Paragraph [0105]). Smits also teaches the composition comprises a filler (Paragraph [0124]). Smits also teaches the composition is a polyurethane adhesive (Paragraph [0140]). Smits teaches the composition can be used in electronic applications (Paragraph [0140]). Smits also teaches the composition can comprise a stabilizer (Paragraph [0122]). Smits teaches the composition can comprise both the stabilizer toluene sulfonyl isocyanate in addition to a moisture stabilizer such as a carbodiimide stabilizer (Paragraph [0122]).
Das teaches the adhesive composition can be used in electronic applications (Paragraph [0092]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Das and Smits and use the toluene sulfonyl isocyanate of Smits as the stabilizer of Das because this represents a stabilizer used in suitable for use in compositions and applications similar to Das. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Additionally, Smits notes that a the carbodiimide stabilizer can be used in addition to the toluene sulfonyl isocyanate stabilizer (Paragraph [0122]). Das references an example of a stabilizer being the carbodiimide stabilizer (Paragraph [0072]). It would have been obvious to use the sulfonyl isocyanate stabilizer of Smits with the carbodiimide stabilizer of Smits and Das in the composition of Das as this stabilizer is known to be suitable to use with the carbodiimide stabilizer.
Das does not teach that the components are combined in the order described in claims 1 to 3, and 23. However, the product will be formed from the same reactive components (polyols and polyisocyanate), and the location of non-reactive components like stabilizers prior to reaction will not impact the structure of the final product. Therefore Das teaches on the limitations of claims 1 to 3 and 23.
Regarding claim 4, Das teaches the crystalline polyester polyol is a reaction product of a polyacid and a polyol (Paragraph [0045]). Das teaches the polyacid can be succinic acid (Paragraph [0045]). It would have been obvious to select succinic acid as the poly acid because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Succinic acid has 4 carbon atoms. This falls within the claimed range of 2-8 carbons. Das teaches the polyol can be 1,8 octanediol (Paragraph [0045]). It would have been obvious to select 1,8 octanediol as the polyol because is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. 1,8 octanediol has 8 carbon atoms. This falls within the claimed range of 2-8 carbons.
Regarding claim 5, Das teaches the crystalline polyester polyol can have a molecular weight of 1,000-6,000 (Paragraph [0042]). A polyester polyol that is a reaction product of octanediol and succinic acid would have structure of:
PNG
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96
273
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where R is an alkyl chain with 8 carbons.
It would have been obvious to select a polyester polyol that is a reaction product of 1,8 octane diol and succinic acid because is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed structure of Formula 1 where m=8, n =2, and p=8. Das does not teach the number of repeat units of the amorphous polyester polyol. However, Das does teach that the composition can have a molecular weight of 100-6,000. This corresponds to a number of repeat units of 4-26. This overlaps with the claimed range of 9-55.
Regarding claim 6, Das teaches the composition can also comprise an organofunctional silane (Paragraph [0076]). This reads on the claimed organosilane.
Regarding claim 7, Das teaches a filler in amounts up to about 10 wt% (Paragraph [0074]). This overlaps the claimed range of about 10 to about 50 wt%.
Regarding claim 8, Das teaches the thermoplastic polymer can be derived from acrylic acid (Paragraph [0069]). This reads on the claimed “acrylic polymer.”
Regarding claim 10, Das teaches the composition can comprise a polyether polyol and that the polyether polyol can be polypropylene glycol (Paragraph [0056]).
Regarding claim 11, Das teaches the composition comprises a polyurethane prepolymer with an isocyanate functionality because Das teaches the reaction product of the polyester polyols and the polyisocyanate comprises the polyurethane composition (Paragraph [0060]).
Regarding claim 12, Das teaches the composition comprises a catalyst (Paragraph [0063]). This reads on the claimed catalyst.
Regarding claim 13, Das teaches the catalyst can be 2,2'-dimorpholinoethylether, (Paragraph [0063]). This reads on the claimed “2,2'-dimorpholinoethylether.”
Regarding claims 14 Das and Smits are silent on the sulfonyl isocyanate comprising an acid scavenging and moisture scavenging functionality. Toluene sulfonyl isocyanate is well known as a moisture scavenger (PTSI, Page 1). It is also known to bind and neutralize free acids (PTSI, Page 1). This reads on the claimed “acid scavenging.”
Regarding claims 24 and 25, Smits teaches the sulfonyl isocyanate is toluene sulfonyl isocyanate. Smits is silent on whether or not the sulfonyl isocyanate is p-toluene sulfonyl isocyanate. However, Smits’ teaching of toluenesulfonyl isocyanate amounts to disclosure of a genus consisting of three species (o-, m-, and p-toluenesulfonyl isocyanate), one of which reads on the claimed species. It would have been obvious to one of ordinary skill in the art at the time of filing to select the p-isomer based on the very limited number of species in the prior art genus and the art-recognized suitability for all compounds within that genus.
Additionally, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. Compounds which are positional isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09. This reads on the claimed “p-toluene sulfonyl isocyanate.” This also reads on the claimed structure of Formula 3 where R is an aryl group.
Claims 26 are rejected under 35 U.S.C. 103 as being unpatentable over Das US 20160251552 A1 as evidenced by PTSI, IMPAG Australia, in view of Smits US 20180355092A1 in further view of Schmider US 20180346775
Regarding claims 26, Das and Smit are silent on the amount of stabilizer to use in the composition. Schmider teaches a polyurethane hot melt adhesive composition comprising a polyester polyol (Abstract) and a thermoplastic polymer (Paragraph [0065]) a filler (Abstract) and an additive including a stabilizer (Paragraph [0065]). Schmider teaches the amount of additive in the composition is 5% or less (Paragraph [0064]). It would have been obvious to one of ordinary skill in the art at the time of filing to employ the amount of stabilizer used in Schmider as a guideline or target when forming the adhesive of Das in view of Smit, as this range is shown to be suitable amount for stabilizers in similar hot melt adhesive compositions. This represents the use of a suitable amount of stabilizer in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Das teaches the use of two stabilizers.
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, it would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the stabilizers in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Schmider teaches the stabilizer component is present in a total amount of 5% or less (Paragraph [0064]). Combining carbodiimide stabilizer and the sulfonyl isocyanate stabilizer in a 1:1 ratio will therefore result in a composition comprising 2.5% carbodiimide stabilizer and 2.5% sulfonyl isocyanate stabilizer. This range overlaps with the claimed range of sulfonyl isocyanate.
Conclusion
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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