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 with respect to independent claim 1 and all dependent claims 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.
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 1-14, 18, 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:
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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 9, Das teaches an acrylic thermoplastic polymer (Paragraph [0069]) and the resulting product will be the same regardless of the location of the polymer and filler prior to combining the reactants. Therefore Das teaches on the limitations of claim 9.
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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762