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 .
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.
Claims 6-7 are 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.
Regarding claim 6, the examiner does not find any teaching or suggestion in the original disclosure or claims of the broadened range of an acrylic polymer having an average molecular weight of from about 20,000 to about 250,000. The original disclosure teaches 20,000 to 250,000, but does not teach the currently claimed range broadened by instances of “about”. See Applicant’s published application (paragraph 17). Accordingly, Applicant was not in possession of this newly claimed range at the time the application was filed.
Regarding claim 7, the newly claimed range of about 20,000 to about 250,000 was not in Applicant’s possession at the time the application was filed for the same reasons provided above with respect to claim 6.
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.
Claim 20 is 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.
Regarding claim 20, the limitation “another polyether polyol” implies a first polyether polyol. However, no such first polyether polyol is recited in claim 20 or amended parent claim 1. Accordingly, it is unclear if a first polyether polyol is required and/or there is insufficient antecedent basis for the first polyether polyol implicitly indicated by the above limitation.
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 1-15 and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Qin (WO 2019/060658 A1) in view of either one of Gilch (US 4618651) or Bae (US 2017/0066950 A1), and further in view of Krebs (US 5965662).
Regarding claim 1, Qin teaches a moisture reactive polyurethane hot melt adhesive composition that is the product of a mixture comprising a reaction product of a mixture comprising a polyester polyol prepared from a diacid and a diol; wherein a structure of the diacid is HOOC-(CH2)m-COOH; a structure of the diol is HO-(CH2)n-OH; a sum of (m + n) is equal to 8; a polyisocyanate; an inorganic filler; and a thermoplastic polymer (Abstract; paragraphs 8, 12-15, 16-17, 31 and 36-38; Table 1).
Qin differs from claim 1 in that:
i. Qin does not recite the polyester polyol has an acid number of the polyester polyol is less than 0.9
ii. Qin does not teach a MA-SCA acid present in an amount of from 50 ppm to 300 ppm.
(i) Qin is silent as to the acid number. However, in the art of moisture reactive polyurethane hot melt adhesive, Gilch suggests a polyester polyol with an acid number of 0.35 as being suitable for reaction with a diisocyanate to form the adhesive prepolymer (column 9, lines 21-31). Alternatively, in the art of moisture reactive polyurethane hot melt adhesive, Bae teaches polyols with low acid numbers are preferred and desired acid numbers are readily achieved by driving the reaction to completion, and one may also provide acid scavenger (paragraph 37). Bae further suggests an acid number of less than 5 mg KOH/g (0.005 g KOH/g), which corresponds to an acid number (number of acid groups per molecule) of about 0.3 for the polyester polyols suggested by Qin, which have a molecular weight of about 3500 (Table 1; 0.005 ÷ 56.1 × 3500, where 56.1 is the molar mass of KOH, and 0.005 is the acid number in g KOH/g). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in Qin because one having ordinary skill in the art would have been motivated to use a known suitable acid number for the polyester polyol, as suggested by the teachings of either one of Gilch or Bae.
(ii) Qin suggests stabilizer, but does not recite an MA-SCA such as phosphoric acid or an amount in the claimed range. In the art of moisture reactive polyurethane hot melt adhesives, Krebs teaches phosphoric acid is a suitable stabilizer and is provided in amounts of 0.01 to 0.1 wt%, which corresponds to 100 to 1000 ppm (column 7, lines 42-49; column 8, lines 1-2; claims 55 and 57). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Qin because one having ordinary skill in the art would have been motivated to use a known suitable stabilizer in a known suitable amount, as suggested by the teachings of Krebs.
Claim 2 is satisfied for the reasons provided above.
Regarding claim 3, Qin clearly teaches these additional limitations (paragraph 31).
Regarding claim 4, Qin teaches polybutylene adipate diol (Table 1).
Regarding claims 19 and 5, Qin teaches additional polyether glycol polyether polyol (paragraphs 8 and 39).
Regarding claim 6, Qin clearly teaches these additional limitations (paragraph 38).
Regarding claim 7, Qin teaches at least one acrylic polymer (paragraph 51) and indicates the molecular weight may be well within the claimed range (paragraph 38). There is no indication that the molecular weights of the acrylic polymers must be the same. To the contrary, Qin suggests different acrylic polymers with different molecular weights (paragraph 38). The examiner’s position is that these teachings reasonably suggest that different acrylic polymers with different molecular weights may be used.
Regarding claims 8-12 and 15, Qin clearly teaches these additional limitations (paragraphs 18, 36-38 and 41; claim 13).
Claims 13-14 are satisfied for the reasons provided above.
Claim 19 is addressed above.
Regarding claims 20-23, Qin clearly teaches these additional limitations (paragraphs 8, 15 and 18).
Response to Arguments
Applicant's arguments filed 24 October 2025 have been fully considered but they are not persuasive.
Applicant argues Gilch and Bae do not teach the claimed MA-SCA acid in the claimed range. In response, Krebs was relied upon for suggesting these limitations. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues Krebs teaches 100 to 1000 ppm MA-SCA acid and the claimed MA-SCA acid range of 50 to 300 ppm is critical for achieving desired adhesiveness. Applicant points to inventive Example 2 and comparative Example 3 in Table 3 of the specification. In response, the evidence of unexpected results is insufficient to overcome the prima facie case of obviousness. First, there are no examples just below 50 ppm, at 50 ppm, and intermediate values between 50 and 300 ppm to show that the lower end of the critical range is at 50 ppm. Second, there are no examples just above 300 ppm and intermediate values to show that the upper end of the critical range is at 300 ppm. Moreover, poor adhesiveness is seen in examples 5 and 8 with 300 ppm MA-SCA acid. No explanation is provided in the arguments as to this inconsistency with the argument that 50 to 300 ppm is critical for achieving desired adhesion.
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 A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745