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 .
Election/Restrictions
It is noted that Applicant did not affirm their election of Group I, claims 1-7 in the response filed 01/16/2026. Therefore, based on the telephonic restriction on 10/26/2025, the election is being treated as an election without traverse.
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on 01/16/2026 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the telephonic restriction on 10/26/2025.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. Patent No. 2020/0140729) in view of Shi et al. (WO 2020/124543).
Regarding claims 1, 4, and 5, Li et al. teaches a two-component polyurethane adhesive composition (See Abstract) comprising an isocyanate component and an isocyanate-reactive component, wherein the isocyanate-reactive component comprises a polyether polyol, i.e. polyol component, a phosphate ester adhesion promoter, and a bio-based polyol (paragraph [0021]), wherein the phosphate ester adhesion promoter comprises a phosphate ester-based polyol (paragraph [0024]), i.e. a phosphate modified polyol, and the bio-based polyol is a castor oil (paragraph [0025]) which is identical to that presently claimed and therefore hydrophobic. Li et al. further teaches wherein the isocyanate component comprises an isocyanate-terminated prepolymer, i.e. NCO-terminated prepolymer that is the reaction product of a polyisocyanate and a polyol component (paragraph [0013]) including polyester polyol (paragraph [0019]). Li et al. teaches the mix ratio, by weight, of the isocyanate component to the isocyanate-reactive component in the final adhesive composition can be from 100:50 to 100:70 (paragraph [0028]) which corresponds to 59% to 66% isocyanate component and 33% to 41% polyol component.
Li et al. fails to teach a dimer acid polyester polyol.
However, Shi et al. teaches a two-component adhesive composition comprising a reaction product of an isocyanate component and a dimer acid polyester polyol component (See Abstract, paragraph [0003]).
It would have been obvious to one of ordinary skill in the art to use a dimer acid polyester polyol component in the polyol component of Li et al. in order to impart sufficient bond strength and heat seal strength (Shi et al., paragraphs [0001]-[0002] and [00183]).
Regarding claims 2 and 3, Li et al. in view of Shi et al. teaches wherein the dimer acid polyester polyol component contains the reaction product of a reaction mixture including a dimer acid, a dicarboxylic acid, and a polyol (Shi et al., paragraph [0003]).
Regarding claim 6, Li et al. teaches the mole ratio of NCO groups present in the isocyanate component to OH groups present in the isocyanate-reactive component, i.e. an NCO Index, is from 0.8 to 1.6 (paragraph [0028]) which overlaps the claimed range of 1.15 to 1.30.
Regarding claim 7, Li et al. in view of Shi et al. teaches wherein the dimer acid has Structure (A) (Shi et al., paragraph [0050]).
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite isocyanate component comprising “a NCO-terminated prepolymer” and “wherein the isocyanate monomer and the dimer acid polyester polyol are reacted in a weight ratio of 60-95 wt% isocyanate to 5-40 wt% dimer acid polyester polyol based on the total weight of the reaction mixture comprising the isocyanate monomer and the dimer acid polyester polyol.”
Applicant argues that Shi consistently teaches that the dimer acid polyester polyol belongs in the polyol component rather than the isocyanate component where such a modification would change the principle of operation of Shi's adhesive system.
However, Shi is only used as teaching reference in order to teach a dimer acid polyester polyol. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). Further, the combination of Li et al. and Shi et al. would not render Shi et al. inoperable given that Shi et al. is not being modified but rather the polyol of Shi et al. is being taught into Li et al. While Shi et al. may use the polyol in a different manner when making the polyurethane than Li et al., the fact remains both Shi et al. and Li et al. disclose reacting polyols with polyisocyantes to make polyurethane and therefore the combination is proper.
Applicant argues that claimed configuration achieves unexpected results that demonstrate non- obviousness.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claim. For example, the data uses a specific type of dimer acid based polyester polyol, i.e. dimer fatty acid based polyester diol while the claim broadly any type of dimer acid based polyester polyol. The data uses specific types of isocyanate having specific NCO content and functionality while the claim broadly any type of isocyanate. There is no data at the upper end point and lower end point of the claimed amount of isocyanate, i.e. 60% and 95%. There is no data at the upper end point and lower end point of the claimed amount of dimer acid polyester polyol, i.e. 5% and 40%. Further, the data uses specific types of polyols and phosphate-functional adhesion promoters while the claim broadly any type of polyol and phosphate-functional adhesion promoter.
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787