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
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 reply filed on 9/08/2026.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Golombowski US 20210071054 in view of Ueno US 20040092699 as evidenced by Safety data sheet, Safe Work Australia Ethylene glycol ≥98 %, Technical, Pages 1-13, 2018).
Regarding claims 1-4, Golombowski teaches a polyurethane adhesive comprising a urethane prepolymer.
Golombowski teaches the urethane prepolymer is formed from a reaction of a polyol and an isocyanate (Paragraph [0017]). Golombowski teaches the polyol can be a polyether polyol. It would have been obvious to select a polyether polyol as the polyol of Golombowski because it 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 “polyether polyol”, “isocyanate”, and “main component.”
Golombowski also teaches this urethane prepolymer can be further reacted with a polyol curing agent (Paragraph [0051]). It would have been obvious to select a polyol curing agent as the curing agent of Golombowski because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Golombowski is silent on the chain extender being an alicyclic diol (Paragraph [0051]).
Ueno teaches a polyurethane. Ueno teaches the polyurethane can be used in adhesive applications (Paragraph [0008]). Ueno also teaches the composition can comprise alicyclic diol chain extenders like 1,1, cyclohexanedimethanol (Paragraph [0156]).
It would have been obvious to one of ordinary skill in the art to use the chain extender of Ueno in the application of Golombowski because Ueno teaches the alicyclic chain extender 1,1,cyclohexanedimethanol is a suitable chain extender for polyurethanes used in adhesive compositions and therefore teaches a suitable chain extender curing agent for the composition of Golombowski. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Golombowski in view of Ueno does not expressly disclose the resulting urethane group concentration in the polyurethane adhesive.
However, Golombowski teaches the polyol can be a triol (Paragraph [0023]). This reads on the limitations of claim 4 wherein component (a) comprises at least 3 reactive groups.
Regarding claim 6, Golombowski teaches the molecular weight of the polyol has a functionality of 1.5-4.0 and an equivalent weight of 200-5000 (Paragraph [0024]). This corresponds to a molecular weight of 300-10,000 g/mol. This overlaps with the claimed range of 2,500 or more.
Golombowski also teaches the composition may comprise plasticizer or solvent. The solvent is an optional component of the composition. It would have been obvious for the composition to comprise 0% solvent because Golombowski teaches solvent as an optional component of the composition. This overlaps with the claimed range of 1% or less. This reads on the limitations of claim 7.
Golombowski also teaches that the composition comprises carbon black, which is used as a reinforcing filler (Paragraph [0037]). This reads on the limitations of claim 8.
Golombowski teaches the composition can comprise more than one curing agent (Paragraph [0051]). Golombowski teaches the curing agent can be ethane diol (Paragraph [0051]). Ethane diol is a liquid at room temperature (Ethylene glycol ≥98 %, technical, Page 6). This reads on the limitations of claim 9.
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the resulting polyurethane of Golombowski as described above will therefore necessarily possess the claimed urethane concentration. This reads on the limitations of claims 1-3.
Regarding claim 5, Golombowski does not expressly disclose the content of structural unit derived from the polyfunctional component in the urethane resin being 50 mmol/kg to 1,000 mmol/kg. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the resulting urethane resin of Golombowski as described above will therefore necessarily possess the claimed content of a structural unit derived from the polyfunctional component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
