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 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.
Claims 1-3, 5-11, and 16 are 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.
Specifically, claim 1 requires the limitation “at least one polyol A” in line 11, with respect to the second component A-2. It is unclear if the “at least one polyol A” of second component A-2 is intended to be the same polyol A as required in the first component A-1 (having an OH functionality in the range from 1.5 to 4 and an average molecular weight (number average) Mn in the range from 250 to 15 000 g/mol, or if the polyol A required by the second component A-2 is intended to be any polyol. For purpose of further examination, the Examiner is interpreting the polyol A required by the second component A-2 to be any polyol.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 5-11, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu et al. (WO 2009/094905), as evidenced by Schumann et al. (US Serial No. 2010/0232885), in view of Burckhardt et al. (WO 2019/002538), wherein US Serial No. 2020/0207980 is used as the English equivalent.
Regarding claims 1, 2, 5-7, and 9-11; Qiu et al. teaches a polyurethane prepared from a first component containing one or more polyols; a second component containing one or more isocyanates; and a third component containing one or more catalysts [020]. Qiu et al. teaches a preferred first component is polyether polyol 1380BT® from Bayer (triol having 3 OH groups and a Mn of 450 g/mol) [Ex1, 054], a preferred second component is an isocyanate prepolymer Vorite 689 derived from castor oil (polyurethane with isocyanate groups) [035] or an isocyanate prepolymer derived from MDI (methylene diphenyl diisocyanate) [Ex1, 054]. Qiu et al. teaches suitable catalysts as the third component include metal catalysts such as dibutyltin dilaurate [037-038]. Qiu et al. teaches chain extenders may optionally be added to the tri-component adhesive composition, such as diols and polymers [040], thus it is the Examiner’s position that Qui et al. teaches the chain extenders may be added to any of the three components, including the catalyst.
Schumann et al. provides evidence that 1380 BT® has an OH functionality of 3 and a Mn of 450 g/mole [Table 1].
Qiu et al fails to teach at least one compound that has at least one thiol group. Burckhardt et al. teaches a polyurethane composition, suitable for use as an adhesive, the polyurethane prepared from a first component A which is at least one polyol and at least one compound T having at least one thiol group, such as ethylene glycol di(3-mercaptopropionate), ethylene glycol dimercaptoacetate, dipentaerythritol hexa(3-mercaptopropionate), and 3-mercaptopropyl trimethoxysilane [0056]; a second component B which is at least one polyisocyanate; and metal catalyst K, the molar ratio of all the thiol groups in the at least one compound T to all the metal atoms in the at least one metal catalyst K is between 1:1 to 250:1 [0009-0018], preferably between 5:1 to 100:1 [0057]. Qiu et al. and Burckhardt et al. are analogous art because they are both concerned with the same field of endeavor, namely polyurethane adhesives. At the time of filing, a person of ordinary skill in the art would have found it obvious to add a compound having a thiol group, for example ethylene glycol di(3-mercaptopropionate), at a molar ratio of 5:1 to 100:1 (thiol groups to metal atoms), as taught by Burckhardt et al., to the polyurethane reaction components of Qiu et al., and would have been motivated to do so in order adjust (e.g. extend) the pot life of composition, while improving the mechanical properties of the composition after curing, as suggested by Burckhardt et al. [0053].
Regarding claim 8; Qiu et al. teaches the polyurethane may also comprise fillers 041].
Regarding claim 16; Qiu et al. teaches a three component polyurethane composition, thus it is presumed they are stored in separate containers.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu et al. (WO 2009/094905), as evidenced by Schumann et al. (US Serial No. 2010/0232885), in view of Burckhardt et al. (WO 2019/002538), wherein US Serial No. 2020/0207980 is used as the English equivalent, as applied to claim 2 above, and further in view of Burckhardt et al. (US Serial No. 2011/0214810), herein referred to as US’810.
Qiu et al., as evidenced by Schumann et al., in view of Burckhardt et al., render obvious the basic claimed polyurethane, as set forth above, with respect to claim 2.
Regarding claim 3; Qiu et al. teaches a suitable metal catalyst for the present invention is dibutyltin dilaurate [037-038], however fails to teach dioctyltin dicarboxylate. US’810 teaches a polyurethane and suitable reaction catalysts for isocyanate groups include organotin compounds, such as dibutyltin dilaurate and dioctyltin dilaurate [0271]. Therefore, US’810 teaches that dibutyltin dilaurate and dioctyltin dilaurate are functional equivalents for the purpose of functioning as reaction catalyst for producing polyurethane. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Response to Arguments
Applicants’ arguments directed to the rejections under 35 U.S.C. 112 are moot since those rejections have been withdrawn.
Applicants argue that Qiu does not suggest or disclose the catalyst component further including a polyol. The Examiner respectfully disagrees. As stated above, Qiu et al. teaches chain extenders may optionally be added to the tri-component adhesive composition, such as diols and polymers [040], thus it is the Examiner’s position that Qui et al. teaches the chain extenders may be added to any of the three components, including the catalyst.
Regarding applicants’ arguments of unexpected results, the data and results of Examples 1 and 2 are not commensurate in scope with claim 1 of the instant application; the examples show results for compositions having specific weight ranges of the compounds, which is not required by the instant claims. Furthermore, the generic compounds required by the claims are much broader than the compounds used in the examples that show the alleged unexpected results.
Furthermore, the alleged unexpected results must occur over all ranges and therefore applicants must show a broad range of examples. It is unclear whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
As such, Qiu et al., as evidenced by Schumann et al., in view of Burckhardt et al., are still relied upon for rendering obvious the basic claimed polyurethane composition, as required by the instant claim language.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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