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
Applicant’s election without traverse of Group I, Claims 1-17 and 20 in the reply filed on 2/20/2026 is acknowledged.
Claims 18-19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/20/2026.
Claim Objections
Claim 8 is objected to because of the following informalities: “number average” should be inserted before “molecular weight (Mn)” on line 3 (e.g., as in claims 3 and 6). Appropriate correction is required.
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 1-17 and 20 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. Claim 1 recites the limitation "the reaction product" in line 3. There is insufficient antecedent basis for this limitation in the claim, and given that a reaction product results not only from the reactants or reactant mixture utilized but also from the reaction conditions under which the reactants are reacted, the recitation of “the reaction product” on line 1 renders the claim indefinite.
Dependent claims 2-17 and 20 do not remedy the above and hence are indefinite for the same reasons.
Claims 9 and 17 are (further) 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. The term “strongly basic” in claim 9 (line 3) and claim 17 (line 3) is a relative term which renders the claim indefinite. The term “strongly basic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is not clear as to how “basic” the amides as catalyst (D) would need to be in order to be considered “strongly basic” as required by the claim(s), and therefore, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 8-10, 13-14, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei (CN113322043A, please refer to the machine translation submitted with the IDS filed 7/15/2025, for the below cited sections). Wei discloses a reactive polyurethane hot melt adhesive modified with polyolefin which comprises, by mass, 20 to 40 parts of polyether diol; 2 to 10 parts of amorphous copolyester; 10 to 25 parts of acrylic resin (overlapping the claimed range of no greater than 14% by weight based on the total weight of the adhesive composition as recited in instant claim 1); 15 to 30 parts of diphenylmethane diisocyanate; 10 to 20 parts of amorphous-α-polyolefin; 0.01 to 1 part of catalyst; 0.01 to 2 parts of antioxidant; 0.1 to 2 parts of chain extender; and 0.1 to 5 parts of silane coupling agent (Paragraphs n0018); wherein the adhesive composition is moisture-curable (Paragraphs n0002 and n0044) and may further comprise 15 to 25 parts of liquid polyester diol (hence, the acrylic resin may constitute as low as about 7% by mass to as high as about 28.7% by mass based upon the above parts by mass ranges and no requirement that the total thereof must equal 100 parts by mass; while the amorphous-α-polyolefin may be as low as 6.67% by mass and high as 24.3% by mass, such that both may overlap the amounts as recited in instant claim 1; Entire document, particularly Paragraphs n0008-n0020; Claims 1-2). Wei discloses that the amorphous α-polyolefin is a silane-grafted amorphous α-polyolefin that improves the softening point of the adhesive, wherein the amorphous α-polyolefin is a copolymer or terpolymer of ethylene, propylene, and 1-butene; and although Wei does not specifically limit the softening point thereof, Wei does disclose working examples utilizing VESTOPLAST® 206 which is known to have a softening point of 98°C (as evidenced by Vey, US2008/0213515A1, on IDS dated 11/18/2025, Paragraph 0060), falling within the claimed range of less than 100°C. More specifically, Wei discloses a working example, Example 1, comprising 22 parts of a polyoxypropylene glycol (PPG1000 – (b) a polyether polyol as recited in instant claims 1 and 4, and in an amount as recited in instant claim 13) having a number average molecular weight of 1000, 20 parts of a polyester polyol (component (a) of instant claim 1) having a number average molecular weight of 2000 (as in instant claims 2-3), 10 parts of an amorphous copolyester, 15 parts of a (meth)acrylic copolymer (component (B) of the claimed invention) having a softening point of 150-180°C, 0.5 parts of a first antioxidant (reading upon component (E) of instant claim 10), 0.5 parts of a second antioxidant (also reading upon component (E) of instant claim 10), 0.8 parts of 1,4-butanediol, and 20 parts of diphenylmethane diisocyanate (as in instant claim 5 and in an amount as recited in instant claim 14) that are preliminarily reacted, thereby forming a polyurethane prepolymer that is a reaction product of (A1) and (A2) as in the instantly claimed invention, followed by addition of 0.1-5 parts of silane coupling agent, 10 parts of the above VESTOPLAST® 206 silane-grafted amorphous-α-polyolefin (component (C) of the claimed invention, wherein it is further noted that VESTOPLAST® 206 has a number average molecular weight of less than 200,000 g/mol as in instant claim 8, as evidenced by Zhang, US2018/0265773A1, Paragraph 0052), and 0.01 parts of dibutyltin dilaurate (as a catalyst (D), particularly an organometallic compound as in instant claim 9) to obtain a moisture-curable, polyolefin-modified reactive polyurethane hot melt adhesive that based upon the above parts by mass, has a content of the acrylic resin of 14.4% by mass and of the amorphous-α-polyolefin of 9.6% by weight (as in instant claims 1 and 16), based on the total weight of the adhesive composition comprising the 5 parts of silane coupling agent; and hence, the Examiner takes the position that Wei discloses the claimed invention with sufficient specificity to anticipate instant claims 1-5, 8-10, 13-14, and 16.
Further, with respect to instant claim 20, given that Wei clearly discloses that the reactive polyurethane adhesive is especially suitable for the automotive and home appliance industries, reading upon the broadly claimed “electronic device”, with laminates formed from the above exemplified adhesive composition, the Examiner takes the position that Wei also anticipates instant claim 20, especially given that the claimed “electronic device” is not specifically recited as being any particular “electronic device” nor as having any particular structure or “electronic” components.
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.
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.
Alternatively, claims 1-5, 8-10, 13-14, 16, and 20 as well as claims 6-7, 11-12, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN113322043A, again please refer to the machine translation submitted with the IDS filed 7/15/2025, for the below cited sections) as applied to claims 1-5, 8-10, 13-14, 16, and 20 above and further discussed below.
The teachings of Wei are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-5, 8-10, 13-14, 16, and 20 for the reasons discussed in detail above and especially in light of the above referenced working example, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-5, 8-10, 13-14, 16, and 20 would have been obvious over the teachings of Wei given that Wei clearly teaches that the acrylic resin may be present in a content of 10 to 25 parts by mass such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize 10 parts by mass of the acrylic resin in working Example 1, thereby providing an amount of the acrylic resin of “no greater than 14% by weight based on the total weight of the adhesive composition” as recited in instant claim 1, and more particularly, “an amount of from 0.1% to 12% by weight, based on the total weight of the adhesive composition” as recited in instant claim 15. Hence, alternatively, instant claims 1-5, 8-10, 13-14, 16, and 20 as well as instant claim 15 would have been obvious over the teachings of Wei, especially given that it is well established that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art.
With respect to instant claim 6, although Wei teaches that the acrylic resin utilized in the examples has a softening point of 150-180°C, Wei does not teach that the acrylic resin has a number average molecular weight (Mn) of 5,000 to 100,000 g/mol as instantly claimed. However, given that Wei utilizes an amorphous copolyester having a number average molecular weight of 5,000 in the working examples, with the VESTOPLAST® 206 amorphous-α-polyolefin utilized in the working examples having a Mn of 10,600 (as evidenced by Zhang, Paragraph 0052), it would have been obvious to one having ordinary skill in the art to utilize a similar number average molecular weight (Mn) for the acrylic resin, particularly given that Wei teaches that the acrylic resin, a copolymer of methyl methacrylate and n-butyl methyl acrylate, has a softening point of 120-180°C (Paragraph n0026) which is typical of methyl methacrylate/n-butyl methyl acrylate resin having Mn values within the broadly claimed Mn range. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 6 would have been obvious over the teachings of Wei.
With respect to instant claim 7, given that the claimed invention does not recite the manner in which the claimed “softening point” is obtained, and that the working examples taught by Wei utilize VESTOPLAST® 206 which is an amorphous-α-polyolefin having a softening point of 98°C (as evidenced by Vey as noted above), and more particularly, a softening point of 98±4°C as determined by the ring and ball method (as evidenced by Zhang, Paragraph 0052), and thus a softening point as low as 94°C, falling within the claimed range of 70°C to 95°C, the claimed invention as recited in instant claim 7 would have been obvious over the teachings of Wei given again that it is well established in the art that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art.
With respect to instant claims 11 and 12, as noted above, Wei clearly teaches that the adhesive composition may contain 20 to 40 parts of polyether diol, 15 to 30 parts of diphenylmethane diisocyanate, 15 to 25 parts of liquid polyester diol, as well as 2 to 10 parts of amorphous copolyester that may actually be a polyester polyol, such that based upon the total parts by mass of all the components as discussed above, Wei provides a clear teaching and/or suggestion that the polyurethane prepolymer produced from the above polyol and diisocyanate components may overlap the claimed 66% to 99% by weight range of instant claim 11, as well as the polyester/polyester polyol components overlapping the claimed 30 to 70% by weight range of instant claim 12, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Wei.
With respect to instant claim 17, Wei teaches that the catalyst may be present in a content of 0.1 to 1 part as noted above (see specifically Paragraph n0015), wherein suitable catalysts include dibutyltin dilaurate, as utilized in the working examples (an organometallic compound), tin triethylenediamine (an organometallic compound), and dimorpholinyl diethyl ether (as specifically recited in claim 17; Paragraph n0032). Hence, the claimed invention as recited in instant claim 17 would have been obvious over the teachings of Wi given again that it is well established in the art that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art and given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787