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 Objections
Claim 1 is objected to because of the following informality:
Claim 1, line 7: “selected form the group consisting of NH2 group and an NHR group” should read “selected from the group consisting of an NH2 group and an NHR group”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claims 1, 3-9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (JP 2005-048167 A, “Sakamoto”) in view of Ikeda (JP 2001-164229 A) and Hata et al. (WO 2019/167638 A1, “Hata”). The disclosure of Sakamoto is based off a machine translation of the reference included with the action mailed 26 November 2025. The disclosure of Ikeda is based off a machine translation of the reference included with this action. The disclosure of Hata is based off US 2020/0399434 A1, which serves as an English language equivalent.
With respect to claims 1 and 9, Sakamoto discloses a two-component coating comprising: a liquid A comprising a polyol and dimethylolalkanoic acid; and a liquid B comprising a polyisocyanate ([0044]). The dimethylolalkanoic acid includes dimethylolpropionic acid and dimethylolbutanoic acid ([0025]). The composition is used as an adhesive ([0058]) and is used to bond substrates (i.e., a first and second base material) ([0016], [0049]). Since the polyisocyanate is described as a curing agent ([0042]), the two-component coating is curable. The dimethylolalkanoic acid, corresponding to the claimed compound (C), is present in an amount of 0.1-20 wt% of the polyol component ([0047]).
While Sakamoto discloses the use of a polyamine ([0039-0040]), Sakamoto does not disclose wherein the polyamine is contained in the polyol component, nor wherein the polyamine has a plurality of groups selected from the group consisting of an NH2 group and an NHR group wherein R is an alkyl group or an aryl group that may have a functional group, nor wherein an amine value of the polyol composition (Y) is in a range of 20-70 mg KOH/g.
Ikeda teaches an adhesive an adhesive composition made from a first polyol component and a second polyisocyanate component ([0004-0005]). The polyol component includes low molecular weight polyamines in order to adjust the molecular weight of the polyurethane polyisocyanate and the distribution of the hard and soft segments ([0016]). The low molecular weight polyamines include ethylenediamine ([0018]), which is a compound having a plurality of NH2 groups.
Sakamoto and Ikeda are analogous inventions in the field of two-component adhesives containing polyamine compounds.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Sakamoto to include ethylenediamine contained in the polyol component as taught by Ikeda in order to adjust the molecular weight of the polyurethane and the distribution of the hard and soft segments (Ikeda, [0016]).
Sakamoto in view of Ikeda does not disclose wherein the amine value of the polyol is in the range of 20-70 mg KOH/g.
Hata teaches a two-component adhesive composition having a polyisocyanate compound and a polyol compound ([0014]), where the polyol composition contains an amine compound ([0041]). The adhesive has an amine value of 1.5-35 mg KOH/g in order to provide high curability while ensuring flex durability ([0051]).
Sakamoto in view of Ikeda and Hata are analogous inventions in the field of two-component adhesives made from a polyisocyanate component and a polyol component containing an amine compound.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyol component of Sakamoto in view of Ikeda to have an amine value of 1.5-35 mg KOH/g, including values presently claimed, as taught by Hata in order to provide an adhesive composition having high curability while ensuring flex durability (Hata, [0051]).
With respect to claim 3, Sakamoto discloses the polyol includes polyether polyols having two or more hydroxyl groups (i.e., polyether diols) ([0036]).
With respect to claim 4 and 6, Sakamoto discloses the polyol includes polyether polyols having a number average molecular weight of 200-10,000 and polyester polyols ([0036]). The number average molecular weight overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Sakamoto does not teach individual amounts of the polyether polyol and the polyester polyol. However, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component, i.e. 50% by mass – 50 by mass% each. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
With respect to claim 5, Sakamoto discloses the polyol includes compounds having two or more hydroxyl groups per molecule that are polyether polyols (i.e., a di- or higher functional polyether polyol) having a number average molecular weight of 200-10,000 ([0036]). While there may be no disclosure regarding the polyether polyol being 10-30% by mass, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use any amount of the polyether polyol, including values presently claimed, in order to produce a polyurethane having a desired molecular weight.
With respect to claim 7, Sakamoto discloses the polyol includes polyester polyols ([0036]). The polyester polyol is made from diols including ethylene glycol (i.e., an aliphatic polyhydric alcohol) and a dibasic acid such as adipic acid (i.e., an aliphatic polyvalent carboxylic acid) ([0037]). Because the polyester polyol is made from only the ethylene glycol and the adipic acid, they are present in 100 mass% each of the diol and dibasic acid, respectively.
With respect to claim 8, Sakamoto discloses the coating contains a catalyst ([0048]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a catalyst in either component (i.e., in either the liquid B comprising a polyisocyanate or in the liquid A comprising a polyol), including in the polyol composition as presently claimed, and thereby arrive at the claimed invention.
With respect to claim 11, while there is no disclosure that the laminate is a packaging material as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., a packaging material) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a laminate identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
With respect to claim 12, Sakamoto discloses the use of an isocyanate-terminated prepolymer (i.e., a urethane prepolymer) prepared by the reaction of an organic polyisocyanate with a polyol ([0044]). The organic polyisocyanate includes 4,4’-diphenylmethane diisocyanate ([0035]).
Claims 1, 3, 6-7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hata et al. (WO 2019/167638 A1, “Hata”) in view of Sakamoto et al. (JP 2005-048167 A, “Sakamoto”) and Ikeda (JP 2001-164229 A). The disclosure of Hata is based off US 2020/0399434 A1, which serves as an English language equivalent. The disclosure of Sakamoto is based off a machine translation of the reference included with the action mailed 26 November 2025. The disclosure of Ikeda is based off a machine translation of the reference included with this action.
With respect to claims 1, 3, 6-7, 9, and 11, Hata discloses a flexible packaging film having a first and second substrate laminated with the reactive adhesive of a polyisocyanate composition (X) and a polyol composition (Y) ([0014]). The adhesive is a two-component curable polyurethane resin adhesive ([0017]). The polyisocyanate composition (X) contains a polyisocyanate compound ([0018]). The polyol composition (Y) contains a polyol compound, where the polyol compounds can be used alone or in combinations of two or more ([0035]). The polyol compound includes polyether polyols ([0037]) and polyester polyols ([0038]). The polyester polyol is made from trifunctional or tetrafunctional aliphatic alcohol, i.e. aliphatic polyhydric alcohol, and polycarboxylic acid such as aliphatic dicarboxylic acid ([0038], [0040]). Because the polyester polyol is made from only the aliphatic polyhydric alcohol and the aliphatic dicarboxylic acid, they are present in 100 mass% each of the polyhydric alcohol and polycarboxylic acid, respectively. The polyol compound further includes an amine compound ([0041]). The adhesive has an amine value of 1.5-35 mg KOH/g in order to provide high curability while ensuring flex durability ([0051]).
However, Hata does not disclose wherein the polyol composition includes a compound (C) that is at least one selected from the group consisting of 2,2-dimethylolacetic acid; 2,2-dimethylolpropionic acid; 2,2-dimethylolbutanoic acid; and 2,2-dimethylolpentanoic acid, nor wherein the polyamine is a polyamine having a plurality of groups selected from the group consisting of an NH2 group and an NHR group, wherein R is an alkyl group or an aryl group that may have a functional group.
Sakamoto teaches a two-component coating comprising: a liquid A comprising a polyol and dimethylolalkanoic acid; and a liquid B comprising a polyisocyanate ([0044]). The dimethylolalkanoic acid includes dimethylolpropionic acid and dimethylolbutanoic acid ([0025]) in order to improve adhesion ([0022]). The composition is used as an adhesive ([0058]) and is used to bond substrates (i.e., a first and second base material) ([0016], [0049]). Since the polyisocyanate is described as a curing agent ([0042]), the two-component coating is curable. The dimethylolalkanoic acid, corresponding to the claimed compound (C), is present in an amount of 0.1-20 wt% of the polyol component ([0047]).
Hata and Sakamoto are analogous inventions in the field of two-component adhesives made from a polyisocyanate component and a polyol component.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyol composition (Y) of Hata to contain dimethylolpropionic acid or dimethylolbutanoic acid as taught by Sakamoto in order to provide an adhesive composition having improved adhesion (Sakamoto, [0022]).
However, Hata in view of Sakamoto does not disclose wherein the polyamine is a polyamine having a plurality of groups selected from the group consisting of an NH2 group and an NHR group, wherein R is an alkyl group or an aryl group that may have a functional group.
Ikeda teaches an adhesive an adhesive composition made from a first polyol component and a second polyisocyanate component ([0004-0005]). The polyol component includes low molecular weight polyamines in order to adjust the molecular weight of the polyurethane polyisocyanate and the distribution of the hard and soft segments ([0016]). The low molecular weight polyamines include ethylenediamine ([0018]), which is a compound having a plurality of NH2 groups.
Hata in view of Sakamoto and Ikeda are analogous inventions in the field of two-component adhesives containing polyamine compounds.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyamine compound of Hata in view of Sakamoto to be ethylenediamine contained in the polyol component as taught by Ikeda in order to adjust the molecular weight of the polyurethane and the distribution of the hard and soft segments (Ikeda, [0016]).
Response to Arguments
Due to the cancellation of claim 2, the 35 U.S.C. 103 rejections of claim 2 is withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections set forth in the action mailed 26 November 2025 are withdrawn. However, upon updating the searches, a new reference, namely Ikeda, was found, and in combination with the references as set forth above render the present claims obvious.
Applicant’s arguments filed 12 February 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the amine of Sakamoto is used as a catalyst, whereas the tertiary amine of Hata is used to react with the polyisocyanate, and thus the amines are used in different roles, such that one of ordinary skill in the art would not be motivated to adopt the tertiary amine of Hata as the amine of Sakamoto.
In response to Applicant’s arguments, it is first noted that neither Sakamoto nor Hata are being used to teach the claimed amine compound. Instead, as set forth above, Ikeda is used. Ikeda teaches an adhesive an adhesive composition made from a first polyol component and a second polyisocyanate component ([0004-0005]). The polyol component includes low molecular weight polyamines in order to adjust the molecular weight of the polyurethane polyisocyanate and the distribution of the hard and soft segments ([0016]). The low molecular weight polyamines include ethylenediamine, which is a compound having a plurality of NH2 groups. Sakamoto and Ikeda are analogous inventions in the field of two-component adhesives containing polyamine compounds. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Sakamoto to include ethylenediamine contained in the polyol component as taught by Ikeda in order to adjust the molecular weight of the polyurethane and the distribution of the hard and soft segments (Ikeda, [0016]).
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E 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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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