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 claims 1-8 in the reply filed on 12/04/2025 is acknowledged.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/04/2025.
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.
Claims 1-8 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 pre-AIA the applicant regards as the invention.
Claim 1, lines 3-4 recite "a polyurethane adhesive". It is unclear if this polyurethane adhesive is the same as the one recited earlier in the claim or not. For the purpose of examination, claim 1, lines 3-4 read on "the polyurethane adhesive". Dependent claims fall herewith.
Claim 3, line 2 recites "at least one surfactant, preferably at least one non-ionic surfactant". The term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase is a required part of the claimed invention or merely optional. See MPEP § 2173.05(d). For the purpose of examination, the term preferably is interpreted to mean optionally.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Schulze (GB 2574260A), previously made of record, in view of Yoshino (JP 2014096486A), with text citations to attached translation.
Regarding claims 1 and 4, Schulze teaches a method for detaching two substrates bonded by a polyurethane adhesive (paras. 0049, 0059), comprising the steps of:
treating a first substrate (either of polymer layers 20 and 40 in Fig. 1 and para. 0051) and a second substrate (layer 30 or 40 in Fig. 1 and para. 0051) bonded by a polyurethane adhesive (paras. 0049, 0059) with a debonding agent comprising a carboxylic acid (paras. 0014, 0016, 0064) at a temperature of 70C (para. 0059 and claim 19), falling within the recited ranges of claims 1 and 4, and
separating the first substrate and the second substrate from the polyurethane adhesive (paras. 0013-0015, 0059, and 0064).
Schulze does not explicitly teach that the debonding agent comprises the recited lactic acid species. However, Schulze does teach that “The carboxylic acids are responsible for the delamination of the multilayer packaging material and are water miscible carboxylic acids. The term “water miscible carboxylic acids” is to be understood as carboxylic acids that are water miscible in any ratio with water. The carboxylic acids have a pKa value between 2 and 8. In one aspect, the pKa value is between 3 and 5…C1-C4 acids which are not considered to be fatty acids but fulfill the criteria of water miscibility and pKa such as but not limited to acrylic acid or 3-chloropropionic acid, are also disclosed by the invention” per para. 0016.
Yoshino teaches a method for detaching two substrates wherein lactic acid in water is disclosed as a suitable debonding agent (“a chemical solution for dissolving the adhesive 63 is added to the water in the water tank 10…Examples of the chemical solution capable of dissolving the adhesive include lactic acid” per the 5th paragraph on pg. 6).
The courts have held that selection of a known material on the basis of suitability for its intended use is obvious and within the capability of one of ordinary skill in the art. 325 U.S. at 335, 65 USPQ at 301. See MPEP § 2144.07, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
In view of the teachings of Schulze and Yoshino and the considerations above, it would have been obvious to one of ordinary skill in the art at the time of filing to select Yoshino’s lactic acid, which is a C3 carboxylic acid with a pKa value of 3.86 and high miscibility in water, as a suitable carboxylic acid component for Schulze’s debonding agent. Furthermore, lactic acid has the attributes of being naturally-derived, non-toxic, and biodegradable, which are additional reason(s) one of ordinary skill in the art would have been motivated to select Yoshino’s lactic acid for Schulze’s debonding agent composition and method.
Regarding claim 2, Schulze teaches the debonding agent further comprises at least one additive selected from solvent, surfactant and mixture thereof (water solvent of para. 0014 and various ester surfactants of paras. 0022-0023).
Regarding claim 3, Schulze teaches the debonding agent further comprises at least one surfactant (various ester surfactants of paras. 0022-0023).
Regarding claims 5-6, Schulze teaches the first substrate and second substrate are selected from a polyamide or a polyethylene terephthalate (para. 0051).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schulze in view of Yoshino, as applied to claims 1 and 6, respectively, further in view of Farr (US PG Pub 2019/0343220).
Regarding claims 7-8, Schulze and Yoshino do not explicitly teach the substrates are the recited shoe parts. However, Schulze does teach that PET is a suitable substrate material (para. 0051).
Farr teaches that PET substrates are useful in bonded footwear articles, wherein the first substrate is an upper or outsole and the second substrate is a midsole (para. 0015).
In view of Farr’s teachings, it would have been obvious to one of ordinary skill in the art to modify the method of Schulze in view of Yoshino with Farr’s first and second footwear component substrates to predictably obtain suitable substrates for footwear capable of being debonded for recycling and/or rework.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JIMMY R SMITH JR./Examiner, Art Unit 1745
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