The arguments and amendments submitted 04/13/2026 have been considered. In light of amendments made, all prior USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable as set forth below.
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.
Claim 29 is 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 29, line 1 recites "the shoe". This term is not previously used in this claim or the parent claim, and thus there is no antecedent basis for it. For the purpose of examination, claim 29 reads on “treating the first substrate and the second substrate”.
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/or 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, 4-8, 19-24, and 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Schulze (GB 2574260A) in view of Yoshino (JP 2014096486A), with text citations to attached translation, and Licht (US PG Pub 2023/0211598).
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) and water (para. 0014) 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.
Neither Schulze nor Yoshino teach the debonding agent comprises at least one non-ionic surfactant.
However, Licht teaches a method for detaching two substrates bonded by a polyurethane adhesive (abstract), wherein the debonding agent comprises at least one non-ionic surfactant and water (paras. 0141 and 0147) at a pH of 4 to 12 (para. 0139).
Licht teaches that this agent advantageously leaves no adhesive residues on the debonded substrates (para. 0142).
The courts have held that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." See MPEP § 2144.06.I and In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In view of the Licht’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art at the time of filing to combine Licht’s non-ionic surfactant with the debonding composition of Schulze in view of Yoshino to predictably obtain a suitable debonding composition and/or obtain the benefit taught by Licht as cited above.
Regarding claims 5-6, Schulze teaches the first substrate and second substrate are selected from a polyamide or a polyethylene terephthalate (para. 0051).
Regarding claims 7-8, Schulze and Yoshino do not explicitly teach the substrates are the recited shoe parts. However, Schulze does teach that PET and polyamide are suitable substrate materials (para. 0051).
Licht teaches that PET and polyamide substrates are useful in bonded footwear articles (para. 0023), wherein the first substrate is an upper or outsole and the second substrate is a midsole (paras. 0028-0031).
In view of Licht’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 Licht’s first and second footwear component substrates to predictably obtain suitable substrates for footwear capable of being debonded for recycling and/or rework.
Regarding claims 19-20, Schulze teaches the carboxylic acid component is present in an amount of from 20-70% by weight, based on the total weight of the debonding agent (para. 0036), thus partially overlapping the ranges recited in claims 19-20 and rendering use of these values for Yoshino’s lactic acid species obvious to one of ordinary skill in the art.
A prior art range which encompasses, partially overlaps, or touches the claimed range is sufficient to establish a prima facie case of obviousness, in the absence of any unexpected results. See MPEP § 2144.05.I and In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Furthermore, per MPEP § 2144.05.II.A, differences in concentration will not generally support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding claims 21-22, Licht teaches the non-ionic surfactant is present in an amount of from 0.1 % to 80% by weight, based on the total weight of the debonding agent (para. 0141), thus encompassing the ranges recited in these claims and rendering them obvious to one of ordinary skill.
Furthermore, per MPEP § 2144.05.II.A, differences in concentration will not generally support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding claim 23, Licht teaches the at least one non-ionic surfactant comprises at least two non-ionic surfactants (para. 0151).
Regarding claim 24, Licht teaches the at least one non-ionic surfactant comprises an addition product of ethylene oxide (EO) units on a fatty alcohol (paras. 0169-0170).
Regarding claim 26, Schulze teaches the water may be preset in an amount of 90% or lower by weight, based on the total weight of the debonding agent (100 g water with 10 or more g of the carboxylic acid component per para. 0017), thus partially overlapping the recited range and rendering it obvious.
Regarding claims 27-28, the combination of Schulze in view of Yoshino and Licht includes embodiments wherein the debonding agent has no amines, polyalkylene glycols, and aliphatic acids other than lactic acid.
Regarding claim 29, Schulze teaches that the treatment time for successful debonding is a result-effective variable depending upon the type of polymer materials, adhesive bonding agents, and the thickness of the substrates being delaminated (para. 0059). Therefore, the ranges recited in the claim merely represents optimization of this result-effective variable and would have been obvious to one of ordinary skill in the art. “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art,” and the presence of such a known result-effective variable would be one … motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and also MPEP § 2144.05.II
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Schulze in view of Yoshino and Licht, as applied to claim 1 above, further in view of Lamanna (US PG Pub 2017/0283740).
Regarding claim 25, Schulze, Yoshino, and Licht do not teach this feature.
However, Lamanna teaches a fluorinated non-ionic surfactant or a fluorine-containing non-ionic surfactant is useful for removing contaminants and/or cleaning a substrate (paras. 0022-0023).
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 also 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 Lamanna’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art to select Lamanna’s fluorinated non-ionic surfactant or a fluorine-containing non-ionic surfactant for the non-ionic surfactant in the method of Schulze in view of Yoshino and Licht to predictably obtain the capabilities taught by Lamanna as cited above.
Response to Arguments
Applicant’s arguments regarding the previous 103 rejection of claim 1 have been fully considered, but are moot in view of the new grounds of rejection, necessitated by the present amendments to claim 1.
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.
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/JIMMY R SMITH JR./Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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