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
Claims 12, 13 and 16 are objected to because of the following informalities: in claim 12, line 2, “comprises” should be changed to “comprising”; in claim 13, line 7, “comprises” should be changed to “comprising”; and in claim 16, line 1, “claim anyone of claims 13” should be changed to “claim 13”. 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 1-6, 8-12 and 17-21 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 that the urethane prepolymer has an isocyanate containing compound in an amount from 10 wt.% to 30 wt.% based on the total weight of the prepolymer (line 6). Claim 1, however, previously recites in lines 4-5 that the urethane prepolymer is the reaction product of an isocyanate containing compound and a polyether polyol triblock copolymer. It is unclear whether the isocyanate containing compound recited in line 6 is the same as that recited in line 4 (i.e., whether the isocyanate containing compound reacted with the polyol to form the prepolymer is 10-30 wt% of the prepolymer) or whether the compound is different. For purposes of examination, “an isocyanate containing compound” in line 6 is being construed as “the isocyanate containing compound.
Claims 2-6, 8-12 and 17-21 depend either directly or indirectly from or otherwise include all limitations of claim 1 and are therefore also indefinite for the reasons set forth above with respect to claim 1.
Regarding claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation EO:PO repeating units present in a weight ration of 1:10 to 10:1, and the claim also recites EO:PO repeating units present in a weight ratio of 5:1 to 1:5 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Joenssen et al. (International Patent Publication No. WO 01/14441 A1, cited in IDS submitted February 21, 2025).
Regarding claim 1, Joenssen discloses a moisture curable adhesive composition for bonding a first substrate and a second substrate (Abstract of Joenssen, moisture curing polyurethane adhesive; 19:5-12 of Joenssen, adhesive used to bond substrates together), the adhesive composition comprising: a polyurethane adhesive composition comprising an isocyanate terminated urethane prepolymer (24:24-27 of Joenssen, isocyanate terminated polyurethane prepolymers produced), which is a reaction product of at least one isocyanate containing compound (11:2-5 of Joenssen, polyisocyanates reacted to form prepolymer) and at least one polyether polyol triblock copolymer (11:2-5 of Joenssen, polyisocyanates reacted with polyols to form prepolymer; 7:26-8:3 of Joenssen, poly(oxyethylene-oxypropylene) diols and triols obtained by sequential addition of ethylene and propylene oxide to di or trifunctional initiators), wherein the first substrate is a lignocellulosic substrate and the second substrate comprises a lignocellulosic substrate or a non-lignocellulosic substrate (19:5-12 of Joenssen, adhesive used to bond substrates together).
Joenssen does not specifically disclose the polyol having a weight average molecular weight of below 4,000 Dalton. Joenssen, however, discloses that the polyol has a number average molecular weight of 500 to 10,000 (6:27-7:5 of Joenssen). Although MW is typically slightly greater than MN, the range of average molecular weight disclosed in Joenssen would nevertheless overlap that recited in claim 1 which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “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) (See MPEP 2144.05(I)).
Joenssen does not specifically disclose that the urethane prepolymer has an isocyanate containing compound in an amount of from 10 wt.% to 30 wt.%, based on the total weight of the pre-polymer. Joenssen, however, discloses that that the polyurethane prepolymer has an NCO content of 1 to 20 wt.% (17:17-20 of Joenssen). Joenssen therefore clearly teaches an NCO content range (i.e., 1 to 20 wt.%) that overlaps with that recited in claim 1 (i.e., 10 - 30 wt.%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “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) (See MPEP 2144.05(I)).
Regarding claim 2, Joenssen does not specifically disclose that the lignocellulosic substrate comprises a wood particle board, wood chipboard, wood-oriented strand board, waferboard, wood fiberboard, parallel strand lumber, laminated strand lumber, plywood, laminated veneer lumber, straw particle board or straw fiberboard. The claims are directed to an adhesive composition and not to a method of bonding. Accordingly, the type substrates being bonded is an intended use limitation which further limits the substrates recited in the claim preamble. As set forth in the MPEP, to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim (MPEP 2111.02 II). Joenssen discloses that one of the bonded substrates can be wood (19:5-12 of Joenssen, adhesive used to bond wood substrates). Accordingly, the adhesive of Joenssen would be capable of bonding any wood substrates, including those of the recited type.
Regarding claim 3, Joenssen discloses that the non-lignocellulosic substrate is selected from the group consisting of foams, plastics, composites, metals, bovine and equine hoof (19:5-12 of Joenssen, adhesive used to bond plastic and metal; claim only requires one of the recited substrate types).
Regarding claim 4, Joenssen discloses that the triblock copolymer is poly(ethylene oxide)-poly (propylene oxide)-poly(ethylene oxide) block polymer (PEO-PPO-PEO) or poly(propylene oxide)-poly(ethylene oxide)-poly(propylene oxide) (PPO-PEO-PPO) block copolymer (7:26-8:3 of Joenssen, polyols include poly(oxyethylene-oxypropylene) diols and triols obtained by sequential addition of ethylene and propylene oxide to di or trifunctional initiators).
Regarding claim 5, Joenssen does not specifically disclose that the weight average molecular weight of the triblock copolymer ranges from 100 Daltons to 2000 Daltons or from 2000 Daltons to 4000 Daltons. Joenssen, however, discloses that the polyol has a number average molecular weight of 500 to 10,000 (6:27-7:5 of Joenssen). Although MW is typically slightly greater than MN, the range of average molecular weight disclosed in Joenssen would nevertheless overlap the ranges recited in claim 5 which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “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) (See MPEP 2144.05(I)).
Regarding claim 6, Joenssen discloses that the ethylene oxide (EO) and propylene oxide (PO) repeating units are present in a weight ratio of from 1:10 to 10:1, preferably 5:1 to 1:5 (7:26-8:3 of Joenssen, polyols include poly(oxyethylene-oxypropylene) diols and triols obtained by sequential addition of ethylene and propylene oxide to di or trifunctional initiators; sequential addition of EO and PO would result in molar ratios of approximately 1:1 which correspond to weight ratios in the claimed range).
Regarding claim 8, Joenssen discloses that the molar ratio of isocyanate containing compound (NCO) to polyether polyol (OH) is in the range of from >1:1 (11:17-20 of Joenssen, prepolymer obtained with molar excess of NCO relative to OH groups).
Regarding claim 9, Joenssen discloses that the isocyanate containing compound is selected from the group consisting of diphenyl methane-2,4′-diisocyanate or diphenyl methane-4,4′-diisocyanate, polymeric diphenylmethane diisocyanates or mixtures thereof (10:1-19 of Joenssen, polyisocyanate can be diphenyl methane diisocyanate including 4,4’ or 2,4’ MDI).
Regarding claim 10, Joenssen discloses that the polyurethane adhesive composition is a one component composition (Abstract of Joenssen, adhesive is moisture-curing and is therefore one component).
Regarding claim 11, Joenssen discloses that the adhesive composition further optionally comprises at least one polyol selected from the group consisting of polypropylene glycol, phosphate polyols, and aromatic polyols (additional polyol is optional and therefore not required). It is noted that Joenssen discloses mixtures of polyols including polypropylene glycol can be used as the polyol (32:9-15 of Joenssen).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Joenssen in view of Nakata et al. (U.S. Patent No. 5,459,185).
Regarding claim 12, Joenssen does not specifically disclose that the adhesive composition further comprises (i) from 2.0 wt. % to 10 wt. % of a filler based on the total weight of the adhesive composition; (ii) from 0.01 wt. % to 5.0 wt. % of at least one additive and assistance based on the total weight of the adhesive composition; and (iii) from 0 wt. % to 1 wt. % of an activator based on the total weight of the adhesive composition. Moreover, Joenssen discloses that the adhesive composition can contain fillers and various other additives including catalysts (18:15-22 of Joenssen), but does not disclose the amounts of these additives in the composition. Nakata, however, discloses a moisture-curing urethane adhesive (Abstract of Nakata) which contains up to 30% by weight filler and up to 10% by weight other additives such as a curing catalyst (4:51-58 of Nakata). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to provide the adhesive composition of Joenssen with up to 30% by weight filler and up to 10% by weight other additives such as a curing catalyst since Nakata establishes that it was known to formulate moisture curing polyurethane adhesives with such additives (4:51-58 of Nakata). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. Nakata clearly teaches filler and other additive ranges that overlap with those recited in claim 12 which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “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) (See MPEP 2144.05(I)).
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Joenssen in view of Amen-Chen et al. (U.S. Patent Application Publication No. 2016/0168435 A1, cited in IDS submitted April 2, 2024).
Regarding claim 17, Joenssen discloses a method of bonding a first substrate and a second substrate, comprising (i) providing a first substrate having at least one surface and a second substrate having at least one surface (Abstract of Joenssen, moisture curing polyurethane adhesive; 19:5-12 of Joenssen, adhesive used to bond substrates together), wherein the first substrate is a lignocellulosic substrate and the second substrate comprises a lignocellulosic substrate or a non-lignocellulosic substrate (19:5-12 of Joenssen, adhesive used to bond plastic wood and metal substrates; claim only requires one of the recited substrate types) (ii) applying the adhesive composition of claim 1 or claim 13 (see analysis of claim 1 above, claim only requires one of the recited adhesives) to the first substrate or to the second substrates or to the both first and second substrates (39:4-8 of Joenssen, adhesive placed on at least one of a first or second substrate), (iii) contacting the composition bearing first substrate, second substrate or both the first substrate and the second substrates for bonding (39:9-10 of Joenssen, first and second substrates placed into contact); and (vi) curing the adhesive composition (39:11-12 of Joenssen, moisture-curing adhesive reacted with water),
Joenssen does not specifically disclose curing the adhesive composition at a pressure of at least about 15 psi to 300 psi and for a time period of at least about 5 min. Amen-Chen, however, discloses a one-component moisture curing polyurethane adhesive for bonding lignocellulosic composites (Abstract, [0017] of Amen-Chen). Amen-Chen discloses pressing together the mating surfaces at 0.8 MPa (116 psi) for 3 hours ([0133] of Amen-Chen). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to cure the adhesive in the method of Joenssen at a pressure of 0.8 MPa (116 psi) for 3 hours since Amen-Chen establishes that it was known to use such conditions for bonding substrates together with one-component polyurethane adhesives ([0133] of Amen-Chen). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 18, Joenssen discloses that the method step (ii) of applying the adhesive composition comprises: (i) applying a primer composition to the first substrate or to the second substrate or to the both first and second substrates; and (ii) applying the polyurethane adhesive composition over the substrate treated with the primer composition (1:27-2:1 of Joenssen, water can be directly applied to the substrates to act as a hardener for the prepolymer; since the water is applied directly to the substrate before application of the prepolymer, the water is a primer for the prepolymer).
Regarding claim 19, Joenssen discloses a composite article obtained by the method of claim 17 or 18 (19:5-12 of Joenssen, adhesive used to bond different types of substrates together; bonded substrates would be composite materials).
Regarding claim 20, Joenssen does not specifically disclose the composite article of selected from the group consisting of panels, pipes, decking materials, boards, housings, sheets, poles, straps, fencing, members, doors, shutters, awnings, shades, signs, frames, window casings, backboards, wallboards, flooring, tiles, railroad ties, forms, trays, tool handles, stalls, bedding, dispensers, staves, films, wraps, totes, barrels, boxes, packing materials, baskets, straps, slips, racks, casings, binders, dividers, walls, indoor and outdoor carpets, rugs, wovens, and mats, frames, bookcases, sculptures, chairs, tables, desks, art, toys, games, wharves, piers, boats, masts, pollution control products, septic tanks, automotive panels, substrates, computer housings, above- and below-ground electrical casings, furniture, picnic tables, tents, playgrounds, benches, shelters, sporting goods, beds, bedpans, thread, filament, cloth, plaques, trays, hangers, servers, pools, insulation, caskets, bookcovers, clothes, canes, crutches, and other construction, agricultural, material handling, transportation, automotive, industrial, environmental, naval, electrical, electronic, recreational, medical, textile, and consumer products. Joenssen, however, discloses using the adhesive to bond wood together (19:5-12 of Joenssen). Amen-Chen discloses preparing boards by bonding lignocellulosic materials together using a one-component polyurethane adhesive ([0041], [0132]-0133] of Amen-Chen). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to form boards using the modified method since Amen-Chen establishes that it was known to form boards from one-component polyurethane adhesives. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Joenssen in view of Amen-Chen as applied to claims 19 and 20 above and further in view of Aicher (International Patent Publication No. WO 2018/011270 A1, machine language translation provided and cited below), Yeh et al. (“Adhesive Performance at Elevated Temperatures”, APA – The Engineered Wood Association, Meeting 38, August 2005) and ANSI (PRG 320-2018, American National Standard, “Standard for Performance Rated Cross-Laminated Timber”, February 2018).
Regarding claim 17, neither Joenssen nor Amen-Chen specifically disclose that the composite article meets the requirement of Canadian Standard Association (CSA) Standard O112.9 and PRG-320 for CLT application. Aicher, however, discloses cross-laminated timber panels made by bonding wood plies together with a one -component polyurethane adhesive (Abstract, [0042] of Aicher). While Aicher is silent regarding the laminated timber meeting the requirement of the recited standards, Yeh discloses that the CSA O112.9 standard is a Canadian adhesive standard for evaluarting adhesives for structural wood products (¶ spanning pp. 3-4 of Yeh). Ansi discloses that PRG-320 is a standard for performance rated cross-laminated timber (ANSI, pg. 1). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to manufacture a cross-laminated timer (CLT) structural wood product using the modified method since Aicher establishes that such products were known. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. One of skill in the art would have been motivated to engineer the product to meet the recited standards since these standards were known to engineered wood products.
Allowable Subject Matter
Claims 13-16 are allowed.
Regarding claim 13, the closest prior art is to Joenssen. Joenssen discloses a moisture curable adhesive composition for bonding a first substrate and a second substrate (Abstract of Joenssen, moisture curing polyurethane adhesive; 19:5-12 of Joenssen, adhesive used to bond substrates together), the adhesive composition comprising: a polyurethane adhesive composition comprising an isocyanate terminated urethane prepolymer (24:24-27 of Joenssen, isocyanate terminated polyurethane prepolymers produced), which is a reaction product of at least one isocyanate containing compound (11:2-5 of Joenssen, polyisocyanates reacted to form prepolymer) and at least one polyether polyol triblock copolymer (11:2-5 of Joenssen, polyisocyanates reacted with polyols to form prepolymer; 7:26-8:3 of Joenssen, poly(oxyethylene-oxypropylene) diols and triols obtained by sequential addition of ethylene and propylene oxide to di or trifunctional initiators), wherein the first substrate is a lignocellulosic substrate and the second substrate comprises a lignocellulosic substrate or a non-lignocellulosic substrate (19:5-12 of Joenssen, adhesive used to bond substrates together). Neither Joenssen, however, nor any of the other prior art references of record teach or reasonably suggest a moisture curable adhesive composition as set forth in claim 13 comprising (ii) an aqueous primer composition which comprises (i) from 1 wt.% to 30 wt.% of water; (ii) from 20 wt.% to 50 wt.% of alkyl sulfosuccinate; (iii) from 20 wt.% to 50 wt.% of alkoxylated phenol; and (iv) from 0.1 wt.% to 3 wt.% of a flame retardant.
The prior art as a whole therefore fails to teach or reasonably suggest the totality of the invention as defined by claim 13. In the absence of further prior art guidance, it would not have been obvious to arrive at the invention of claim 13 without impermissible hindsight. For the foregoing reasons, the invention of claim 13 is deemed non-obvious. Claims 14-16 depend from claim 13 and are therefore also deemed non-obvious for the reasons set forth above with respect to claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746