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 8 is objected to because of the following informalities: Structures (B)-(E) are blurry. Appropriate correction is required.
Claim Rejections - 35 USC § 112 and § 101
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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-11 and 13 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.
Claims 10-11 recites the limitation "The multi-layer structure of claim 8" in line. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, claims 10-11 will be interpreted as depending from claim 9.
Claim 13 provides for the use of the composition of claim 1 but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
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.
Claim(s) 1-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2010/0242798).
Regarding claims 1-4: Terada et al. (US ‘798) discloses two-part adhesive compositions comprising a polyol, an acid-modified polyol and a polyisocyanate [abstract; 0003; 0011; 0058; 0066]. Terada et al. (US ‘798) discloses the adhesive composition includes an oxyacid of phosphorous, such as phosphoric acid and polyphosphoric acid [0053; 0055]. Terada et al. (US ‘798) discloses Example 4 [Ex. 4; 0091-0101; Table 1, Ex. 4] contains 5.0 parts by weight polyol C (polyester polyol prepared from isophthalic acid, terephthalic acid, ethylene glycol, neopentyl glycol, 1,6-hexanediol, and dimer acid [0075-0076]), 90.0 parts by weight polyol E (polyester polyamide polyol prepared from isophthalic acid, 1,6-hexanediol, dimer acid, isophorone diamine and subsequently reacted with isophorone diisocyanate [0078]), 5.0 parts by weight acid-modified polyol D (prepared from trimellitic anhydride and castor oil [0083]), 8.3 parts by weight polyisocyanate A [0090] and 0.1 parts by weight polyphosphoric acid (polyphosphoric acid exchanged for phosphoric acid [0053; 0055; see MPEP 2131.02]) [Ex. 4; 0091-0101; Table 1, Ex. 4]. Terada et al. (US ‘798) discloses adhesives were prepared by mixing the polyol, acid-modified polyol, polyisocyanate, and polyphosphoric acid (see MPEP 2131.02) [0091]. Terada et al. (US ‘798) discloses the two-part adhesive can have the polyphosphoric acid mixed with the main component including the polyol [0058; 0065].
Terada et al. (US ‘798) does not specifically disclose Ex. 4 having polyol E mixed with the polyphosphoric acid. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have polyphosphoric acid mixed with polyol E based on the invention of Terada et al. (US ‘798), and would have been motivated to do so since Terada et al. (US ‘798) discloses the two part adhesive can have the polyphosphoric acid mixed with the with the main component including the polyol [0058; 0065]. Additionally, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Regarding claim 5: Terada et al. (US ‘798) discloses ~ 0.11 wt% polyphosphoric acid, based on total weight of polyphosphoric acid and polyol E [Ex. 4; 0091-0101; Table 1, Ex. 4].
Regarding claim 6: Terada et al. (US ‘798) discloses the two part adhesive can have the polyphosphoric acid mixed with the main component including the acid-modified polyol [0058; 0065]; wherein Terada et al. (US ‘798) discloses ~ 2.0 wt% polyphosphoric acid, based on total weight of polyphosphoric acid and acid-modified polyol D [Ex. 4; 0091-0101; Table 1, Ex. 4].
Regarding claim 7: Terada et al. (US ‘798) discloses the adhesive composition employs the organic polyisocyanate in an equivalent ratio of isocyanate group to hydroxyl group (NCO/OH) of 0.5 to 2.0 [0050].
In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claims 9-10: Terada et al. (US ‘798) discloses four-layer composite films bonded with adhesive composition of Ex. 4 [0092-0095; Table 2, Ex. 4], wherein the composite film was prepared from a polyethylene terephthalate film, a nylon film, aluminum foil, and a polypropylene film [0093-0094].
Regarding claim 11: Terada et al. (US ‘798) discloses bonding metallic foils [0067-0070].
Terada et al. (US ‘798) does not specifically disclose a first substrate being a monolayer film that is a metal foil a second substrate being a monolayer film that is a metal foil. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a multilayer structure containing monolayers of metallic foils with the laminating adhesive between the monolayers based on the invention of Terada et al. (US ‘798), and would have been motivated to do so since Terada et al. (US ‘798) discloses bonding metallic foils [0067-0070]. Additionally, “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.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2010/0242798) as applied to claim 3 above, and further in view of Shi et al. (WO 2020/124543).
Regarding claim 8: Terada et al. (US ‘798) discloses the basic claimed adhesive [as set forth above with respect to claim 3]; wherein Terada et al. (US ‘798) discloses dimer acid [0019; 0034; 0078].
Terada et al. (US ‘798) does not specifically disclose a dimer acid corresponding to instant Structure (A). However, Shi et al. (WO ‘543) discloses two-component adhesives containing dimer acid polyols [abstract], wherein the dimer acid is a C36 dimer acid of Structure (A) [0050-0051]. Terada et al. (US ‘798) and Shi et al. (WO ‘543) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of two-component adhesives containing dimer acid polyols. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a C36 dimer acid of Structure (A), as taught by Shi et al. (WO ‘543) in the invention of Terada et al. (US ‘798), and would have been motivated to do so since Shi et al. (WO ‘543) discloses C36 dimer acid of Structure (A) as a dimer acid for the synthesis of polyols for use in two-component adhesives [0050-0051; 0063].
Note Structure (A):
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[0050-0051].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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