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 with traverse of Group I, claims 1-20 in the reply filed on 04/30/2026 is acknowledged.
The traversal is on the ground(s) that The traversal is on the ground(s) that (1), under 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to a product, a process specifically adapted for the manufacture of the product, and use of the product, wherein no analysis of whether Groups I, II, and III have a special technical feature is required, and (2) the subject matter of all claims is sufficiently related that a thorough search for the subject matter of any one Group would encompass a search for the subject matter of the remaining Groups, therefore search and examination of the entire application could be made without serious burden.
This is not found persuasive because, in response to argument (1), firstly, the claims are not drawn to only a product, a process specifically adapted for the manufacture of the product, and use of the product. In addition to the claims being drawn to a product and a processes specifically adapted for the manufacture of the product; the claims are also drawn to an additional packaging material, the packaging material comprising different strategic components. Secondly, applicants are incorrect that no analysis is required as to whether Groups I, II, III, and IV possess a special technical feature. A special technical feature must be present between the Groups in order for unity of invention to be present. The special technical feature is taught by Emmanuel (WO-2021/051039) as outlined in the previous response.
In response to argument (2), despite applicants’ statement that a thorough search for the subject matter of any one Group would encompass a search for the subject matter of the remaining Groups, therefore search and examination of the entire application could be made without serious burden, applicants have not substantiated such a statement. Furthermore, in response to applicants’ position, for example, the search for the polyurethane embodiments requires the searching of different classes of invention and the use of different search strategies, as compared to the search for the process steps or uses of the adhesive; this position is sufficient to establish that a serious burden exists if all Groups were required to be searched and examined.
The requirement is still deemed proper and is therefore made FINAL.
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 1-20 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.
In claim 1, the R group in formula NHR is not defined. Therefore, the scope of R is not clear.
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 16 recites the broad recitation castor oil based polyol, and the claim also recites “such as a castor oil adduct…” 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-4, 7-8, 10-14, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2007145988 to Yoshiyuki et al.
As to claims 1, 7-8, 10-14 Yoshiyuki discloses a two component curable adhesive (0035) comprising a polyisocyanate component and a polyol component wherein the polyisocyanate component comprises polyisocyanate (X) derived from hexamethylene diisocyanate containing uretdione dimers with a molecular weight of 336, isocyanurate trimers with a molecular weight of 504 (0036-0037) and contains less than 0.5% by mass of hexamethylene diisocyanate monomer (molecular weight of 168). This corresponds to claimed polyisocyanate composition (X). Further, Yoshiyuki teaches a polyisocyanate (Y) that is mixed with polyisocyanate (X) that has average molecular weight of 700 to 3,000 and is the reaction product of hexamethylene diisocyanate and polycaprolactone triol to prepare a urethane containing prepolymer (0044). Yoshiyuki discloses a polyol composition comprising that reacts the polyisocyanate composition comprising polyols and polyamines (0033).
As to claims 3-4, Yoshiyuki discloses polyisocyanate (X) that has uretdione groups in amounts of less than 40% (0009-0011).
As to claim 20, Yoshiyuki discloses the use of catalysts to cure the two component composition (See Examples).
Claim Rejections - 35 USC § 103
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.
Claims 2, 5-6, 9, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2007145988 to Yoshiyuki et al. in view of U.S. Patent Pub. No. 2021/0002530 to Okubo et al.
As to claims 2, 15-16, and 19 Yoshiyuki discloses a two component curable adhesive (0035) comprising a polyisocyanate component and a polyol component wherein the polyisocyanate component comprises polyisocyanate (X) derived from hexamethylene diisocyanate containing uretdione dimers with a molecular weight of 336, isocyanurate trimers with a molecular weight of 504 (0036-0037) and contains less than 0.5% by mass of hexamethylene diisocyanate monomer (molecular weight of 168). This corresponds to claimed polyisocyanate composition (X). Further, Yoshiyuki teaches a polyisocyanate (Y) that is mixed with polyisocyanate (X) that has average molecular weight of 700 to 3,000 and is the reaction product of hexamethylene diisocyanate and polycaprolactone triol to prepare a urethane containing prepolymer (0044). Yoshiyuki discloses a polyol composition comprising that reacts the polyisocyanate composition comprising polyols and polyamines (0033).
Yoshiyuki does not expressly disclose the amine value of the polyol composition.
However, within the same field of endeavor Okubo discloses two component polyurethane adhesives comprising a polyisocyanate component and a polyol component with an amine value of 0.5 to 40 mgKOH/g (0042) that comprises a blend of 73.3 parts of castor oil, 18.3 parts of PPG-1000, and 6.6 parts of EDP 300 (N,N,N,N-tetrakis(2-hydroxypropyl)ethylene diamine or polypropylene glycol ethylene diamine (Table 1, 0098-0099).
At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute the polyol composition of Yoshiyuki with the polyol composition of Okubo to ensure excellent curability and practical packaging properties (0046).
As to claims 5-6, 9, and 17-18, Yoshiyuki does not expressly disclose the use of aromatic diisocyanates or mixtures of aromatic diisocyanate with aliphatic diisocyanates. However, Okubo discloses the two component polyurethane adhesive wherein the polyisocyanate used to prepare a prepolymer (same as Yoshiyuki) is a mixture of aliphatic diisocyanates and aromatic diisocyanates including toluene diisocyanate.
At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute the hexamethylene diisocyanate component of Yoshiyuki with the diisocyanate blend of aromatic and aliphatic diisocyanates of Okubo to impart flexibility and improve practical packaging properties (0019).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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