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 in the reply filed on 04/20/2026 is acknowledged. The traversal is on the ground(s) that Janke (EP-3315528) fails to teach the polyether polyol having an hydroxyl number greater than 100 mg KOH/g. This is found persuasive; however, a new restriction requirement is presented.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 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 one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 16-29, drawn to an adhesive composition.
Group II, claim(s) 30, drawn to a method for adhesively bonding a first substrate to a second substrate.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of an adhesive comprising at least one isocyanate-functional polyurethane polymer obtained by reacting a polyol component comprising a solid polyester polyol and a polyether polyol having an hydroxy number of greater than 100 mg KOH/g with a diisocyanate, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JP-2015/196768 to Kimura et al.
Kimura discloses a moisture-curable hot-melt adhesive comprising an isocyanate-functional prepolymer obtained by reacting a polyol component comprising a crystalline polyester polyol and polypropylene adduct of bisphenol A that has an hydroxyl number of 142 (0075) with a diisocyanate (0072, 0077).
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.
Claim 27 recites the limitation "the hot-melt adhesive composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 16, 19-20, 25-26, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2015/196768 to Kimura et al.
As to claims 16, 19-20, and 25-26, Kimura discloses a moisture-curable hot-melt adhesive comprising an isocyanate-functional prepolymer obtained by reacting a polyol component comprising a crystalline polyester polyol and polypropylene adduct of bisphenol A that has an hydroxyl number of 142 and a molecular weight of 800 (0075) with a diisocyanate (0072, 0077). Kimura discloses polyester polyols obtained by condensation of sebacic acid and hexanediol or adipic acid and hexanediol that are solid polyols at room temperature. The polyester polyols are solid at room temperature (Google Search HS-2H-1000S).
As to claim 29, Kimura discloses the addition of curing catalysts to improve moisture reactivity (0052).
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 17-18, 21, and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2015/196768 to Kimura et al. in view of JP-2016/113552 to Ohata et al.
As to claims 17 and 27-28, Kimura discloses a moisture-curable hot-melt adhesive comprising an isocyanate-functional prepolymer obtained by reacting a polyol component comprising a crystalline polyester polyol and polypropylene adduct of bisphenol A that has an hydroxyl number of 142 and a molecular weight of 800 (0075) with a diisocyanate (0072, 0077). Kimura discloses polyester polyols obtained by condensation of sebacic acid and hexanediol or adipic acid and hexanediol that are solid polyols at room temperature. Kimura further discloses the addition of thermoplastic resins to the adhesive composition (0050). Kimura is silent with respect to the claimed properties.
However, within the same field of endeavor Ohata discloses moisture-cure hot melt adhesive comprising a polyurethane polymer and from 1 to 15 parts by mass of thermoplastic polyurethane resin with an softening point of 50 to 80°C (0059).
At the time of filing it would have been obvious to a person of ordinary skill in the art to add the thermoplastic polyurethane taught in Ohata to the adhesive of Kimura to obtain excellent initial adhesive strength (0059, 0067).
As to claims 18 and 21-22, Kimura in view of Ohata disclose the use of propylene oxide adducts of bisphenol A, in particular 2 to 10 moles of propylene oxide (1 on each side, claimed formula).
At the time of filing it would have been obvious to use lower molecular weight bisphenol A adduct as taught in Ohata within the adhesive composition of Kimura to further improve water resistance, adhesion, flexibility, and drop impact resistance (0029, Ohata).
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2015/196768 to Kimura et al. in view of JP-2013/26750 to Satoshi et al.
As to claims 23-24, Kimura discloses a moisture-curable hot-melt adhesive comprising an isocyanate-functional prepolymer obtained by reacting a polyol component comprising a crystalline polyester polyol and polypropylene adduct of bisphenol A that has an hydroxyl number of 142 and a molecular weight of 800 (0075) with a diisocyanate (0072, 0077). Kimura discloses polyester polyols obtained by condensation of sebacic acid and hexanediol or adipic acid and hexanediol that are solid polyols at room temperature.
Kimura is silent with respect to the addition of a liquid polyester polyol.
However, within the same field of hotmelt polyurethane adhesives, Satoshi discloses a polyol component comprising a crystalline polyester polyol and at least a liquid polyester polyol at 23°C that has an hydroxyl number of 21 mg KOH/g (0022).
At the time of filing it would have been obvious to a person of ordinary skill in the art to add the liquid polyester polyol of Satoshi to the adhesive composition of Kimura to reduce viscosity of the adhesive when heated during the coating process and improve adhesive properties (0022).
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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