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 .
Election/Restrictions
Claims 1-6 are allowable over the prior art. Claims 7-10, previously withdrawn from consideration as a result of a restriction requirement, requires all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between invention(s) of Group II, as set forth in the Office action mailed on 6/17/2026, is hereby withdrawn and claims 7-10 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: it appears that the “block isocyanate polymer” describing the TRIXENE BI 7960 compound in Table 1 should be amended to “blocked.”
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 6 objected to because of the following informalities: it appears that the claim should be amended to “…after[[ let]] [[stand]]standing…” if that was what was intended. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: it appears that the claim should be amended to recite “...according to claim 7, wherein...” if that was what was intended. 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 and claims 7-10 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.
Regarding claim 1, it is unclear from the claim limitations, and in light of the specification, what is being claimed given it is not clear what is intended, and what is not intended, via the recitation of an “isocyanate polymer.” It is the Examiner’s position that a polymer comprises at least two components “polymerized” (i.e., a dimer) to each other (and other monomers) as distinguished from a general chemical reaction whereby two or more reactants are reacted to form a final product. Attention is respectfully directed to Table presently disclosed, wherein the two isocyanate compounds employed in the inventive examples are a biuret (or burette) of hexamethylene diisocyanate (TRIXENE BI 7960) or a trimer of isophorone diisocyanate (TRIXENE BI 7951), which do not appear to be a compound as understood by one of ordinary skill to be a polymer.
In the interest of prosecution, and in the application of prior art, the Examiner will interpret the presently claimed isocyanate polymer to include, but not limited to, singular compounds of acyclic aliphatic isocyanate compounds that comprise at least one acyclic aliphatic isocyanate compound and at least one other isocyanate compound, which said at least one other isocyanate compound can also be an acyclic aliphatic isocyanate compound. Applicable compounds reading on the presently claimed isocyanate polymers comprise biurets of the above-noted isocyanates; dimers, trimers, etc. of the above-noted isocyanates; and isocyanurates of the above-noted isocyanates, to include disclosures where these applicable compounds are employed in the prior art as, but not limited to, crosslinkers in adhesives comprising other polymers such as the polymers that are crosslinked via the above-noted isocyanates.
Allowable Subject Matter
Claim(s) 1-6 and claims 7-10 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:.
The closest prior art reference is:
US 2018/0345726 A1 to Abell et al. teaches a pre-cured composite (11) comprising, in order, cured non-polar rubber element (13), polyisocyanate adhesive layer (21), gum cushion layer (19), polyisocyanate adhesive layer (23) and polar thermoset element (15) with metal oxide primer (25) being optional, and thus not required (para 0012, Fig. 1). The Examiner notes that the presently claimed invention as recited in at least current claim 1 recites the thermoformed sheet as “comprising” the first adhesive layer, second adhesive layer and surface layer, in order, but also permits the inclusion of the other layers not specifically recited such as the gum cushion layer (19).
Therefore, Abell teaches a sheet comprising polyisocyanate adhesive layer (21) (e.g., first adhesive layer), polyisocyanate adhesive layer (23) (e.g., second adhesive layer), with either of cured non-polar rubber element (13) and polar thermoset element (15) teaching a surface layer. The Examiner notes that the polyisocyanate adhesive compositions are coated at a wet thickness of 12 to 900 mm (para 0065), which provides an overlap with the presently claimed thickness of the first adhesive layer (0.5 to 13 mm). It is reasonable to conclude that the thickness of the resulting polyisocyanate adhesive layers (21) and (23) after evaporation of the solvent would be less than 12 to 900 mm.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polyisocyanate adhesive layers (21) and/or (23) of Abell with the presently claimed thickness based on the adhesive layer thickness and the thickness of the resultant sheet, required/desired of the prior art’s intended application as in the present invention
Abell continues to teach that the polyisocyanate adhesive layers (21) and (23) are derived from a solvent-borne reactive polyisocyanate composition comprising a polyisocyanate prepolymer (para 0043) comprising polyisocyanate monomers (para 0044) such as, inter alia, hexamethylene diisocyanate (para 0045), which is identical to that presently claimed/disclosed as providing an acyclic aliphatic isocyanate polymer. The polyisocyanate prepolymer is blocked via a blocking agent such as, inter alia, 3,5-dimethylpyrazole (para 0049), which is identical to that presently disclosed as providing a dissociation temperature below 160 ℃.
Abell teaches that the polyisocyanate adhesive layers (21) and (23) may comprise other elements other than the polyisocyanate prepolymers (see citations above), but Abell does not require them, nor does Abell require the other disclosed elements such as fillers (para 0050-0051). Abell does not specify that the polyisocyanate prepolymer is present in the adhesive layers (21) and (23) at 65 mass% or greater based on the solid content, but Abell does disclose that the adhesives are solvent-borne with the solid content ranging from 10 to 40 % by weight (para 0052).
Indeed, based on the disclosure of Abell to include or to exclude the incorporation of addition materials in the adhesives other than the polyisocyanate prepolymer, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the polyisocyanate prepolymer in the presently claimed mass% based on the requirements of the prior art’s intended application as in the present invention.
Abell is silent to the inventive sheet being thermoformed, and demonstrating a tensile strength of 3 to 240 N/50 mm when stretched to 200% at 95 ℃.
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/21/2026
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