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 . 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.
Response to Amendment
The Amendment filed 03/19/2026 has been entered. Claims 1, 3, 4, 6-11 remain pending in the application and remain rejected.
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.
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.
Claim(s) 1, 4, 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Musch et al (U.S Patent 7144936B2) and Hamada (U.S PG Pub 20100040895A1).
Regarding claim 1, Musch discloses an adhesive composition (Abstract) containing polychloroprene (claim 1), and discloses one or more organic solvents being a part of the composition (Abstract; claim 1). Musch also discloses an additional solvent may be added (Abstract). Musch has not disclosed the organic solvent to be 2-methyl tetrahydrofuran.
Hamada, drawn also to the art of a bonding composition (Abstract), discloses a composition containing organic solvents, wherein the solvents can be multiple and can be an admixture [0081 – last line of paragraph], and discloses the solvents comprising 2-methyl tetrahydrofuran [0081]. Hamada also discloses the solvents being 99.99% to 60% by weight of the composition (as Hamada has disclosed the solids concentration to be between 0.1% to 40% by weight) [0082], and that the weight ranges can be appropriately modified to provide needed viscosity depending on coating technique [0082]
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Musch, with one of the solvents being 2-methyl tetrahydrofuran, as disclosed by Hamada, to arrive at the instant invention, in order to obtain a solvent with appropriate volatility for coating conditions [0081].
Regarding the second solvent being ethyl acetate and the weight ranges of the solvents, Musch has disclosed ethyl acetate being a suitable organic solvent in the one or more organic solvents used in the composition (Column 5, lines 5-6). Hamada has also disclosed ethyl acetate being a suitable solvent [0081].
Further, Musch as modified by Hamada discloses a weight range for the solvent to be in the claimed range of 5 to 100% by weight (see claim 1 rejection above & [0082] of Hamada). Additionally, Hamada has disclosed the solvents can be an admixture, thus disclosing that the total solvent weight range can include multiple solvents. Further the weight range of the solvents is a result effective variable that can be appropriately adjusted to have the desired viscosity for coating techniques, as is also disclosed by Hamada [0082]. Thus, at the very least the weight range of the solvent is a result effective variable which can be routinely optimized by an ordinarily skilled artisan in the absence of new or unexpected results to have a desired viscosity for coating techniques (MPEP 2144.05 (II)).
Regarding claim 4, the viscosity and the open time are inherent properties of the composition that are dependent on the contents of the composition. Given that Musch as modified by Hamada discloses a composition with the same or similar components, i.e. polychloroprene, 2-methyl tetrahydrofuran and ethyl acetate, it can be reasonably expected that the composition as disclosed by Musch and Hamada has the claimed properties of viscosity and open time. The examiner notes that the composition of Musch and Hamada has a similar composition as claimed by applicant, (i.e. polychloroprene and solvents as claimed) which would result in the claimed property (viscosity and open time). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the same or similar product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Regarding claim 8, Musch as modified by Hamada discloses an adhesive or sealant composition as claimed in instant claim 1 (see claim 1 rejection above and Abstract of Musch).
Regarding claim 9, Musch has disclosed the adhesive being used to bond any number of substrates including wood, paper, plastics, textiles, leather, rubber or inorganic materials. Musch also discloses the adhesive being used to bond shoes or in the shipyard among other uses, i.e. being used to bond leather/textiles/plastics (shoes) and wood/inorganic materials (shipyard) (Column 12, lines 17-43).
Regarding claims 10-11, Musch has disclosed a process of coating a first substrate with the adhesive and then bonding the first coated substrate to an additional second substrate, which can also be coated, and a bonded substrate obtained from the process (Column 12, lines 1-10).
Claim(s) 3 & 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Musch et al (U.S Patent 7144936B2) and Hamada (U.S PG Pub 20100040895A1) and Stadler et al ('Co-Oligomers of Renewable and Inert 2-MeTHF and Propylene Oxide for Use in Bio Based Adhesives' - see NPL attached).
Regarding claim 3, Musch and Hamada have not explicitly disclosed the method of obtaining the 2-methyl tetrahydrofuran, however, it is noted that the method obtaining a product is an intended use or material or article worked upon type of recitation, and as such does not patentably limit the product (MPEP 2114 & 2115). However, in the interest of providing compact prosecution, the examiner has included a reference for the instant claim 3 limitations.
Stadler, drawn also to the art of adhesive using 2-methyl tetrahydrofuran (Title; Abstract), discloses that the starter material for producing 2-methyl tetrahydrofuran can be obtained from waste of corn production (Introduction section, page 13468, lines 18-22).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Musch and Hamada, with obtaining the solvent from waste corn production, to arrive at the instant invention, in order to obtain renewable 2-methyl tetrahydrofuran (Introduction section, page 13468, line 8).
Regarding claim 6, Musch, as modified by Hamada and Stadler disclose the instant limitations. Musch has disclosed a process of obtaining the components and mixing them (claim 17), and Stadler has disclosed the 2-methyl tetrahydrofuran being obtained from waste of corn production (see claim 3 rejection above).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Musch et al (U.S Patent 7144936B2) and Hamada (U.S PG Pub 20100040895A1) and Stadler et al ('Co-Oligomers of Renewable and Inert 2-MeTHF and Propylene Oxide for Use in Bio Based Adhesives' - see NPL attached) and Noda (U.S Patent 5821299).
Regarding claim 7, Musch, Hamada, and Stadler have not explicitly disclosed ethyl acetate being obtained from bio-based or non-fossile sources, however, this is well-known in the art from Noda.
Noda, drawn to the art of solvents (Abstract; Title), discloses ethyl acetate to be a safe, inexpensive, and readily available solvent from renewable sources (i.e. non-fossile sources) (Column 6, lines 56-67).
It would have been obvious to have modified the process of Musch, Hamada, and Stadler, with the ethyl acetate being sources from non-fossile sources, as disclosed by Noda, to arrive at the instant invention, in order to be able to obtain ethyl acetate as a solvent that is less damaging for the environment (Column 6, lines 64-65).
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive.
Applicant argues that given claimed superior and unexpected results from the inclusion of 2-methyl tetrahydrofuran as a solvent, when in comparison with the closest prior art of Musch, the claimed composition would not be obvious.
The examiner disagrees. As the applicant has disclosed, the inclusion of 2-methyl tetrahydrofuran may lead to superior unexpected results, and applicant compares the instant examples in the instant specification with the examples in Musch to illustrate this. However, it was never alleged or implied that Musch meets the instant limitations as is. It is the modification of Musch with Hamada, that discloses the instant invention as claimed. Further an ordinarily skilled artisan has an explicit reason to modify the composition of Musch with the teachings of Hamada, since such a modification gives a solvent with appropriate volatility for coating conditions ([0081] of Hamada). Thus, while compared to Musch, the instant invention may display superior and unexpected results, the combination of Musch and Hamada discloses the instant invention, and further such a combination is obvious to an ordinarily skilled artisan given an explicit advantage of such a combination.
In response to applicant's argument that the addition of 2-methyl tetrahydrofuran provides superior results with respect to maximum open time and solution viscosity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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