Claims 1 and 3 are pending in the application with claim 2 being cancelled. Claims 1 and 3 are rejected.
All of the rejections have been maintained.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0171812 to Zhu (hereinafter “Zhu”).
Zhu discloses a moisture-curable polyurethane adhesive composition comprising a polyurethane prepolymer obtained by reacting a polyol with a polyisocyanate wherein the polyol comprises an amorphous polyester polyol, a semi-crystalline polyester polyol, and a polyether polyol (paragraph 21).
As the claim does not differentiate the crystalline polymer from the semi-crystalline polymer, the examiner equates the semi-crystalline polyester polyol having a degree of crystallinity of 50-90% (paragraph 31) to the claimed crystalline polyol.
Zhu also teaches that the polyurethane adhesive composition further contains less than 5% by mass of a crystalline polyol (paragraph 38).
Zhu asserts that the polyether polyol contributes hydrophilicity and improves the moisture permeability (paragraph 36). The polyether polyol is a polyoxyethylene glycol in an amount of 20-70 wt% with respect to a total weight of the moisture-curable polyurethane adhesive composition (paragraph 37). This is within the claimed range. As the claim does not specify the hydrophilicity imparting agent that is independent from the prepolymer, the examiner equates the polyether polyol to the claimed hydrophilicity imparting agent. The polyether polyol is devoid of an amino group. Hence, the moisture-curable polyurethane adhesive composition meets the claimed claimed conditions (1)-(3).
As to claim 3, Zhu discloses that the amorphous polyester polyol is produced by polycondensation of an aromatic polycarboxylic acid, an aliphatic polyol, and an aliphatic polycarboxylic acid as major components (paragraph 24).
Response to Arguments
Applicant alleges that Zhu teaches away from crystalline polyols having at least 90% crystallinity because any non-zero amount of the crystalline polyols would deteriorate the moisture permeability.
The examiner respectfully disagrees.
Firstly, nowhere does the claim recite the content of the crystalline polyol. The crystalline polyol in an amount of less than 5% by mass reads on the claimed crystalline polyol. Zhu discloses “more preferably no crystalline polyols as the incorporation of the crystalline polyol may deteriorate the moisture permeability”. The phrase “more preferably” indicates that no crystalline polyols are preferable but any amount of less than 5% by mass is acceptable and within the scope of the reference.
Secondly, as the claim does not differentiate the crystalline polyol from the semi-crystalline polyol in terms of crystallinity, the examiner equates the semi-crystalline polyester polyol having a degree of crystallinity of 50-90% (paragraph 31) to the claimed crystalline polyol.
Applicant states that the polyether polyol is not a hydrophilic-imparting agent because it reacts with polyisocyanate to form the prepolymer and therefore does not exist independently from the prepolymer.
The examiner respectfully disagrees.
Applicant’s statement is not commensurate in scope with the claim because nowhere does the claim recite the hydrophilic-imparting agent that exists independently from the prepolymer.
The polyether polyol is a polyoxyethylene glycol in an amount of 20-70 wt% with respect to a total weight of the moisture-curable polyurethane adhesive composition (paragraph 37), meeting conditions (1) and (2). The polyoxyethylene glycol does not have an amino group, meeting condition (3).
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2022027803 (hereinafter “JP’803”) in view of Zhu.
As to claims 1 and 3, JP’803 discloses a moisture-curable polyurethane adhesive composition comprising (i) a polyurethane prepolymer obtained by reacting a polyol with a polyisocyanate; and (ii) a hydrophilicity imparting agent wherein the hydrophilicity imparting agent is present in an amount of 5-20% by mass of the adhesive composition (paragraph 6). This is within the claimed range. The hydrophilicity imparting agent contains a polyoxyethylene group (paragraph 19). The hydrophilicity imparting agent does not have an amino group that can react with an isocyanate group (paragraph 19).
The polyol includes a polyester polyol, a polycarbonate polyol, polyether polyol, a polyester ether polyol and any combinations thereof (paragraphs 12-16).
The adhesive composition has a water contact angle of 50o or less within the claimed range (paragraph 6).
The adhesive composition satisfies the claimed conditions (1)-(4).
JP’803 does not explicitly disclose the polyol comprising a crystalline polyol and an amorphous polyol wherein the amorphous polyol contains structural units derived from an aliphatic dicarboxylic acid and an aromatic dicarboxylic acid.
Zhu, however, discloses a moisture-curable polyurethane adhesive composition comprising a polyurethane prepolymer obtained by reacting a polyol with a polyisocyanate wherein the polyol comprises an amorphous polyester polyol, a semi-crystalline polyester polyol, and a polyether polyol (paragraph 21).
As the claim does not differentiate the crystalline polymer from the semi-crystalline polymer, the examiner equates the semi-crystalline polyester polyol having a degree of crystallinity of 50-90% (paragraph 31) to the claimed crystalline polyol.
Zhu also teaches that the polyurethane adhesive composition further contains less than 5% by mass of a crystalline polyol (paragraph 38). The crystalline polyol of less than 5% by mass reads on the claimed crystalline polyol.
Zhu also discloses that the amorphous polyester polyol is produced by polycondensation of an aromatic polycarboxylic acid, an aliphatic polyol, and an aliphatic polycarboxylic acid as major components (paragraph 24).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a combination of semi-crystalline polyol and an amorphous polyol disclosed in Zhu for the polyol disclosed in JP’803, motivated by the desire to provide a polyurethane adhesive composition having improved initial tack and excellent moisture permeability.
Response to Arguments
Applicant alleges that the claim is not rendered obvious in view of the combined disclosures of JP’083 and Zhu. Zhu teaches away from crystalline polyols having at least 90% crystallinity because any non-zero amount of the crystalline polyols would deteriorate the moisture permeability.
The examiner respectfully disagrees.
Firstly, nowhere does the claim recite the content of the crystalline polyol. The crystalline polyol in an amount of less than 5% by mass reads on the claimed crystalline polyol. Zhu discloses “more preferably no crystalline polyols as the incorporation of the crystalline polyol may deteriorate the moisture permeability”. The phrase “more preferably” indicates that no crystalline polyols are preferable but any amount of less than 5% by mass is acceptable and within the scope of the reference.
Secondly, as the claim does not differentiate the crystalline polyol from the semi-crystalline polyol in terms of crystallinity, the examiner equates the semi-crystalline polyester polyol having a degree of crystallinity of 50-90% (paragraph 31) to the claimed crystalline polyol.
Finally, substitution of the combination of semi-crystalline polyol and an amorphous polyol disclosed in Zhu for the polyol of JP’803 provides a polyurethane adhesive composition having improved initial tack and excellent moisture permeability while maintaining great final adhesive strength and hydrophilicity properties. That is a motivation to modify the references. Hence, a prima facie case of obviousness is said to exist. Accordingly, the rejection over JP’803 in view of Zhu has been maintained.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2022027803 (hereinafter “JP’803”) in view of CN 107090268 to Zhang (hereinafter “Zhang”).
As to claims 1 and 3, JP’803 discloses a moisture-curable polyurethane adhesive composition comprising: (i) a polyurethane prepolymer obtained by reacting a polyol with a polyisocyanate; and (ii) a hydrophilicity imparting agent wherein the hydrophilicity imparting agent is present in an amount of 5-20% by mass of the adhesive composition (paragraph 6). This is within the claimed range.
The polyol includes a polyester polyol, a polycarbonate polyol, a polyether polyol, a polyester ether polyol, or any combinations thereof (paragraphs 12-16).
The hydrophilicity imparting agent contains a polyoxyethylene group (paragraph 19). The hydrophilicity imparting agent does not have an amino group that can react with an isocyanate group (paragraph 19).
The adhesive composition has a water contact angle of 50o or less within the claimed range (paragraph 6).
The adhesive composition satisfies the claimed conditions (1)-(4).
JP’803 does not explicitly disclose the polyol comprising a crystalline polyol and an amorphous polyol wherein the amorphous polyol contains structural units derived from an aliphatic dicarboxylic acid and an aromatic dicarboxylic acid.
Zhang, however, discloses a moisture-curable polyurethane adhesive composition comprising a polyurethane prepolymer obtained by reacting a polyol with a polyisocyanate wherein the polyol comprises an amorphous polyester polyol, a crystalline polyester polyol and polyether polyol (summary of the invention).
In particular, the polyurethane adhesive is comprised of:
20-50 parts by mass of polyether polyol,
10-40 parts by mass of polyester polyol (10-40 parts by mass of crystalline polyester polyol and 0-10 parts by mass of amorphous polyester polyol),
0.5-5 parts by mass of chain extender,
20-40 parts by mass of isocyanate, and
0.01-1 parts by mass of catalyst.
Zhang also discloses that the amorphous polyester polyol comprises two or more polymers formed from polycondensation of glycol, butanediol in adipic acid and terephthalic acid. That is, the amorphous polyol contains structural units derived from an aliphatic dicarboxylic acid and an aromatic dicarboxylic acid.
The combined disclosures of JP’803 and Zhang result in an adhesive composition comprising the polyurethane adhesive is comprised of 5-20 mass% of a hydrophilic agent and 50-95 mass% of the polyurethane prepolymer wherein the polyurethane prepolymer is obtained from a reaction of resulting polyol and isocyanate. The resulting polyol is a combination of a polyether polyol and a polyester polyol wherein the polyester polyol comprises a crystalline polyester polyol and amorphous polyester polyol with a mixing ratio of (10-40): (0 to 10).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a combination of a crystalline polyol and an amorphous polyol disclosed in Zhang for the polyol disclosed in JP’803 motivated by the desire to provide a polyurethane adhesive composition having improved initial tack, great moisture-permeability, and excellent heat resistance and flowability properties.
Response to Arguments
Applicant alleges that JP’803 uses 5-20 mass% of the hydrophilic agent to achieving high hydrophilicity and strong final adhesive strength at low coat weight application. Zhang is concerned with an adhesive composition comprising 10-40 parts crystalline polyester polyol and 0-10 parts amorphous polyester polyol. Applicant then states that the combined teachings of JP’803 and Zhang would push the adhesive composition outside the operable set of JP’803, thereby disrupting the delicate 5-20% by mass of the hydrophilic agent required for a low amount application.
The examiner respectfully disagrees.
The JP’803 reference:
The polyurethane adhesive is comprised of 5-20 mass% of a hydrophilic agent and 50-95 mass% of the polyurethane prepolymer (paragraphs 6 and 11) wherein the polyurethane prepolymer is obtained from a reaction of polyol and isocyanate (paragraph 6). The polyol includes a polyester polyol, a polycarbonate polyol, a polyether polyol, a polyester ether polyol, or any combinations thereof (paragraphs 12-16).
The Zhang reference:
The polyurethane adhesive is comprised of:
20-50 parts by mass of polyether polyol,
10-40 parts by mass of polyester polyol (10-40 parts by mass of crystalline polyester polyol and 0-10 parts by mass of amorphous polyester polyol),
0.5-5 parts by mass of chain extender,
20-40 parts by mass of isocyanate, and
0.01-1 parts by mass of catalyst.
The combined disclosures of JP’803 and Zhang result in an adhesive composition comprising 5-20 mass% of a hydrophilic agent and 50-95 mass% of the polyurethane prepolymer wherein the polyurethane prepolymer is obtained from a reaction of isocyanate and modified polyol. The modified polyol is a combination of a polyether polyol and a polyester polyol wherein the polyester polyol comprises a crystalline polyester polyol and amorphous polyester polyol with a mixing ratio of (10-40): (0 to 10).
The combination of JP’803 and Zhang does not push the content of the hydrophilic agent outside the range of 5-20 mass % as argued by the Applicant. Instead, the combination of the references results in an adhesive composition comprising a new polyol comprising a polyether polyol and a polyester polyol wherein the polyester polyol comprises a crystalline polyester polyol and amorphous polyester polyol with a mixing ratio of (10-40): (0 to 10).
As there is a motivation to combine JP’803 and Zhang, a prima facie case of obviousness is said to exist. Accordingly, the rejection over JP’803 in view of Zhang has been maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights