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 .
Claim Interpretation
Applicant’s claim 1 requires for polymer particles to have a glass transition temperature as determined by DSC according to ISO 11357, second heating, at a heating and cooling rate of 20 K/min. The claim does not require any value. While not all polymers have Tg, every polymer in the prior art that undergoes transition from one state to another will meet the limitation of having glass transition and step height (second heating).
With respect to second heating, which refers to change in specific heat capacity as well as other thermal properties that occur at the glass transition temperature, the claim also does not place any limits or definition as to what the change in heat capacity is, therefore any change even if minimal will meet the claims.
With respect to the step II, storing of the composition, the length of storage is interpreted very broadly in accordance with broadest reasonable interpretation, to be as short as 1 minute and as long as several days. This includes storing the particulates in a chamber before deposition onto a substrate or before making an article out of them.
Applicant’s filing date is 12/19/2024 claiming priority to the PCT application EP2023/066197 filed on 6/16/2023 and EP filing date od 6/23/2022 none of the foreign priority dates are perfected. One year grace period for applying applicant’s own work in a rejection is 6/23/2021. Consequently anything published by applicants prior to 6/23/2021 qualifies as a prior art.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically claim 6 recites following:
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The claim basically states that the precipitate cannot have less than 5% of water or that it has at least 5% of water which is already limitation in the instant claim 1 on which claim 7 depends.
Claim 1 states that the precipitate of step II is subject to grinding and the precipitate has a water content of at least 5%. In another word, the precipitate has to have water content of at least 5% before it is subject to grinding.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claims 1, 3 and 4-15 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Achten (WO 2018/046739) in view of evidence in Dispercoll U XP 2682 datasheet. Note US 2019/0184632 will be used as a translation for the WO publication.
With respect to claims 1, 7 and 8, Achten discloses aqueous dispersion of polymeric particles. Specific particles include Dispercoll U XP 2682. This particular polymer particle according to the manufacturer’s datasheet is in aqueous dispersion, having non-volatile content (polymeric content) of 49-51 %, which means water content is the balance (approximately 50). The water content further meets limitation of instant claim 8.
The polymeric particles are subject to precipitation by freezing at -20oC [0085]. The precipitate is then ground which meets the limitation of instant step III.
With respect to the glass transition temperature and second heating, the only requirement in the claims is that the particles possesses such property. Particulates of Achten do possess this property. Specifically in claim 16 these properties are measured at 5 K/min. This means that the property is inherent at higher cooling and heating rates for the same polymers especially when no values are claimed.
With respect to claim 3, ground particulate is then dried for 48 hours [0085].
With respect to claims 9 and 10, the polymer particles are polyurethane particles, specifically Dispercoll U XP 2682 is a polyurethane.
With respect to claim 11, as per datasheet and manufacturer’s website has number average molecular weight of no more than 50,000 g/mol.
With respect to claim 12, as seen from the attached datasheet, the dispersion has approximately 50% of solids content.
With respect to claims 13 and 15, Achten discloses particulate composition wherein the particles are fusible (abstract), such composition is utilized to make article that is in a form of an adhesive or varnish (abstract).
With respect to claim 14, the particulates utilized in Achten have particle diameter (particle size) of less than 0.25 mm which is less than claimed 0.5 mm utilizing malver mastersizer 3000 [0025] which is more accurate than sieve. However, during the process Achten utilizes fractional sieving to adjust the particle size. Specifically, particles which are too large are returned to the grinding process to obtain particulates under 125 microns. This also means that 100 % of the particles of Achten are under claimed 0.5 mm particle size.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Achten (WO 2018/046739) in view of Blum (US 4,888,124) evidence in Dispercoll U XP 2682 datasheet. Note US 2019/0184632 will be used as a translation for the WO publication.
Discussion of Achten from paragraph 1 of this office action is incorporated here by reference. In summary Achten discloses aqueous polyurethane particulate dispersion which is precipitated in temperatures below zero, filtered, ground and dried. The polymer of Achten has solids content of 50%.
While Achten does not explicitly say that the particulates are concentrated, Achten does teach that they are filtered [0085] wherein filtration in itself will inherently concentrate the particulates removing water.
While Achten discloses filtration griding and drying, he offers little detail with respect to the conditions necessary to achieve and adhesive polymer particle.
Blum discloses a process for making particulate adhesive which comprise aqueous polyurethane particulate dispersion (Abstract). The liquid medium includes water and aqueous solvent (col. 3, l. 44-45)The particulate polyurethane dispersion is subject to milling in order to control particle size(col. 3, l. 52-61). Important to note, that ball milling which is the apparatus disclosed in Blum is used to grind the particulates, therefore in this case, milling meets the limitation of grinding. before grinding because such particulates can actually be ground in two ways.
With respect to claim 2, Blum states that the dispersions, in order to be stable have to be concentrated because water or aqueous medium are reactive with the isocyanates, even if isocyanates are deactivated (col. 3, l. 13-20). This type of dispersion would be safer to handle due to reactivity of the isocyanates.
Concentrated dispersion is interpreted as dispersion having high solids content and low water or aqueous system content.
The content of the dispersions of Achten is approximately 50% solids and 50% aqueous component. Consequently by concentrating the composition of Achten to improve stability would include removal of water such that its content is less than 50%. Since Blum states that the dispersion is highly concentrated and have low viscosity, the content of water is being interpreted as at most 25%.
In the light of the disclosure of Blum, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to concentrate the dispersion of Achten in order to improve stability of the aqueous dispersion due to high reactivity between water and isocyanates.
With respect to claim 6, while Achten’632 discloses use of Cryogenic grinding, one of ordinary skill in the art would readily know that there are more than one way to grind the coarse polymer particle. Additionally claim 1 is not limited to performing the grinding at the cryogenic temperatures.
Blum discloses process of making polyurethane type aqueous dispersion, there the dispersion is ground and dried at low temperature in order to prevent premature crosslinking. The importance of the temperature at which grinding occurs has a lot to do with the types of monomers utilized in the making of polyurethanes and their glass transition temperature. One of ordinary skill in the art would readily understand this and would know how to select process steps and temperature to ensure the dispersion is stable.
Preferred polyols of Blum are also polyester polyols (col. 8, l. 39-43) having molecular weight as low as 60 (col. 8, l. 3-5) and isocyanate component is also the same as that of Achten’632.
Blum performs its milling operations as wet-milling, in presence of water, which means the temperature has cannot be below zero. Preferred temperature range for milling is 0-60oC (col. 10, l, 9-15), but below melting point of the polymer particles. This temperature range for grinding would also work for Achten’632 because the melt temperatures and glass transition temperatures are in the same range as that of Blum.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize various methods of grinding the polymer particles, as long and the glass transition temperature allow it, because one cannot grind a melted polymer. Grinding polyurethane particulates of Achten’632 at the temperature disclosed in Blum would work because these temperatures are within the glass transition temperature range of Achten. Meaning, the polymer can still retain its shape. Such method would still achieve particles having smaller diameter.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Achten (WO 2018/046739) in view of Achten (WO 2020//016115) and evidence in Dispercoll U XP 2682 datasheet.
Note US 2019/0184632 will be used as a translation for the WO’739 publication. US 2021/0245424 will be utilized as a translation of WO’115 publication. The remove any possible confusion, the references will be referred as Achten’632 and Achten’424 referring to actual translation.
Discussion of Achten’11 from paragraph 1 of this office action is incorporated here by reference. In summary, Achten’632 discloses aqueous dispersion for an adhesive which comprises polyurethane particulates. The dispersion is placed in sub zero temperature to allow the polymer to precipitate, next the composition is ground and dried. The drying temperature in Achten’632 is 30oC.
While Achten’632 discloses the drying step and the temperature, he does not disclose the content of the residual water.
With respect to claim 4, Achten ‘424 discloses another aqueous adhesive composition comprising polyurethane particulates [0034], which also undergoes precipitation, concentration grinding and drying. The drying temperature for the composition is also 30oC [0132] and the composition is dried before it is used. Achten’424 discloses that such drying temperatures still leave some residual water and at 30oC this content is less than or equal to 3% [0056].
In the light of the above disclosure it would have been obvious to one of ordinary skill in the art at the time instant invention was filed, that if Achten’632 who dries its aqueous polyurethane particle dispersion which also encompasses the dispersion of Achten’424, that if the dispersion is dried at 30oC, the same result is expected in both disclosures, specifically, the residual water content of less than or equal to 3%.
With respect to claim 5, while Achten’632 discloses grinding the polymeric particles at cryogenic temperatures, there is little comparison between the glass transition temperature and the grinding. The polymers of Achten’632 have a melting point of 20-100oC and while examples disclose specific tradenames, the specification enables amorphous polyurethanes to be utilized in lieu of what is exemplified.
Achten’424 also discloses use of Dispercoll polymers that are in aqueous dispersion to make the adhesive composition. The polymers of Achten’424 overall have transition temperature of -70 to 100oC (claim 1). Achten’424 also performs cryogenic grinding (less than 0oC) and drying the dispersion at the same temperature and for the same amount of time (see examples). Consequently the cryogenic grinding is performed at both above the glass transition temperature of the polymeric particle and at temperature that is less than zero.
Both Achten references utilize the same monomeric components to make polyurethane particulates. Specifically particular preference is given to the polyester polyols as preferred embodiments and within the same amount. The polyester polyols in both references can have molecular weights as low as 600, wherein molecular weight is one of the factors that will affect glass transition temperature. The preferred isocyanates are also IDI, IPDI, and MDI in both references.
In the light of the above disclosure it would have been obvious to one of ordinary skill in the art at the time of the instant invention that cryogenic grinding of Achten’632 would also be conducted above its glass transition temperature. This is because the polymers of both references are comprised of similar or the same type of monomers as disclosed above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims XXX are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-7, 13 of copending Application No. 17/998,571 (‘571) because:
Claim 1 of ‘571 discloses a process which recites following steps:
-providing an aqueous polymer particle dispersion,
-storing the dispersion until precipitate is formed,
-isolating the precipitate (meets instant concentrating or filtration
Claim 3 of ‘571 further teaches grinding the concentrated or isolates particles
Both claims meet the limitation of instant claim 1.
Claim 4 requires solids content in raw dispersion of step 1 to be in a range of 20-60% which would overlap with the instant invention before the composition is concentrated.
Claim 5 of ‘571 recites that the precipitate is formed in negative temperature which further meets instant claim 1.
Claim 6 of ‘571 requires step II to undergo filtration or decanting which would meet the limitation of claim 2 reciting concentrating of the dispersion.
Claim 7 of ‘571 states that the grinding is done at a temperature of less than or equal to 2oC, which meets the limitation of instant claim 5.
Claim 13 of ‘571 states that the particulates are polyurethane particles meeting instant claim 10, which is much broader in scope with respect to the particle size of the polyurethane.
Claim 15 of ‘571 discloses use of composition as an adhesive meeting instant claim 15.
This is a provisional nonstatutory double patenting rejection.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 20 March 2026