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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/958,696, filed on 13 November 2018.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/958,696, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 20, which claims an article wherein “the first film does not contact the second film” does not have support in Application No. 16/958,696. While Application No. 16/958,696 discloses “The surface of the first substrate is then brought into contact with the surface of the second substrate to mix and react the two components, thereby forming a laminate” (Application No. 16/958,696 specification filed 27 June 2020, page 5, lines 1-3; see also instant specification, page 5, lines 6-8), there is no support in the disclosure of Application No. 16/958,696 to recite “the first film does not contact the second film”. Therefore, the effective filing date of claim 20 is 05 November 2024. However, claims 1-19 and 21-23 have the effective filing date of 27 December 2017.
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 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,398,303 B2 (hereinafter “’303”) in view of Mahdi et al. (US 2013/0255880 A1, “Mahdi”).
With respect to claim 11, ‘303 discloses a two-component solventless adhesive composition comprising: (A) an isocyanate component; and (B) a polyol component comprising (i) from 2-10 wt% of an amine-initiated polyol comprising two or more primary hydroxyl groups and a backbone incorporating a plurality of tertiary amines and having the Structure I, wherein R1 is a C1 alkyl group and R2 and R3 are independently a linear or branched alkyl group, the amine-initiated polyol has a functionality from 4-8, a hydroxyl number from 31-40, and a viscosity at 40°C from 500-20,000 mPa·s; (ii) a plurality of non-amine-initiated polyols comprising (a) a polyether polyol, and (b) a polyester polyol; and (iii) from 0.05-0.2 wt% of a silicone-based additive, where the weight percent is based on the total weight of the adhesive composition (claim 1).
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Structure I
However, ‘303 does not disclose wherein the isocyanate component is a blend of an aromatic isocyanate, an aliphatic isocyanate, and the blend contains more aromatic isocyanate than aliphatic isocyanate.
Mahdi teaches a two-component polyurethane adhesive having a component A and a curative B ([0009]) where the component A is a mixture of isocyanate compounds ([0010]) and the curative B is a polyol ([0011]). The polyisocyanate includes a mixture of an aromatic polyisocyanate and an aliphatic polyisocyanate, where there are 10-25 equivalents of aliphatic isocyanate per 100 equivalents of aromatic isocyanate ([0026]) (i.e., there is more aromatic isocyanate than aliphatic isocyanate). An adhesive utilizing such isocyanate displays excellent heat-activatable curing ([0016]).
‘303 and Mahdi are analogous inventions in the field of two-component polyurethane adhesives having a first isocyanate component and a second polyol component.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the isocyanate of ‘303 to be a mixture of aliphatic and aromatic isocyanate, where there is more aromatic isocyanate than aliphatic isocyanate, as taught by Mahdi in order to provide an adhesive having excellent heat-activatable curing (Mahdi, [0016]).
With respect to claim 12, Mahdi teaches the aromatic isocyanate includes diphenylmethane diisocyanate (MDI; i.e., methylene diphenyl diisocyanate) ([0023]) and the aliphatic isocyanate includes 1,6-hexane diisocyanate (HDI; i.e., hexamethylene diisocyanate) ([0023]).
With respect to claim 13, ‘303 in view of Mahdi is silent with respect to the use of secondary amines with the amine-initiated polyol, and thus the amine-initiated polyol is void of secondary amines.
With respect to claim 14, ‘303 discloses the use of 0.05-0.2 wt% of a silicone-based additive (claim 1), which overlaps the presently claimed range.
With respect to claim 15, Mahdi teaches the aromatic isocyanate includes diphenylmethane diisocyanate (MDI; i.e., methylene diphenyl diisocyanate) ([0023]) and the aliphatic isocyanate includes 1,6-hexane diisocyanate (HDI; i.e., hexamethylene diisocyanate) ([0023]).
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.
Claims 11-23 are rejected under 35 U.S.C. 103 as being obvious over Wu et al. (WO 2018/140116 A1, “Wu”) in view of Mahdi et al. (US 2013/0255880 A1, “Mahdi”) and Imai et al. (US 2002/0157789 A1, “Imai”).
The applied reference has common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With respect to claims 11-15, Wu discloses a two-component solventless polyurethane adhesive composition including and isocyanate component including an isocyanate, and an isocyanate-reactive component including an amine-initiated polyol comprising two or more primary hydroxyl groups and a backbone incorporating at least one tertiary amine (i.e., a plurality of tertiary amines); the amine-initiated polyol has a functionality of 4 to 8, a hydroxyl number of 31 to 40, a viscosity at 25°C of 500 to 30,000 mPa·s, and has the structure I shown below where R1, R2, and R3 are each independently a linear or branched alkyl group, such as a C1-C6 alkyl group (page 3, line 24-page 4, line 9; page 7, line 23-page 8, line 16). The amine-initiated polyol is present in an amount of 0.2-30 wt% of the isocyanate-reactive component (i.e., is present in an amount of 0.2-30 wt% of the polyol component) (page 8, line 19-page 9, line 3). No other amine-initiated polyols are required, and thus the amine-initiated polyol is void of secondary amines. Non-amine-initiated polyols are present in the isocyanate-reactive component (i.e., in the polyol component) and includes polyester polyols and polyether polyols (page 9, lines 4-6). The isocyanate components includes combinations of aliphatic polyisocyanates and aromatic polyisocyanates (page 6, lines 11-13) where the isocyanates include hexamethylene diisocyanate (HDI) and methylene diphenyl diisocyanate (MDI) (page 6, lines 17-20). The adhesive includes additives including defoamers (i.e., anti-foaming agents) and wetting agents (page 10, lines 18-21).
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Structure I
However, Wu does not disclose wherein isocyanate blend contains more aromatic isocyanate than aliphatic isocyanate, nor wherein the additive is a silicone-based additive present in an amount of 0.05-0.1 wt%.
Mahdi teaches a two-component polyurethane adhesive having a component A and a curative B ([0009]) where the component A is a mixture of isocyanate compounds ([0010]) and the curative B is a polyol ([0011]). The polyisocyanate includes a mixture of an aromatic polyisocyanate and an aliphatic polyisocyanate, where there are 10-25 equivalents of aliphatic isocyanate per 100 equivalents of aromatic isocyanate ([0026]) (i.e., there is more aromatic isocyanate than aliphatic isocyanate). An adhesive utilizing such isocyanate displays excellent heat-activatable curing ([0016]).
Wu and Mahdi are analogous inventions in the field of two-component polyurethane adhesives having a first component that is a blend of isocyanates and a second component that is a polyol.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the isocyanate component of Wu to contain more aromatic isocyanate than aliphatic isocyanate as taught by Mahdi in order to provide an adhesive having excellent heat-activatable curing (Mahdi, [0016]).
However, Wu in view of Mahdi does not disclose wherein the additive is a silicone-based additive present in an amount of 0.05-0.1 wt%.
Imai teaches a solvent-free (i.e., solventless) two-component adhesive composition ([0011]) comprising a polyol component (A) and a polyisocyanate component (B) ([0015]) and further comprises a silicone anti-foaming agent ([0065-0066]). The silicone anti-foaming agent is present in an amount of 0.001-1 parts by weight relative to 100 parts by weight of the polyol component (A); if the amount of the anti-foaming agent is too small, the anti-foaming effect does not appear enough, but if the amount is too large, defects occur ([0069]).
Wu in view of Mahdi and Imai are analogous inventions in the field of solventless two-component polyurethane adhesive compositions including defoaming (i.e., anti-foaming) agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solventless two-component polyurethane adhesive of Wu in view of Mahdi to contain 0.001-1 parts by weight of a silicone anti-foaming agent, including amounts presently claimed, as taught by Imai in order to provide sufficient anti-foaming effect while not allowing defects to occur (Imai, [0069]).
With respect to claim 16, Wu discloses a laminate (i.e., article) having a first film and second film, where the first film has an isocyanate component applied to it and the second film has an isocyanate-reactive component applied to it (page 11, lines 8-10). The isocyanate component including an isocyanate, and an isocyanate-reactive component including an amine-initiated polyol comprising two or more primary hydroxyl groups and a backbone incorporating at least one tertiary amine (i.e., a plurality of tertiary amines); the amine-initiated polyol has a functionality of 4 to 8, a hydroxyl number of 31 to 40, a viscosity at 25°C of 500 to 30,000 mPa·s, and has the structure I shown below where R1, R2, and R3 are each independently a linear or branched alkyl group, such as a C1-C6 alkyl group (page 3, line 24-page 4, line 9; page 7, line 23-page 8, line 16). The amine-initiated polyol is present in an amount of 0.2-30 wt% of the isocyanate-reactive component (i.e., is present in an amount of 0.2-30 wt% of the polyol component) (page 8, line 19-page 9, line 3). No other amine-initiated polyols are required, and thus the amine-initiated polyol is void of secondary amines. Non-amine-initiated polyols are present in the isocyanate-reactive component (i.e., in the polyol component) and includes polyester polyols and polyether polyols (page 9, lines 4-6). The isocyanate components includes combinations of aliphatic polyisocyanates and aromatic polyisocyanates (page 6, lines 11-13) where the isocyanates include hexamethylene diisocyanate (HDI) and methylene diphenyl diisocyanate (MDI) (page 6, lines 17-20). The adhesive includes additives including defoamers (i.e., anti-foaming agents) and wetting agents (page 10, lines 18-21).
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Structure I
However, Wu does not disclose wherein isocyanate blend contains more aromatic isocyanate than aliphatic isocyanate, nor wherein the additive is a silicone-based additive present in an amount of 0.05-0.1 wt%.
Mahdi teaches a two-component polyurethane adhesive having a component A and a curative B ([0009]) where the component A is a mixture of isocyanate compounds ([0010]) and the curative B is a polyol ([0011]). The polyisocyanate includes a mixture of an aromatic polyisocyanate and an aliphatic polyisocyanate, where there are 10-25 equivalents of aliphatic isocyanate per 100 equivalents of aromatic isocyanate ([0026]) (i.e., there is more aromatic isocyanate than aliphatic isocyanate). An adhesive utilizing such isocyanate displays excellent heat-activatable curing ([0016]).
Wu and Mahdi are analogous inventions in the field of two-component polyurethane adhesives having a first component that is a blend of isocyanates and a second component that is a polyol.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the isocyanate component of Wu to contain more aromatic isocyanate than aliphatic isocyanate as taught by Mahdi in order to provide an adhesive having excellent heat-activatable curing (Mahdi, [0016]).
However, Wu in view of Mahdi does not disclose wherein the additive is a silicone-based additive present in an amount of 0.05-0.1 wt%.
Imai teaches a solvent-free (i.e., solventless) two-component adhesive composition ([0011]) comprising a polyol component (A) and a polyisocyanate component (B) ([0015]) and further comprises a silicone anti-foaming agent ([0065-0066]). The silicone anti-foaming agent is present in an amount of 0.001-1 parts by weight relative to 100 parts by weight of the polyol component (A); if the amount of the anti-foaming agent is too small, the anti-foaming effect does not appear enough, but if the amount is too large, defects occur ([0069]).
Wu in view of Mahdi and Imai are analogous inventions in the field of solventless two-component polyurethane adhesive compositions including defoaming (i.e., anti-foaming) agents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the solventless two-component polyurethane adhesive of Wu in view of Mahdi to contain 0.001-1 parts by weight of a silicone anti-foaming agent, including amounts presently claimed, as taught by Imai in order to provide sufficient anti-foaming effect while not allowing defects to occur (Imai, [0069]).
With respect to claims 17-18, Wu discloses the substrates include polymer films (page 12, lines 11-12) including polyethylene terephthalate (PET) and polyethylene (PE) (page 14, lines 12-14), and thus the first and second films are made of different materials.
With respect to claim 19, Wu discloses the thickness of the first and second substrates are 0.5-2.5 µm (page 11, lines 15-19).
With respect to claim 20, Wu discloses applying the two components to separate substrates (page 11, lines 8-10), and thus when the substrates are first coated, the first film does not contact the second film.
With respect to claim 21, Wu discloses the first and second substrates are run though a roller in order to form an adhesive layer (page 11, lines 21-25), and thus the first and second films contact each other.
With respect to claim 22, Wu discloses the thickness of the adhesive layer is 1-5 µm (page 11, lines 24-25).
With respect to claim 23, Wu discloses the amine-initiated polyol is present in an amount of 0.2-30 wt% of the isocyanate-reactive component (i.e., is present in an amount of 0.2-30 wt% of the polyol component) (page 8, line 19-page 9, line 3). Similarly, Imai teaches the silicone anti-foaming agent is present in an amount of 0.001-1 parts by weight relative to 100 parts by weight of the polyol component (A) ([0069]).
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Worley et al. (US 2011/0098417 A1) discloses a polyurethane system comprising a polyurethane made from an isocyanate component and a polyol composition ([0010]); the polyol includes amine-initiated polyols ([0034]) such as Voranol RA 800, which has a functionality of 4, hydroxyl number of 780-820, and a viscosity at 25°C of 17,000 mPa·s ([0080]). However, Worley et al. does not disclose an amine-initiated polyol having the structure presently claimed with a hydroxyl number from 31-40.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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