DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 5/18/26 is acknowledged. The traversal is on the ground(s) that the groups do not share the same technical feature. This is not found persuasive. The Examiner acknowledges that the previous office action didn’t phrase the restriction more clearly. Please note the following.
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
In the instant application, as evidenced by the rejection below, the adhesive in claim 1 does not make a contribution over the prior art such that unity of invention is lacking. The Examiner does agree with applicants that claims 15 to 18 belong in Group I. As such claims 1 to 5, 8 and 15 to 18 are under consideration while claims 10 to 14 are currently withdrawn. Note that this application has been transferred and is currently being examined by Examiner Margaret Moore
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1 - 4, 8 and 15 - 17 are rejected under 35 U.S.C. 103 as being unpatent-able over Mai et al. 2015/0037555 in view of AU 60777/94 or WO 2020/038994.
Mai et al. teach an adhesive composition that contains an anionic polyurethane.
See paragraph 24. This is the reaction product between a polyester and an isocyanate compound. See paragraphs 28 to 31.
This polyurethane has an enthalpy of fusion of at least about 25, preferably at least about 35, J/g. See paragraphs 5 and 6.
With regard to the polyester content relative to the total weight of the isocyanate reactive compound, this is not specified in Mai et al. but adjusting the weight amount of each component, in an effort to optimize and/or adjust the properties of the resulting polyester, would have been obvious and well within routine experimentation for one having ordinary skill in the art.
Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Also note that the DISPERCOLL line of polyurethanes taught in paragraph 34 are produced by the applicant’s company, Covestro. Applicants are requested to provide information as to the polyester versus isocyanate content in these polyurethanes.
In addition to the polyurethane dispersion the composition in Mai et al. includes a surface deactivated isocyanate. Specifically paragraph 40 teaches DISPERCOLL BL XP 2514. This is a TDI dimer (also known as a uretdione) that has an isocyanate group content of 7.5 to 10 wt%.1
As such Mai et al. teach an adhesive composition containing a polyurethane dis-persion meeting the requirement of the claimed polyisocyanate a), the polyester polyol b), the uretdione compound and the enthalpy of fusion requirement. The skilled artisan would have found the amount of polyester polyol in claim 1 to have been obvious, as noted above.
Thus the teachings in Mai et al. lack only a chelating agent in the preparation of the polyurethane polymer.
AU 60777/94 teaches a polyurethane dispersion that is used as an adhesive. Page 1, lines 29 to 31, teach that including a chelating agent improves mechanical properties, in particular the heat distortion resistance. This is also evidenced in the table on page 22. Page 6, lines 20 to 24, teaches that the amount of chelating agent is preferably from .02 to 2.5 wt%, which is an amount that overlaps with that claimed such that the skilled artisan would have found the selection of an amount within the claimed range of .01 to 1.95 wt% to have been obvious.
WO 2020/038994 teaches an adhesive composition that contains a polyurethane dispersion. See page 18, line 13. A chelating agent (c) is added in a preferred amount of from .05 to 1 wt% (page 15, lines 9-11) to improve yellowing resistance (page 29, line 27).
As such one having ordinary skill in the art would have been motivated to include a chelating agent into the preparation of the polyurethane in Mai et al. in an effort to take advantage of the known benefits and properties thereof, including improved heat distortion resistance (as per the AU reference) or improved yellowing resistance (as per the WO reference). In this manner the totality of the limitations in claim 1 are rendered obvious.
For claims 2 and 15, note that selecting a polyester with an enthalpy of fusion within the range of the desired polyurethane of Mai et al. would have been an obvious selection to the skilled artisan in an effort to control and modify the enthalpy of the polyurethane.
For claim 3, note again that the polyurethane has an enthalpy of fusion of at least about 25, preferably at least about 35, J/g. See paragraphs 5 and 6.
For claims 4 and 17, note the rejection rationale for claim 1 which addresses the amount of chelating agent and how these teachings overlap with the claimed ranges such that selecting an amount within these ranges would have been obvious.
For claim 8, see paragraph 58 which teaches shoes.
For claim 16, note that the enthalpy of fusion after drying the composition is not specifically noted, but the fact that the enthalpy of fusion prior to drying in both the prior art and claimed invention are the same, it would follow, or be obvious, that the enthalpy of fusion for both of the dried compositions would be the same.
Claims 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mai et al. 2015/0037555 in view of AU 60777/94 or WO 2020/038994 as applied to claim 1 above, and further in view of Dell et al. 4,994,541.
Mai et al. generally teach that the deactivated isocyanates therein can include
aliphatic compounds (paragraph 36) but fail to specifically teach such an isocyanate having an isocyanate content as claimed.
Dell et al. teach uretdione compounds prepared from 1,6-diisocyanatohexane. See column 3, lines 46 to 50. These compounds have an isocyanate content of about 20 to 24 wt% which is a range that overlaps with the upper limit of 20 wt% such that this meets the requirements of claims 5 and 18. Along this line, note that page 14 of applicants’ specification teaches that the uretdione containing polyisocyanates useful in the inventive adhesive can be seen in Example 1 of EP 377177, of which Dell et al. is the US equivalent. As such applicants’ specification indicates that the uretdione compounds required in these claims are within the breadth of Dell et al.
One having ordinary skill in the art would have found it obvious and within routine experimentation to incorporate such an aliphatic deactivated isocyanate as found in Dell et al. into the composition of Mai et al. In this manner claims 5 and 18 are rendered obvious.
The Examiner acknowledges that Mai et al. prefer aromatic isocyanates to aliphatic (paragraph 36) but this is not sufficient to render the claims unobvious since patentees are neither limited to or by their preferred embodiments and the skilled artisan who desires a slower reacting adhesive or is not concerned with reaction time would have been motivated to select an aliphatic deactivated isocyanate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765
1 See paragraph 189 of Zhang et al., 2022/0411682 which confirms this content. If possible the Examiner asks that applicants confirm this as it too is a chemical supplied by Covestro.
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