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 .
Information Disclosure Statement
The information disclosure statement filed 5/30/2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
Claim Objections
Claim 13 is objected to because of the following informalities:
in claim 13, line 1 delete “claim 1 any.” and insert therein - - claim 1. - - for form.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation “the amine-terminated coat weight” in line 8. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-4, 6, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauriedel et al. (U.S. Patent 4,184,005).
Regarding claim 1, Bauriedel discloses a process for forming a laminate comprising: (A) uniformly (as a film) applying an isocyanate component to a first substrate, the isocyanate component comprising an isocyanate compound (having at least two terminal isocyanate groups); (B) uniformly (as a film) applying an isocyanate-reactive component to a second substrate, the isocyanate-reactive component comprising an amine-terminated compound (having at least two reactive terminal amino groups); (C) bringing the first substrate and the second substrate together, thereby mixing and reacting the isocyanate component and the isocyanate-reactive component to form an adhesive composition between the first substrate and the second substrate; (D) curing (as necessarily occurs by completing the reaction and including storage over seven days increases the peel adhesiveness to its final value as in the Examples) the adhesive composition to bond the first substrate and the second substrate; and (E) forming the laminate (Abstract and Column 2, lines 25-50 and Column 3, lines 45-56 and Column 5, line 56 to Column 6, line 4 and the Examples).
Regarding claim 2, Bauriedel teaches providing the isocyanate-reactive component comprising a diamine-terminated polyether (Column 3, lines 45-66).
Regarding claim 3, Bauriedel teaches providing the isocyanate-reactive component comprising from 20 wt% to 100 wt% of the amine-terminated compound, based on the total weight of the isocyanate-reactive component (see the Examples and Component B).
Regarding claim 4, Bauriedel teaches providing the isocyanate-reactive component comprising the amine-terminated compound and a polyol compound (see the Examples and Component B and two amine-terminated polyol compounds).
Regarding claim 6, Bauriedel teaches providing the isocyanate component comprising an isocyanate prepolymer having an isocyanate content by weight from 3 wt% to 25 wt% (see the Examples and Physical Characteristics of Component A).
Regarding claim 13, Bauriedel teaches a laminate formed by the process of claim 1.
Regarding claim 14, Bauriedel teaches a two-component solvent-less adhesive composition comprising: (A) an isocyanate component adapted for application to a first substrate, the isocyanate component comprising an isocyanate prepolymer (having at least two terminal isocyanate groups); (B) an isocyanate-reactive component (having at least two reactive terminal amino groups) adapted for application to a second substrate, the isocyanate-reactive component comprising an amine-terminated compound; the two-component solvent-less adhesive composition having Isocyanate:Isocyanate- Reactive Stoichiometric Ratio from 1.0 to 5.0 (Abstract and Column 2, lines 25-50 and Column 3, lines 45-56 and Column 5, line 56 to Column 6, line 4 and the Examples).
Regarding claim 15, Bauriedel teaches a laminate comprising: a first substrate; a second substrate; a solvent-less adhesive layer between the first substrate and the second substrate, the solvent-less adhesive layer comprising (A) an isocyanate component comprising an isocyanate prepolymer (having at least two terminal isocyanate groups); and(B) an isocyanate-reactive component comprising an amine-terminated compound (having at least two reactive terminal amino groups) (Abstract and Column 2, lines 25-50 and Column 3, lines 45-56 and Column 5, line 56 to Column 6, line 4 and the Examples).
Claims 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bae et al. (WO 2017/023405).
Regarding claim 13, Bae discloses a laminate comprising a first substrate, a second substrate and an adhesive composition between the first substrate and the second substrate the adhesive composition comprising a mixed, reacted, and cured composition comprising an isocyanate component comprising an isocyanate compound and an isocyanate-reactive component comprising an amine-terminated compound (Abstract and Page 2, line 18 to Page 3, line 18 and Page 4, lines 12-13 and Page 5, lines 16-17 and Page 6, lines 1 and 4-31 and Examples 1-10).
As to the limitation in claim 13 of “formed by the process of claim 1”, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Bae described above), although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (See MPEP 2113).
Regarding claim 14, Bae discloses a two-component solvent-less adhesive composition (prior to curing) comprising: (A) an isocyanate component adapted for application to a first substrate, the isocyanate component comprising an isocyanate prepolymer (Page 5, lines 16-17); (B) an isocyanate-reactive component adapted for application to a second substrate, the isocyanate-reactive component comprising an amine-terminated compound (Page 3, lines 5-17); the two-component solvent-less adhesive composition having Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0 (Abstract and Page 2, line 18 to Page 3, line 18 and Page 4, lines 12-13 and Page 5, lines 16-17 and Page 6, lines 1 and 4-31 and Examples 1-10).
Regarding claim 15, Bae discloses a laminate comprising: a first substrate; a second substrate; a (prior to curing) solvent-less adhesive layer between the first substrate and the second substrate, the solvent-less adhesive layer comprising (A) an isocyanate component comprising an isocyanate prepolymer; and (B) an isocyanate-reactive component comprising an amine-terminated compound (Abstract and Page 2, line 18 to Page 3, line 18 and Page 4, lines 12-13 and Page 5, lines 16-17 and Page 6, lines 1 and 4-31 and Examples 1-10).
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.
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 1-4, 7, 9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bae in view of Wu et al. (WO 2017/196531) and/or Heath (GB 2284381).
Regarding claim 1, Bae discloses a process for forming a laminate comprising: (A) mixing two components comprising an isocyanate component comprising an isocyanate compound and an isocyanate-reactive component comprising an amine-terminated compound to form an adhesive composition; (B) applying the adhesive composition to a first substrate; (C) bringing the first substrate and a second substrate together; (D) curing the adhesive composition to bond the first substrate and the second substrate; and (E) forming the laminate (Abstract and Page 2, line 18 to Page 3, line 18 and Page 4, lines 12-13 and Page 5, lines 16-17 and Page 6, lines 1 and 4-31 and Examples 1-10).
As to the limitations in claim 1 of “(A) uniformly applying an isocyanate component to a first substrate, the isocyanate component comprising an isocyanate compound; (B) uniformly applying an isocyanate-reactive component to a second substrate, the isocyanate-reactive component comprising an amine-terminated compound; (C) bringing the first substrate and the second substrate together, thereby mixing and reacting the isocyanate component and the isocyanate-reactive component to form an adhesive composition between the first substrate and the second substrate”, as noted above Bae teaches mixing the components prior to applying the components to the substrates. Bae does not teach away from separately applying the components to the substrates and then mixing by bringing the substrates together. It is well understood by one of ordinary skill in the art of two component adhesive compositions (and including an isocyanate component and an isocyanate-reactive component) to apply and mix by (A) uniformly applying the isocyanate component to the first substrate, the isocyanate component comprising an isocyanate compound; (B) uniformly applying the isocyanate-reactive component to the second substrate; (C) bringing the first substrate and the second substrate together, thereby mixing and reacting the isocyanate component and the isocyanate-reactive component to form an adhesive composition between the first substrate and the second substrate; (D) curing the adhesive composition to bond the first substrate and the second substrate; and (E) forming the laminate to overcome the numerous disadvantages inherent in mixing the components prior to applying, i.e. pre-mixed, as evidenced by Wu (Figure 1 and Page 3, lines 8-10 and Page 4, line 22 to Page 5, line 5 ) and/or Heath (Figure 2 and Pages 1-4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for forming the laminate as taught by Bae comprises (A) uniformly applying the isocyanate component to the first substrate, the isocyanate component comprising the isocyanate compound; (B) uniformly applying the isocyanate-reactive component to the second substrate, the isocyanate-reactive component comprising the amine-terminated compound; (C) bringing the first substrate and the second substrate together, thereby mixing and reacting the isocyanate component and the isocyanate-reactive component to form the adhesive composition between the first substrate and the second substrate not only as a simple substitution of one technique for applying and mixing the components for another to yield predictable results but to overcome the numerous disadvantages inherent in mixing the components prior to applying as evidenced by Wu and/or Heath.
Regarding claim 2, Bae teaches providing the isocyanate-reactive component comprising a diamine-terminated polyether (Page 3, lines 5-17 and see the Examples and including diamine-terminated polyethers from Versalink the same as in paragraphs 00105 and 00106 and the Examples of the instant application).
Regarding claim 3, Bae teaches (or would have made prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention) providing the isocyanate-reactive component comprising from 20 wt% to 100 wt% of the amine-terminated compound, based on the total weight of the isocyanate-reactive component (Page 4, lines 1-6), it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Regarding claim 4, Bae teaches providing the isocyanate-reactive component comprising the amine-terminated compound and a polyol compound (Page 3, lines 24-26).
Regarding claim 7, Bae as modified by Wu and/or Heath teach applying the isocyanate component to the first substrate necessarily at an isocyanate coat weight and applying the isocyanate-reactive component to the second substrate necessarily at an isocyanate-reactive coat weight. As to the limitations in claim 7 of “determining the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio by calculating the molar ratio of isocyanate groups in the isocyanate component to the combined amount of amine groups and hydroxyl groups in the isocyanate-reactive component; adjusting the isocyanate coat weight and the amine-terminated coat weight to obtain an Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0”, Bae teaches a stoichiometric ratio of from 0.9 to 2.5. Wu and/or Heath do not expressly teach the coat weight. However, Wu (Page 12, lines 2-3) and Heath (Page 4, first full paragraph) each teach by controlling the thickness of the layers applied to each substrate the ratio of the components can be controlled, and Wu (Page 10, lines 12-18) further teaches like that in Bae the Isocyanate (component):Isocyanate-Reactive (component) Ratio is from 1.0 to 3.0 and determined as a function of the laminate application. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for forming the laminate as taught by Bae as modified by Wu and/or Heath further comprises controlling the thickness of the layers applied to each substrate so that the ratio of the components can be controlled to obtain an Isocyanate:lsocyanate-Reactive Stoichiometric Ratio such as determined as a function of the laminate application, i.e. considered determining the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio by calculating the molar ratio of isocyanate groups in the isocyanate component to the combined amount of amine groups and hydroxyl groups in the isocyanate-reactive component and adjusting the isocyanate coat weight and the amine-terminated isocyanate-reactive coat weight to obtain an Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0, as is the known technique to achieve the desired ratio as evidenced by Wu and/or Heath and consistent with the ratio taught by Bae, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Regarding claim 9, Bae teaches (or would have made prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention) curing the adhesive composition at a temperature from 20oC to 25oC for a period from 60 minutes to 10 days (Page 6, lines 18-22 and Examples 1-10 wherein the time period is from 120 minutes to 9 days), it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Regarding claims 11 and 12, Bae as modified by Wu and/or Heath teach (A) uniformly applying the isocyanate component to the first substrate, the first substrate comprising a first film comprising a metal (e.g. aluminum) foil layer or a polyethyleneterephthalate (polyester) layer (Page 6, lines 4-31 of Bae); (B) uniformly applying the isocyanate-reactive component to the second substrate, the second substrate comprising a second film comprising an ethylene-based (e.g. high density polyethylene, etc.) polymer layer (Page 6, lines 4-31 of Bae); (D) curing the adhesive composition at a temperature from 15oC to 50oC or 20oC to 25oC for a period of (at least) 90 minutes (see claim 9 above and including in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05)); and (E) forming the laminate (and including with any further curing), the laminate having a bond strength of greater than 0.05 N/15 mm (see Page 7, lines 15-20 and Page 11, lines 4-6 and the Examples and including Tables 3-6).
Regarding claim 13, Bae as modified by Wu and/or Heath above teach a laminate formed by the process of claim 1.
Regarding claim 14, Bae as modified by Wu and/or Heath above teach a two-component solvent-less adhesive composition comprising: (A) an isocyanate component adapted for application to a first substrate, the isocyanate component comprising an isocyanate prepolymer; (B) an isocyanate-reactive component adapted for application to a second substrate, the isocyanate-reactive component comprising an amine-terminated compound; the two-component solvent-less adhesive composition having Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0.
Regarding claim 15, Bae as modified by Wu and/or Heath above teach a laminate comprising: a first substrate; a second substrate; a solvent-less adhesive layer between the first substrate and the second substrate, the solvent-less adhesive layer (at least prior to curing) comprising (A) an isocyanate component comprising an isocyanate prepolymer; and (B) an isocyanate-reactive component comprising an amine-terminated compound.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bauriedel in view of Vietti et al. (WO 2015/168670) or Sehanobish et al. (WO 2018/140116) or Fujita et al. (TW I508986 and see also the machine translation).
Bauriedel is described above in full detail.
Regarding claim 5, Bauriedel teaches providing the isocyanate-reactive component comprising the amine-terminated compound and a polyether polyol (see the Examples and two amine-terminated polyether polyol compounds). Bauriedel does not expressly teach a phosphate ester polyol. It is known to one of ordinary skill in the art of adhesive compositions comprising an isocyanate-reactive component comprising polyol(s) the polyol(s) include phosphate ester polyol (including used in combination with phosphorous-free polyol such as polyether polyol) as adhesion promoter as evidenced by Vietti (Paragraphs 0001, 0023, 0040, 0044, and 0045) or Sehanobish (Page 1, lines 8-13 and Page 7, lines 15-22 and Page 9, lines 18-20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention providing the isocyanate-reactive component comprising the amine-terminated compound and polyether polyol as taught by Bauriedel further includes a phosphate ester polyol as adhesion promoter as taught by Vietti or Sehanobish. Alternatively, conventional polyols (including used in combination with polyether polyol as the isocyanate-reactive component) include phosphate ester polyol (and including for flame retardancy) as evidenced by Fujita (Abstract and Pages 1-4 of the machine translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention providing the isocyanate-reactive component comprising the amine-terminated compound and polyether polyol as taught by Bauriedel further includes a phosphate ester polyol for flame retardancy as evidenced by Fujita.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bae and Wu and/or Heath as applied to claims 1-4, 7, 9, and 11-15 above, and further in view of Vietti or Sehanobish or Fujita.
Regarding claim 5, Bae as modified by Wu and/or Heath is described above in full detail. Bae teaches providing the isocyanate-reactive component comprising the amine-terminated compound further blended with other conventional polyols such as polyether polyols (Page 3, lines 24-26). Bae does not expressly teach the other conventional polyols include phosphate ester polyols. Bae teaches the adhesive composition is used such as in food packaging applications. It is known to one of ordinary skill in the art of adhesive compositions (such as used for food packaging applications) comprising an isocyanate-reactive component comprising polyol(s) the polyol(s) include phosphate ester polyol (including used in combination with phosphorous-free polyol such as polyether polyol) as adhesion promoter as evidenced by Vietti (Paragraphs 0001, 0023, 0040, 0044, and 0045) or Sehanobish (Page 1, lines 8-13 and Page 7, lines 15-22 and Page 9, lines 18-20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention providing the isocyanate-reactive component comprising the amine-terminated compound as taught by Bae as modified by Wu and/or Heath is further blended with other mixtures of conventional polyols such as including polyether polyol as directed to by Bae and a phosphate ester polyol as is not only conventional and predictable conventional polyol but is adhesion promoting as taught by Vietti or Sehanobish. Alternatively, conventional polyols (including used in combination with polyether polyol as the isocyanate-reactive component) include phosphate ester polyol (and including for flame retardancy) as evidenced by Fujita (Abstract and Pages 1-4 of the machine translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention providing the isocyanate-reactive component comprising the amine-terminated compound as taught by Bae as modified by Wu and/or Heath is further blended with other mixtures of conventional polyols such as including polyether polyol as directed to by Bae and a phosphate ester polyol as is not only conventional and predictable conventional polyol but has flame retardancy as evidenced by Fujita.
Claims 6, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Bae and Wu and/or Heath as applied to claims 1-4, 7, 9, and 11-15 above, and further in view of Wu.
Bae is described above in full detail.
Regarding claim 6, Bae teaches providing the isocyanate component comprising an isocyanate prepolymer (Page 5, lines 16-17) without expressly teaching the isocyanate content by weight. One of ordinary skill in the art understands conventional and predictable content is 1 wt% to 20 wt% as evidenced by Wu (Page 7, lines 12-19). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the isocyanate component comprising the isocyanate prepolymer as taught by Bae as modified by Wu and/or Heath has an isocyanate content by weight from 3 wt% to 25 wt% as is conventional and predictable in the art as evidenced by Wu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Regarding claim 8, Bae does not require applying the isocyanate component or isocyanate-reactive component at any particular viscosity wherein conventional and predictable viscosity at 25 oC is 300 cP to 12,000 cP and 10 cP to 40,000 cP respectively as evidenced by Wu (Page 7, lines 18-19 and Page 10, lines 5-6). Bae does not require forming the isocyanate-component layer on the first substrate at any particular coat weight. Bae does not require forming the isocyanate-reactive component layer on the second substrate at any particular coat weight. As noted above, Wu (Page 12, lines 2-3) and Heath (Page 4, first full paragraph) each teach by controlling the thickness of the layers applied to each substrate the ratio of the components can be controlled. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention applying the isocyanate component and the isocyanate-reactive component as taught by Bae as modified by Wu and/or Heath is at a viscosity at 25 oC from 5,000 cP to 20,000 cP and 1,000 cP to 20,000 cP respectively as is the conventional and predictable viscosity for applying each as evidenced by Wu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention forming the isocyanate-component layer on the first substrate and forming the isocyanate-reactive component layer on the second substrate as taught by Bae as modified by Wu and/or Heath is controlled (e.g. to a coat weight for each from 0.1 g/m2 to 20 g/m2) so that the ratio of the components can be controlled (such as to obtain the desired Isocyanate:lsocyanate-Reactive Stoichiometric Ratio) as evidenced by Wu and/or Heath (See MPEP 2144.05 and result-effective variable).
Regarding claim 10, Bae as modified by Wu and/or Heath above teach bringing the first substrate and the second substrate together; contacting the isocyanate component with the isocyanate-reactive component; and applying a pressure to the first substrate and the second substrate wherein Wu teaches the typical temperature is between 30oC and 50oC at a pressure between 29 psi and 58 psi (Page 12, lines 6-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention bringing the first substrate and the second substrate together; contacting the isocyanate component with the isocyanate-reactive component; and applying the pressure to the first substrate and the second substrate as taught by Bae as modified by Wu and/or Heath is at a temperature from 20oC to 30oC and a pressure from 5 psi to 100 psi as is the conventional and predictable temperature and pressure as evidenced by Wu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bauriedel.
Bauriedel is described above in full detail.
Regarding claim 7, Bauriedel teaches applying the isocyanate component to the first substrate at an isocyanate coat weight (0.5 to 5.0 g/m2) and applying the isocyanate-reactive component to the second substrate at an isocyanate-reactive coat weight (0.5 to 5.0 g/m2) to achieve an Isocyanate:Isocyanate-Reactive Ratio from 1.0 to 5.0 and achieving good adhesive strength (Abstract and Column 1 lines 39-42). As to the limitations in claim 7 of “determining the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio by calculating the molar ratio of isocyanate groups in the isocyanate component to the combined amount of amine groups and hydroxyl groups in the isocyanate-reactive component; adjusting the isocyanate coat weight and the amine-terminated coat weight to obtain an Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0”, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for forming the laminate as taught by Bauriedel further comprises applying the isocyanate component to the first substrate at an isocyanate coat weight; applying the isocyanate-reactive component to the second substrate at an isocyanate-reactive coat weight; and determining the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio by calculating the molar ratio of isocyanate groups in the isocyanate component to the combined amount of amine groups and hydroxyl groups in the isocyanate-reactive component to verify/determine the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio is from 1.0 to 5.0 and if outside the ratio adjusting the isocyanate coat weight and the amine-terminated isocyanate-reactive coat weight to obtain the Isocyanate:lsocyanate-Reactive Stoichiometric Ratio from 1.0 to 5.0 as directed to by Bauriedel including to achieve good adhesive strength.
Regarding claim 8, Bauriedel teaches applying the isocyanate component at a viscosity at 23oC of about 20,000 cP (see the examples); forming an isocyanate-component layer on the first substrate having a coat weight from 0.5 g/m2 to 5.0 g/m2; applying the isocyanate-reactive component at a viscosity somewhat less than the isocyanate component such as 50 to 1200 cP at 20oC to 30 oC (Column 5, lines 51-55); and forming an isocyanate-reactive component layer on the second substrate having an weight from 0.5 g/m2 to 5.0 g/m2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention applying the isocyanate component and the isocyanate-reactive component as taught by Bauriedel is at a viscosity at 25 oC from 5,000 cP to 20,000 cP and 1,000 cP to 20,000 cP respectively as suggested by Bauriedel it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
Claims 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bauriedel in view of Bae.
Bauriedel is described above in full detail.
Regarding claims 9, 11, and 12, Bauriedel teaches reacting (curing including storage over seven days at room temperature increases the peel adhesiveness to its final value) the adhesive composition without expressly teaching the room temperature. Bauriedel further teaches the substrates comprise a film comprising a metal foil layer, a film comprising an ethylene-based polymer layer, a polyethyleneterephthalate layer, etc. (Column 6, lines 42-50). Bauriedel further teaches the laminate having a bond strength of greater than 0.05 p (peel adhesiveness considered as N)/15 mm (see the Examples). It is well understood by one of ordinary skill in the art to cure the adhesive composition (comprising an isocyanate component comprising an isocyanate compound and an isocyanate-reactive component comprising an amine-terminated compound and including forms the laminate having a bond strength greater than 0.05 N/15 mm) at a temperature from 20oC to 25oC for a period from 60 minutes to 10 days as evidenced by Bae (described above in full detail). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the method taught by Bauriedel comprises (A) uniformly applying the isocyanate component to the first substrate, the first substrate comprising a first film comprising a metal foil layer or a polyethyleneterephthalate layer; (B) uniformly applying the isocyanate-reactive component to the second substrate, the second substrate comprising a second film comprising an ethylene-based polymer layer as are the predictable substrate materials taught by Bauriedel and further (D) curing the adhesive composition at a temperature from 15oC to 50oC and including 20oC to 25oC for a period from 60 minutes to 10 days and including at least 90 minutes; and (E) forming the laminate, the laminate having a bond strength of greater than 0.05 N/15 mm as are conventional and predictable curing conditions as evidenced by Bauriedel and Bae and including to achieve the bond strength consistent with that taught by Bauriedel.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bauriedel and Bae as applied to claims 9, 11, and 12 above, and further in view of Wu.
Regarding claim 10, Bauriedel as modified by Bae above teach bringing the first substrate and the second substrate together at a temperature from 20oC to 30oC; contacting the isocyanate component with the isocyanate-reactive component; and applying a pressure to the first substrate and the second substrate without expressly teaching the pressure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention bringing the first substrate and the second substrate together at a temperature from 20oC to 30oC; contacting the isocyanate component with the isocyanate-reactive component; and applying the pressure to the first substrate and the second substrate as taught by Bauriedel as modified by Bae is at a pressure from 5 psi to 100 psi as is the conventional and predictable pressure as evidenced by Wu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (See MPEP 2144.05).
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,343,968. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of U.S. Patent No. 12,343,968 fully encompass claims 1-15 of the instant invention.
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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