DETAILED ACTION
This office action follows a reply filed on October 24, 2025. Claims 17-18 have been amended. Claims 17-21, 23, 27-31, 5-9, 12-14 and 16 are currently pending and under examination.
The rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-21, 23, 27-31, 5-9, 12-14 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 17-18, applicants claim “…when the cured composition has a strength of at least about 5 N/mm on mild steel substrates after three days.”
Applicants have only disclosed one specific composition as having a strength of at least 5 N/mm, particularly Sample B (See Table 5 and Figure 6), which has a strength of 5.5 N/mm. Sample B is a very specific composition which is much more limited than the claimed composition. Therefore, applicants did not have possession of the possible claimed compositions having a strength of at least 5 N/mm, which includes any strength greater than 5 N/mm.
It is noted that since claims 19-21, 23, 27-31, 5-9, 12-14 and 16 ultimately or directly depend from claims 17 or 18, they are rejected along with claims 17 or 18 because they incorporate all of the limitations of claims 17 and 18, including those that are indefinite.
Claim Rejections - 35 USC § 103
Claims 17-21, 23, 27-31, 5-9, 12-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-112766 in view of JP 04-272980, and further in view of McDonnell (US 2006/0094833), as evidenced by Swords (US 2010/0029978) and Litke (US 4,533,422). For convenience, the machine translations of JP ‘766 and JP ‘980 will be cited below.
JP ‘766 teaches an adhesive composition comprising (A) 100 parts of 2-cyanoacrylate of general formula (1), specifically listed to include methoxyethyl and ethoxyethyl cyanoacrylate, where component (A) can also include other 2-cyanacrylic acid ester monomers, specifically listed to include i-propyl 2-cyanoacrylate, i-butyl 2-cyanoacrylate and n-pentyl 2-cyanoacrylate, and (B) 5-40 phr of a copolymer, exemplified as Vamac MR (ethylene/methyl acrylate/acrylic acid copolymer). JP ‘766 actually suggests a combination of ethoxy ethyl cyanoacrylate and isobutyl cyanoacrylate.
JP ‘766 does not specifically teach the claimed isoamyl cyanoacrylate; however, consider the following:
Isoamyl cyanoacrylate is also known in the art as 3-methylbutyl cyanoacrylate or isopentyl cyanoacrylate. Isoamyl cyanoacrylate is a positional isomer of n-pentyl cyanoacrylate and is a homologue of i-propyl and i-butyl cyanoacrylates.
Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2114.09(II). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2114.09(II).
Therefore, one of ordinary skill in the art would expect the use of isoamyl cyanoacrylate to provide an adhesive having similar properties to those using n-pentyl or isobutyl cyanoacrylate.
Additionally, isopentyl cyanoacrylate is a suitable cyanoacrylate for polymerizable adhesive compositions comprising polymer adhesion agents, as evidenced by Swords (p. 2, [0023]-[0024]).
JP ‘766 does not specifically teach a combination of the alkoxyalkyl cyanoacrylate and the cyanoacrylate, as claimed.
JP ‘980 teaches a cyanoacrylate-based instant adhesive composition comprising mixing 2-methoxyethyl-2-cyanoacrylate or 2-ethoxyethyl-2-cyanoacryate and an alkyl-2-cyanoacrylate having preferably 6 or more carbon atoms, such as pentyl cyanoacrylate, teaching that they have a low pungent odor. JP ‘980 exemplifies a combination of ethoxyethyl cyanoacrylate and isobutyl cyanoacrylate of 70:30 (Table 1, Example 7) providing a composition with a slight odor and high tensile shear adhesive strength, even after being subjected to 80°C for 10 days. JP ‘980 teaches that if the amount of alkyl cyanoacrylate is lower than 20 wt%, the strength and durability of the cured adhesive is insufficient. (Note methoxyethyl cyanoacrylate and isopentyl cyanoacrylate are homologues of the components used in Example 7).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a combination of methoxyethyl cyanoacrylate and an alkyl cyanoacrylate having 6 carbon atoms or greater, such as isopentyl cyanoacrylate, in a weight ratio of 70:30, as JP ‘980 teaches that they have low odor and teaches that when the amount of alkyl cyanoacrylate is greater than 20 wt%, the adhesive has sufficient strength and durability.
The combination of JP ‘766 and JP ‘980 suggests a blend of 100 parts cyanoacrylate, comprising 70 parts methoxy ethyl cyanoacrylate and 30 parts isoamyl cyanoacrylate, and 5-40 parts copolymer, suggesting a blend of about 50-67 wt% methoxy ethyl cyanoacrylate, 21-28 wt% isopentyl cyanoacrylate, and 5-29 wt% copolymer. These ranges overlap with the claimed ranges of 55-75 wt% methoxy ethyl cyanoacrylate, 20-35 wt% isopentyl cyanoacrylate and 5-15 wt% rubber toughening agent, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
JP ‘766 teaches the inclusion of additives such as accelerator, stabilizer, thickener, strength improver, etc., but does not teach specific examples of such.
Silica is a well known thickener in the art of cyanoacrylate adhesives to form a nonflowable gel, as evidenced by Litke (col. 1).
Therefore, adding silica as a thickener in JP ‘766 is prima facie obvious, as it is a known thickener in the art of cyanoacrylate adhesives.
McDonnell exemplifies a cyanoacrylate-based adhesive gel composition, comprising 5-6 wt% silica, teaching that the inclusion of 50-200 ppm citric acid improves the shock resistance of the adhesive as well as the bonding strength, while not compromising the fixture speed of the cyanoacrylates to substrates (p. 1, [0021]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have added citric acid as a strength improver in the cyanoacrylate adhesive of JP ‘766, as McDonnell teaches that the inclusion of such can improve the bond strength and shock resistance of the cured/bonded adhesive, without compromising the cure speed.
JP ‘766 in view of JP ‘980 and further in view of McDonnell is prima facie obvious over instant claims 17, 23, 27, 16 and 12.
As to claim 5, JP ‘766 teaches the inclusion of additives such as accelerator, stabilizer, thickener, strength improver, etc.
As to claims 6-8, JP ‘766 teaches the accelerator to include crown ethers, such as 15-crown-5, 18-crown-6, etc. and calixarenes.
Claim 9 can be rejected, as claim 9 only limits the claims when the accelerator is a poly(ethyleneglycol) di(meth)acrylate.
As to claim 13, JP ‘766 teaches the inclusion of a stabilizer, such as methanesulfonic acid (an anionic stabilizer) and a radical polymerization inhibitor.
As to claim 14, isopentyl cyanoacrylate meets both of component (b) and the cyanoacrylate component (d) of claim 14.
As to claim 19, JP ‘766 teaches applying the adhesive to upper and lower parallel plates and drying.
As to claims 18, 20 and 21, JP ‘766 teaches the composition as developing high peel strength and teaches that the elastomer dissolves in the cyanoacrylate; however, does not teach the order of addition when using a combination of alkoxyalkyl cyanoacrylate and alkyl cyanoacrylate with the copolymer.
Please consider the following:
MPEP 2144.04(IV)(C): Changes in Sequence of Adding Ingredients
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Therefore, choosing to dissolve the copolymer in the alkyl cyanoacrylate before adding to the alkoxyalkyl cyanoacrylate is prima facie obvious, as JP ‘766 does not particularly limit the order of mixing of the components of the adhesive, and only requires that the copolymer be dissolved in the adhesive composition.
While there is no teaching as to the amount of rubber dissolved in the cyanoacrylate, applicants are claiming a product, not a method of making the product, and one of ordinary skill in the art would not be able to determine the concentration of rubber dissolved in the cyanoacrylate from the final product.
Claim 28 can be similarly rejected as above.
Claim 30 can be rejected as claim 30 only limits claim 6 when the accelerator is an ethoxylated hydric compound, where the crown ethers and calixarene are claimed as alternatives.
As to claim 31, McDonnell exemplifies a cyanoacrylate-based adhesive gel composition, comprising 5-6 wt% silica, teaching that the inclusion of 50-200 ppm citric acid improves the shock resistance of the adhesive as well as the bonding strength, while not compromising the fixture speed of the cyanoacrylates to substrates (p. 1, [0021]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have added citric acid as a strength improver in the cyanoacrylate adhesive of JP ‘766, as McDonnell teaches that the inclusion of such can improve the bond strength and shock resistance of the cured/bonded adhesive, without compromising the cure speed.
This range overlaps with the claimed range of 50-100 ppm in claim 18, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed October 24, 2025 have been fully considered but they are not persuasive.
Applicants point to compositions B and D, and argue that the only difference is the use of isoamyl cyanoacrylate in B and 2-methyl butyl cyanoacrylate in D, where both of these compounds are homologs but show a difference in strength.
While the examiner agrees, the prior art does not teach the 2-methyl butyl cyanoacrylate used by applicants. The prior art suggests other iso-positional compounds, like isobutyl and isopropyl cyanoacrylates. These were not compared.
Additionally, applicants have only shown these results in combination with one specific combination of components, specifically the claimed combination using ethylene acrylic elastomer (VAMAC VCS 5500) with a boron trifluoride anionic stabilizer and crown ether accelerator, whereas the claimed invention allows for ethylene/methyl acrylate copolymers, vinylidene chloride acrylonitrile copolymers, and ethylene vinyl acetate copolymers, and does not require the inclusion of a boron trifluoride stabilizer and crown ether accelerator.
Therefore, the showing is not commensurate with the claimed invention, which is required for a showing of unexpected results.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766