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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/21/2026 has been entered.
Claim Objections
Claims 2 and 7 are objected to because of the following informalities:
Claim 2, line 6, “the (co)polymer (A)” should read “the (meth)arylate (co)polymer (A)”.
Claim 2, line 9, “the (co)polymer (A)” should read “the (meth)arylate (co)polymer (A)”.
Claim 2, line 12, “the (co)polymer (A)” should read “the (meth)arylate (co)polymer (A)”.
Claim 2, line 14, “the (co)polymer (A)” should read “the (meth)arylate (co)polymer (A)”.
Claim 2, line 15, “the (co)polymer (A)” should read “the (meth)arylate (co)polymer (A)”.
Claim 7, line 4, “at least one additive (F) should read “the at least on additive (F)”.
Appropriate correction is required.
Applicant is advised that should claim 1 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1-2, 6-7, 9-10, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Willett et al. (US 5,252,694) in view of the evidence of Sigma Aldrich ("1,4-Butanediol diglycidyl ether"). Note that the disclosure of Sigma Aldrich is based on the document mailed 02/18/2025.
Regarding Claims 1 and 15, Willett discloses adhesive comprising 1-99% cationically polymerizable monomer, 0-20% peroxide, and 0-20% free radical initiator (col 4, lines 10-25). The cationically polymerizable monomer includes 1,4-butanediol diglycidyl ether (col 4, lines 58-59), which has a molecular weight of 202.25 as evidenced by Sigma Aldrich (pg 2). The free radical initiator includes aromatic sulfonium (col 9, lines 41-46) which is the same type of photo acid generators used in the present invention (page 23, lines 8 and 22) and therefore would necessarily provide cationic, UV induced curing. The adhesive is used to bond steel panels (col 24, lines 45-55), forming a film between the panels. The adhesive is cured (col 1, line 11).
Willett does not disclose or require the use of thermal acid generator; therefore it would have been obvious to produce the adhesive film wherein the adhesive comprises substantially no thermal acid generator.
Willett discloses the free radical initiators generate free radicals upon exposure to heat (Col 8, lines 66-68), initiating the polymerization of the cationically polymerizable monomers (Col 13, lines 48-58), and the peroxide accelerates the cationic polymerization (Col 8, lines 56-65).
Since the composition of Willett comprises cationically polymerizable monomers, peroxide, and free radical initiators, which correspond to the claimed components (B), (C), and (D), the composition of Willett would necessarily undergo curing process as claimed (i.e. the peroxide would necessarily thermally initiate the free radical initiator to generate free radicals, which would cationically polymerize the monomers).
Alternatively, although Willett does not explicitly disclose the curing process as claimed, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Willett meets the requirements of the claimed adhesive film, Willett clearly meets the requirements of present claims.
In light of the overlap between the claimed adhesive film and that disclosed by Willett, it would have been obvious to a person having ordinary skill in the art to produce an adhesive film that is both disclosed by Willett and is within the scope of the present invention.
Regarding Claim 2, Willett discloses all the limitations of the present invention according to Claim 1 above. Claim 2 limits an optional embodiment and is considered met by the prior art.
Regarding Claim 6, Willett discloses all the limitations of the present invention according to Claim 1 above. Claim 6 limits an optional embodiment and is considered met by the prior art.
Regarding Claim 7, Willett discloses all the limitations of the present invention according to Claim 1 above. Willett further discloses the adhesive may comprise additional components such as additives, in an amount up to 25% of the total composition (col 11, lines 25-40).
Regarding Claim 9, Willett discloses all the limitations of the present invention according to Claim 1 above. Willett further discloses examples wherein the adhesive thickness is 1.5 mils (Col 25, line 65-66) and 1 mil (Col 26, lines 61-62) (38.1 microns and 25.4 microns, i.e. less than 500 microns).
Regarding Claim 10, Willett discloses all the limitations of the present invention according to Claim 1 above. Since the composition of Willett comprises cationically polymerizable monomers, peroxide, and free radical initiators, which correspond to the claimed components (B), (C), and (D), the composition of Willett would necessarily be thermally curable only at 120-250 °C.
Regarding Claim 14, Willett discloses all the limitations of the present invention according to Claim 1 above. Claim 14 limits an optional embodiment and is considered met by the prior art.
Claims 2 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Willett as applied to claim 1 above, and further in view of Dollase et al. (WO 2017/190911, using US 2021/0222037 as a translation).
Regarding Claims 2 and 14, Willett discloses all the limitations of the present invention according to Claim 1 above. Willett does not disclose the (meth)acrylate (co)polymer (A) as claimed.
Dollase discloses a curable adhesive (para 0020) comprising epoxy-functionalized (co)polymer made from monomers including epoxycyclohexyl (meth)acrylate, specifically 3,4-epoxycyclohexyl (meth)acrylate (paras 0022 and 0048) where the (co)polymer has a weight average molecular weight of 5,000-200,000 (para 0023). Dollase discloses the adhesive comprises at least 50 wt.% epoxy-functionalized (co)polymer (para 0132), reactive resins including glycidyl ethers (paras 0130-0131), and sulfonium salt curing agents (para 0094). The use of the epoxy-functionalized (co)polymer produces adhesive with good bond strength and balanced viscoelastic characteristics (para 0020).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Willett to incorporate the teachings of Dollase and produce the adhesive of Willett further comprising at least 50 wt.% of the epoxy-functionalized (co)polymer of Dollase. Doing so would produce adhesive with good bond strength and balanced viscoelastic characteristics.
Claims 2 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Willett as applied to claim 1 above, and further in view of Komiya et al. (US 6,319,603).
Regarding Claims 2 and 14, Willett discloses all the limitations of the present invention according to Claim 1 above. Willett does not disclose the (meth)acrylate (co)polymer (A) as claimed.
Komiya discloses photocurable adhesive (col 9, lines 19-22) comprising 10-90 wt.% poly(meth)acrylate polymer, polymerizable monomer, and cationic photopolymerization initiator (col 2, lines 8-17 and col 5, lines 22-24). The poly(meth)acrylate polymer is made from epoxy group-containing (meth)acrylates including 3, 4-epoxycyclohexyl (meth)acrylate (col 2, lines 51-56) and has a weight average molecular weight of 5,000-400,000 (col 5, lines 13-21). The polymerizable monomer includes glycidyl ether (col 5, line 37-col 6, line 6) and the cationic photopolymerization initiator includes sulfonium salt (col 7, lines 14-20). The poly(meth)acrylate polymer ensures flexibility and long term reliability of cured products (col.5, lines 27-28).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Willett to incorporate the teachings of Komiya and produce the adhesive of Willett further comprising 10-90 wt.% of the poly(meth)acrylate polymer of Komiya. Doing so would ensure flexibility and long term reliability of cured products.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Willett as applied to claim 1 above, and further in view of Suzuki et al. (JP 2000/264955). It is noted that the disclosure of Suzuki is based on a machine translation of the reference mailed 02/04/2026.
Regarding Claim 4, Willett discloses all the limitations of the present invention according to Claim 1 above. Willett does not disclose the peroxide is a dicumyl peroxide as claimed.
Suzuki discloses cationic polymerizable resin composition (para 0001) comprising (A) epoxy resins including glycidyl ethers (paras 0011-0015), (B) aromatic sulfonium salt (paras 0025-0026), and (C) catalyst including dicumyl peroxide (paras 0029-0030). The catalyst promotes the action of the sulfonium salt and produces the excellent effect of shortening the polymerization time or reducing the irradiation dose (para 0028).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Willett to incorporate the teachings of Suzuki and use dicumyl peroxide as the peroxide of Willett. Doing so would promote the action of the sulfonium salt and produce the excellent effect of shortening the polymerization time or reducing the irradiation dose.
Response to Arguments
Applicant's arguments filed 05/21/2026 have been fully considered but they are not persuasive.
Applicant argues that the composition of Willett undergoes “thermal polymerization” (Col 17, lines 33-35), not “thermally initiated cationic polymerization” as claimed. Applicant argues that their reaction mechanism is initiated by the peroxide radical initiator (C) thermally generating radicals, which activate the photo acid generator (D), which in turn cationically polymerizes the compounds (A) and/or (B).
However, while Willett discloses embodiments that “can” be thermally polymerized (or thermally partially polymerized), Willett’s disclosure encompasses several embodiments, including a composition comprising cationically polymerizable monomer, peroxide, and free radical initiator as claimed. Willett discloses the free radical initiators generate free radicals upon exposure to heat (Col 8, lines 66-68), initiating the polymerization of the cationically polymerizable monomers (Col 13, lines 48-58), and the peroxide accelerates the cationic polymerization (Col 8, lines 56-65).
Since the composition of Willett comprises cationically polymerizable monomers, peroxide, and free radical initiators, which correspond to the claimed components (B), (C), and (D), the composition of Willett would necessarily undergo curing process as claimed (i.e. the peroxide would necessarily thermally initiate the free radical initiator to generate free radicals, which would cationically polymerize the monomers).
Alternatively, although Willett does not explicitly disclose the curing process as claimed, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Applicant argues that the presently amended claims should now be considered commensurate in scope with the present data. In applicant’s previous remarks filed 12/08/2025, applicant argued that the claimed combination of peroxide radical initiator (C) and photo acid generator (D) is critical to the present invention, pointing to the Krupsky declaration filed 05/24/2025 for support.
However, the scope of the data is still not commensurate with the scope of the claims. Specifically, the Inventive Examples 1 and 2 use specific amounts of 92.5% of TTA15 homopolymer or Epikote 828LVEL (epoxy resin (A) or (B)), 5% dicumyl peroxide (peroxide radical initiator (C)), and 2.5% Deuteron UV 1242 (photoacid initiator (D)), while the claims encompass broader amounts of each compound (i.e. 5.0-99.8% epoxy resins (A) or (B), 1-8% peroxide radical initiator (C) and 1-5.5% photo acid generator (D)).
While the Krupsky declaration states that the particular Compounds (A), (B), (C), and (D) used within the claimed limitations should not materially affect the results, applicant has provided no declaration stating same results would be expected over the entirety of the claimed ranges. There is no data at the endpoints of the claimed amounts. Therefore, the data is not considered commensurate in scope with the scope of the claims, and is not persuasive to show the criticality of the claimed amounts of peroxide radical initiator (C) and photo acid generator (D).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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