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 .
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").
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 are 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 thermally curable (col 17, lines 33-35). The adhesive is used to bond steel panels (col 24, lines 45-55), forming a film between the panels. 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.
In light of the overlap between the claimed invention and that disclosed by Willett, it would have been obvious to a person having ordinary skill in the art to produce a thermally curable 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 binders (i.e. matrix polymer) and/or other 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. Although Willett does not disclose thermal curing taking place only at 120 to 250 °C 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.
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).
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). 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
In light of applicant’s amendments filed 12/08/2025, the 35 USC 103 rejections of record over Shimada are withdrawn. New grounds of rejection are set forth above.
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
Applicant argues that Willett only discloses the peroxide and free radical initiator as optional (i.e. 0-20% each, including 0%), and uses them in the alternative, while the combination of the two is critical to the present invention. Applicant points to the previously filed Kupsky declaration for support.
However, the fact remains that while in one embodiment of Willett, the peroxide and free radical initiator may not be present, in another embodiment, both peroxide and free radical initiator may be present, i.e. Willett does disclose the use of both peroxide and free radical initiator as claimed. Further, the data is not persuasive because the scope of the data is not commensurate with the scope of the claims. Specifically, the data uses specific amounts of 5% peroxide and 2.5% photoacid initiator as well as 92.5% each of (meth)acrylate polymer and epoxide-containing compound, while the claims encompass broader amounts of each. There is no data at the endpoints of the claimed amounts, and applicant has provided no declaration stating same results would be expected over the claimed ranges.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787