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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 6-11, 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ledwith (US20180237661, herein Ledwith), in the view of Mullen (WO2017168001, herein Mullen, US20190031921 is used as English language equivalent).
Regarding Claims 1, 6, 7, Ledwith teaches anaerobically curable composition comprising trimethylol propane tri(meth)acrylate (“TMPTMA”), diethylene glycol dimethacrylate, triethylene glycol dimethacrylate (“TRIEGMA”) [0124] read on the non-encapsulated liquid anaerobically curable monomer; The composition is thus typically in a liquid form and may be dispensed [0008]; and the anaerobic curable composition contains a liquid monomer [0034] which collectively indicate the monomer forming a liquid phase. Ledwith teaches an anaerobically curable monomer, it may be present in an amount of from about 40 to about 90% by weight based on the total weight of the composition [0081]; and in general where a composition of the invention includes an anaerobically curable monomer in liquid form this will be less than 50% of the overall anaerobically curable monomer present [0085], hence, the liquid monomer range is 20% to 45% based on the composition, which encompass the claimed range.
Ledwith teaches “anaerobically curable monomer; solid” [0068] including: “polyfunctional (meth)acrylate monomers” [0124, which is 2-methacryloxyethylphenylurethane with a melting point of about 70-75° C. [0117] and RRT600 melting point of about 75-85° C [0146] both lie in the claimed temperature range; “anaerobically curable monomer; solid blended product.” [0074] with “particle size from about 20 μm to about 500 μm” [0076] which encompasses the claimed size range. Ledwith further teaches the total monomer composition is 45-70% [P9; Table 1], and the monomer component above is desirably all solid monomer, but optionally can include up to about 20% (of the overall composition by weight) of liquid monomer. [0162], therefore, collectively lead the solid monomer range into (45-70%)x0.8=36% to 56%, which overlaps the claimed range.
Ledwith further teaches “curing component is in liquid form” [0034] which reads on curing component within the liquid phase.
Ledwith is silent on propoxylated bisphenol A fumarate polyester, however, Mullen teaches “A suitable source of propoxylated bisphenol A fumarate polyester is available under the tradenames ATLAC 382” [0138], in the range of “The propoxylated bisphenol A fumarate polyester may be present in an amount of about 15 to about 45 wt %” [0023] which encompasses the claimed range. Ledwith and Mullen are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of anaerobically curable composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ledwith to add the teachings of Mullen and provide wherein said “A suitable source of propoxylated bisphenol A fumarate polyester is available under the tradenames ATLAC 382” [0138], in the range of “The propoxylated bisphenol A fumarate polyester may be present in an amount of about 15 to about 45 wt %” [0023] into the composition development. Doing so would further achieve the desired property as of “The compositions of the invention proved particularly effective at bonding PMMA to each of mild steel, stainless steel and aluminium substrates. Advantageously, said compositions also demonstrated excellent tensile strengths for PVC bonding to each of mild steel, stainless steel and aluminium. Similarly, excellent tensile strengths were observed when the compositions of the invention were employed to bond polyamide 6′6 (i.e. nylon 6′6) substrates to each of mild steel, stainless steel and aluminium.” [0034].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding Claim 4, Ledwith teaches curing component; 5% by weight [0089] which lies in the claimed range.
Regarding Claims 8, 17, 19, Regard to the viscosity and stability, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Ledwith and Mullen teach the anaerobically curable composition with all of the claimed ingredients, in the claimed amounts, and Ledwith teaches the composition as being made by a substantially similar process as flowable particulate form [0060], by the invention can be made and/or applied to a substrate [0039]; the reactive solid components may be melted and blended together and other components can then be added [0033]; thus form a solid matrix in which the other components are held [0033]; and further active cooling [0165] lead to dry to the touch after a short time [0118]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. viscosity, stability, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 9, Ledwith teaches the reactive solid components may be melted and blended together and other components can then be added [0033] furthermore, thus form a solid matrix in which the other components are held [0033]; Ledwith further teaches active cooling [0165] lead to dry to the touch after a short time [0118].
Regarding Claims 10-11, Ledwith teaches the temperature of the bolts is reduced, the coating solidifies. The process can be expedited by active cooling [0165] as the active cooling method as claimed.
Regarding Claim 15, Ledwith teaches flowable particulate form [0060]; invention can be made and/or applied to a substrate [0039]; “the reactive solid components may be melted and blended together and other components can then be added” [0033] furthermore, “thus form a solid matrix in which the other components are held” [0033]. Ledwith further teaches “active cooling” [0165] lead to “dry to the touch after a short time” [0118].
Regarding Claim 16, Ledwith teaches bond the two articles together [0110] which lies in the as-claimed first substrate and a second substrate bonded together utilizing a composition.
Regarding Claim 18, Ledwith teaches “benzoyl peroxide microcapsules” [0235] which indicates the as-claimed curing component is added in microencapsulated form, which is microencapsulated BPO as claimed.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over
Ledwith (US20180237661, herein Ledwith), in the view of Mullen (WO2017168001, herein Mullen, US20190031921 is used as English language equivalent).
Regarding Claims 12, 13, Ledwith teaches anaerobically curable composition comprising “trimethylol propane tri(meth)acrylate (“TMPTMA”), diethylene glycol dimethacrylate, triethylene glycol dimethacrylate (“TRIEGMA”)” [0124] matches the as-claimed non-encapsulated liquid anaerobically curable monomer; “The composition is thus typically in a liquid form and may be dispensed” [0008]; and “anaerobic curable composition contains a liquid monomer” [0009] which collectively indicate the as-claimed monomer forming a liquid phase. Ledwith further teaches an anaerobically curable monomer, it may be present in an amount of from about 40 to about 90% by weight based on the total weight of the composition [0081]; and in general where a composition of the invention includes an anaerobically curable monomer in liquid form this will be less than 50% of the overall anaerobically curable monomer present [0085], hence, the liquid monomer range is 20% to 45% based on the composition, and encompass the claimed range.
Ledwith teaches “anaerobically curable monomer; solid” [0068] including: “polyfunctional (meth)acrylate monomers” [0124, which is 2-methacryloxyethylphenylurethane with a melting point of about 70-75° C. [0117] and RRT600 melting point of about 75-85° C [0146] both lie in the claimed temperature range; “anaerobically curable monomer; solid blended product.” [0074] with “particle size from about 20 μm to about 500 μm” [0076] which encompasses the claimed size range. Ledwith further teaches the total monomer composition is 45-70% [P9; Table 1], and the monomer component above is desirably all solid monomer, but optionally can include up to about 20% (of the overall composition by weight) of liquid monomer. [0162], therefore, collectively lead the solid monomer range into (45-70%)x0.8=36% to 56%, which overlaps the claimed range.
Ledwith further teaches “curing component is in liquid form” [0034] which reads on curing component within the liquid phase.
Ledwith is silent on propoxylated bisphenol A fumarate polyester, however, Mullen teaches “A suitable source of propoxylated bisphenol A fumarate polyester is available under the tradenames ATLAC 382” [0138], in the range of “The propoxylated bisphenol A fumarate polyester may be present in an amount of about 15 to about 45 wt %” [0023] which encompasses the claimed range. Ledwith and Mullen are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of anaerobically curable composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ledwith to add the teachings of Mullen and provide wherein said “A suitable source of propoxylated bisphenol A fumarate polyester is available under the tradenames ATLAC 382” [0138], in the range of “The propoxylated bisphenol A fumarate polyester may be present in an amount of about 15 to about 45 wt %” [0023] into the composition development. Doing so would further achieve the desired property as of “The compositions of the invention proved particularly effective at bonding PMMA to each of mild steel, stainless steel and aluminium substrates. Advantageously, said compositions also demonstrated excellent tensile strengths for PVC bonding to each of mild steel, stainless steel and aluminium. Similarly, excellent tensile strengths were observed when the compositions of the invention were employed to bond polyamide 6′6 (i.e. nylon 6′6) substrates to each of mild steel, stainless steel and aluminium.” [0034].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Ledwith further teaches solid resin and/or resin monomer which themselves participate in the anaerobic curing form the carrier (for example a matrix) in which other components may be carried, for example dispersed [0033] which indicates the step of adding curing component to the dispersed solid monomer as of the reactive solid components may be melted and blended together and other components can then be added [0033]; “(ii) applying the thread locking composition to the threads of at least one article so as to fuse it by melting to the threads” [0110] which specifies the dispersion of monomer via melting/liquify; then subsequently, anaerobically curing the composition so as to chemically bond the two articles together [0110], which indicates the curing component was added/functioned after the dispersion of solid monomer as subsequent step.
Regarding Claim 14, Ledwith teaches benzoyl peroxide microcapsules [0235] which indicates the as-claimed curing component is added in microencapsulated form, which is microencapsulated BPO as claimed.
Response to Arguments
Applicant’s arguments, filed 7/28/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ledwith (US20180237661, herein Ledwith) and Mullen (WO2017168001, herein Mullen, US20190031921 is used as English language equivalent).
In this case, Ledwith and Mullen teach all of the claimed ingredients, in the claimed amounts, and Ledwith teaches the composition as being made by a substantially similar process as set forth above in the new rejection.
Furthermore, Ledwith teaches the solid monomer and liquid monomer and the ranges as set forth in the new rejection above.
In response to applicant's argument that “Ledwith does not disclose a composition comprising a liquid composition with over 30 wt% of a liquid component; Ledwith teaches away from a composition comprising a liquid component comprising more than 20 wt%”, the argument is not persuasive.
It is noted that the above argument is based on the “Desirably liquid components whether encapsulated or not make up (by weight based on the overall weight of the composition) no more than 20% of the weight of the composition” [0037] taught by Ledwith, however, who also teaches the composition is thus typically in a liquid form and may be dispensed [0008]; and the anaerobic curable composition contains a liquid monomer [0034] which collectively indicate the monomer forming a liquid phase. Ledwith further teaches an anaerobically curable monomer, it may be present in an amount of from about 40 to about 90% by weight based on the total weight of the composition [0081]; and in general where a composition of the invention includes an anaerobically curable monomer in liquid form this will be less than 50% of the overall anaerobically curable monomer present [0085], hence, collectively lead to the liquid monomer range is 20% to 45% based on the composition, which encompass the claimed range. Therefore, Ledwith does not teach away the instant application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presentedin 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767