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 .
Response to Amendment
In response to the Amendment received on 12-17-2025, the examiner has carefully considered the amendments. The examiner acknowledges the addition of new claims 20-26. Current pending claims are 1, 6-10, 12-16 and 18-26, wherein claims 6-7 and 13-16 are withdrawn.
Response to Arguments
Applicant’s arguments, see Remarks/Amendment, filed 12/17/2025, with respect to the rejection(s) of claim(s) 1, 8-10, 12, and 18-19 under 35 U.S.C. 103 as being unpatentable over Wu et al (CN102952503) in view of Liu et al (CN109233648) 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 Therefore, the rejection has been withdrawn.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 Karim et al (5,721,289). Karim sets forth structural adhesives having good peel adhesion to both glass and metal (aluminum). Said adhesives comprise reactive polyacrylate prepolymers, epoxy resins, alcohol compounds, and cationic photoinitiators, as well as, rendering obvious to a skilled artisan the addition of core-shell rubber particles, as toughening agents—see below.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the method of mixing, the specific type of core/shell particles set forth in the examples, i.e., CS1-4, the peel force, and the impact resistance) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
Claim(s) 1, 8-10, 12, and 18-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karim et al (cited above).
Karim sets forth stable, low cure-temperature structural pressure sensitive adhesives. Said adhesive comprise (1) at least one free-radically polymerized polymer;/ (2) at least one cationically polymerizable monomer; (3) a photoactivatable catalyst system for the cationically polymerizable component and (4) optionally, a monohydric or polyhydric alcohol—see abstract.
Karim sets forth by example an adhesive composition comprising 60 parts by weight of an reactive polymerizable polyacrylic syrup (60 parts n-butyl acrylate;40 parts tetrahydrofurfuryl acrylate); 40 parts by weight of an epoxy mixture (20 parts of solid epoxy (EPON 1001F) and 80 parts of a liquid epoxy resin (EPON 828)); 4.0 parts of a hydroxy containing alcohol; 0.4 parts of a cationic photoinitiator (CpFeXy-SbF6); 0.15 part of a peroxide catalyst and 0.1 part of a peroxide initiator—see example 4. Said composition comprises 60 parts reactive acrylic polymer (the acrylic polymer syrup is still reactive/polymerizable); 40 parts of an epoxy mixture of a solid epoxy (8% of EPON 1001F) and liquid epoxy (32 % of EPON 828); 4.0 parts of the hydroxyl compound (cyclohexane dimethanol); 0.6 parts of a free radical initiator and 0.4 parts of cationic initiator.
The primary difference is the compositions set forth in the examples do not comprise core-shell rubber particles. However, the overall teachings set forth and incorporate by reference, toughening agents, such as core/shell particle can be added in amounts up to 25 wt. % (deemed to encompass claimed 0.5 to 21 parts core/shell rubber particles) of the type found in US 4,846,905 to Tarbutton). Said encompassed reference (Tarbutton) sets forth said toughening agents are polymeric compounds having both a rubbery phase and a thermoplastic phase such as: graft polymers having a polymerized, diene, rubbery core and a polyacrylate, polymethacrylate shell; graft polymers having a rubbery, polyacrylate core with a polyacrylate or polymethacrylate shell; and elastomeric particles. Tarbutton sets forth 3 classes of core/shell particles, wherein class 1-type include graft copolymers having a polymerized, diene, rubbery backbone or core to which is grafted a shell of an acrylic acid ester or methacrylic acid ester, monovinyl aromatic hydrocarbon, or a mixture thereof, wherein the preferable rubbery backbones comprise polymerized butadiene or a polymerized mixture of butadiene and styrene and the preferable shells comprising polymerized methacrylic acid esters are lower alkyl substituted methacrylates. Said second-type are acrylate core-shell graft copolymers wherein the core or backbone is a polyacrylate polymer which is grafted a polymethacrylate polymer (shell). Said third type comprises elastomeric particles that have a glass transition temperature below about 25 deg C—see col. 4, lines 3-60 of Tarbutton. Tarbutton additionally sets forth said toughening agents are preferably added in amounts from 5-15% to add strength to said adhesive compositions—see col. 4, lines 61-65.
Therefore, it would have been within the skill level of an ordinary artisan, using the overall teachings of the reference, to add toughening agents such as core-shell particles, a known additive to improve strength after curing in amounts from at least 5 to 15% as evidenced by Tarbutton [col. 4, lls 60-65], to the composition of Karim in absence of evidence to the contrary and/or unexpected results. The courts have upheld it is prima facie obvious to add known ingredients for its known function, see in Re Linder 173 USPQ 356.
Regarding claims 1, 10, and 21-25: In light of the above teachings it is deemed it would have been obvious to an ordinarily skilled artisan to obtain an adhesive composition comprising at least 60 parts by weight of a reactive polyacrylate polymer; at least 40 parts of an epoxy resin comprising a solid epoxy resin and a liquid epoxy resin, wherein the ; at least 4 parts of a hydroxy compound; at least 0.4 parts by weight of an cationic photoinitiator and at least a known addition amount of core/shell rubber particles as toughening agents, such as from at least 3-15 wt. %, as suggested by Tarbutton. Thus, the compositions of claims 1 and 10 are obvious in view of Karim.
Regarding claims 8-9: Karim does not expressly set forth the glass transition temperature of the reactive polyacrylate is from -35 deg. C to 10 deg. C, or -20 to 0 deg. C. However, Karim sets forth in the overall teachings, the acrylate monomers chosen for obtaining said (co)polymer should be chosen such that the obtained polymer has a Tg in the range of 30 deg. C or less—see col. 6, line 65 to col. 7, line 3. Additionally, the acrylic monomers in example 4, i.e., n-butyl acrylate and tetrahydrofurfuryl acrylate have respective polymeric Tg of -54 deg. C and -35 to -45 deg. C, respectively. Therefore, it is deemed in absence of evidence to the contrary the acrylic resin in at least example 4 has a Tg that is at least 0 deg. C or below. Since, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding claims 12 and 18-19: From the overall teachings and incorporation by reference, Karim sets forth said toughening agents are polymeric compounds having both a rubbery phase and a thermoplastic phase such as: graft polymers having a polymerized, diene, rubbery core and a polyacrylate, polymethacrylate shell; graft polymers having a rubbery, polyacrylate core with a polyacrylate or polymethacrylate shell; and elastomeric particles, wherein said graft copolymers having a polymerized rubbery backbones comprise polymerized butadiene or a polymerized mixture of butadiene and styrene and the shells comprising polymerized methacrylic acid esters are lower alkyl substituted methacrylates (claim 12 and18-19). Thus, claims 12 and 18-19 are found in the reference.
Per examples 10, Karim sets forth an adhesive composition comprising 45 parts of phenoxyethyl acrylate; 15 parts isobornyl acrylate; 30 parts EPON 828 (liquid epoxy resin); 10 parts of EPON 1001F (solid epoxy resin); 0.04 part of free radical photoinitiator (mixture 1), wherein Mixture 1 is irradiation to form a molten composition comprising a polyacrylate oligomer having reactive groups (acrylic syrup) comprising the epoxide compounds. Said molten mixture 1 is combined with a composition comprising 3.8 parts of a 1:1 mixture of hydroxyl compounds (1,4-cyclohexane dimethanol and 1,6-hexanediol); 0.2 parts of free radical initiator (KB-1) and 3.0 parts by weight of a cationic photoinitiator. Said composition comprises 25 wt. % of solid epoxy based on the total epoxy content in the composition (30 (liquid) + 10 (solid) = 40, wherein 10/40 = 0.25 or 25 wt. %; claim 20), 56 wt. % of acrylate polymer components (45 + 10/107.04 (total parts by weight) * 100 = 56%, claim 21); 3.5 wt. % of hydroxy compound (3.8/107.04 * 100 = 3.5 wt. %, claim 24); and 9.3 wt. % of the solid epoxy compound (10/107.04 * 100 = 9.3 wt. %, claim 25-26), wherein the cured composition has a peel adhesion (peel force) to glass of 10.5 N/cm.
The primary difference is the compositions set forth in the examples do not comprise core-shell rubber particles. However, the overall teachings set forth and incorporate by reference, toughening agents, such as core/shell particle can be added in amounts up to 25 wt. % (deemed to encompass claimed 0.5 to 21 parts core/shell rubber particles) of the type found in US 4,846,905 to Tarbutton). Said encompassed reference (Tarbutton) sets forth said toughening agents are polymeric compounds having both a rubbery phase and a thermoplastic phase such as: graft polymers having a polymerized, diene, rubbery core and a polyacrylate, polymethacrylate shell; graft polymers having a rubbery, polyacrylate core with a polyacrylate or polymethacrylate shell; and elastomeric particles. Tarbutton sets forth 3 classes of core/shell particles, wherein class 1-type include graft copolymers having a polymerized, diene, rubbery backbone or core to which is grafted a shell of an acrylic acid ester or methacrylic acid ester, monovinyl aromatic hydrocarbon, or a mixture thereof, wherein the preferable rubbery backbones comprise polymerized butadiene or a polymerized mixture of butadiene and styrene and the preferable shells comprising polymerized methacrylic acid esters are lower alkyl substituted methacrylates. Said second-type are acrylate core-shell graft copolymers wherein the core or backbone is a polyacrylate polymer which is grafted a polymethacrylate polymer (shell). Said third type comprises elastomeric particles that have a glass transition temperature below about 25 deg C—see col. 4, lines 3-60 of Tarbutton. Tarbutton additionally sets forth said toughening agents are preferably added in amounts from 5-15% to add strength to said adhesive compositions—see col. 4, lines 61-65.
Therefore, it would have been within the skill level of an ordinary artisan, using the overall teachings of the reference, to add toughening agents such as core-shell particles, a known additive to improve strength after curing in amounts from at least 5 to 15% as evidenced by Tarbutton [col. 4, lls 60-65], to the composition of Karim in absence of evidence to the contrary and/or unexpected results. The courts have upheld it is prima facie obvious to add known ingredients for its known function, see in Re Linder 173 USPQ 356.
Regarding claims 20-26: In light of the above teachings it is deemed it would have been obvious to an ordinarily skilled artisan to obtain an adhesive composition comprising at least 56 wt. % of a reactive polyacrylate polymer; at least 37 parts of an epoxy resin comprising a solid epoxy resin and a liquid epoxy resin, wherein the solid epoxy content is at least 25 wt. % of the epoxy resin content; at least 3.5 wt. % of a hydroxy compound; at least 2.8 wt. % (3/107.04 * 100) of an cationic photoinitiator and at least a known addition amount of core/shell rubber particles as toughening agents from at least 3-15 wt. %, as known in the art and suggested by Tarbutton. Thus, the compositions of claims 20-26 are obvious in view of Karim.
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 SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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