DETAILED ACTION
This is an Office action based on application number 17/709,810 filed 31 August 2022, which is a continuation of PCT/US202/053774 filed 1 October 2020, which claims priority to US Provisional Application No. 62/908,871 filed 1 October 2019. Claims 1-4, 6-10, 13, 15, and 17-22 are pending. Claims 5, 11-12, 14, 16, and 23 are canceled.
Amendments to the claims, filed 24 March 2026, have been entered into the above-identified application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 March 2026 has been entered.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-4, 6-10, 13, 15, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al. (US Patent Application Publication No. US 2014/0329959 A1) (Barnes) in view of Navarro et al. (US Patent Application Publication No. US 2012/0157629 A1) (Navarro).
Regarding instant claims 1 and 22:
Barnes discloses a two part curable composition comprising:
a first part comprising a cyanoacrylate component and a peroxide catalyst (Part A); and
a second part comprising a free radical curable component and a transition metal catalyst (Part B);
wherein when mixed together, the peroxide catalyst initiates cure of the free radical curable component, and the transition metal initiates cure of the cyanoacrylate component (Claim 1).
Barnes discloses that the cyanoacrylate component includes cyanoacrylate monomer (paragraph [0023]).
Barnes further discloses that additives are included in either or both of the Part A or the Part B compositions to influence a variety of performance properties (paragraph [0108]).
Barnes further discloses that said additives are inclusive of core-shell rubber particles (i.e., rubber particles having a shell) having an average particle size of less than about 200 nm (paragraph [0124]).
Barnes further discloses that the core is comprised of a polymeric material having rubbery properties (paragraph [0125]) (i.e., a polymeric rubber core).
Barnes further discloses that the shell is comprised of a thermoplastic polymer having a glass transition temperature greater than ambient temperatures, e.g., greater than about 50° C) (paragraph [0125]).
Barnes further discloses that the composition contains from about 5 to about 35 weight percent rubber particles (paragraph [0132]), which overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Barnes does not disclose the specific core-shell polymers comprising at least two polymeric layers that are different from each other and wherein at least one layer comprises a gradient polymer.
However, Navarro discloses a core-shell copolymer impact modifier particle comprising a polymeric core and at least two polymeric layers, each layer with a different composition, wherein at least one polymeric layer comprises a polymer that is a gradient polymer (Claim 1).
Navarro defines “gradient polymer” as a copolymer that has gradient in repeat units arranged from mostly monomer A to mostly monomer B along much or all of the copolymer chain (paragraph [0047]).
Navarro teaches that the core-shell polymers are included in polymer compositions in proportions between 2/98 and 15/75 (paragraph [0099]).
Navarro further discloses that the core-shell copolymer impact modifier particles have a particle size advantageously between 170 nm and 350 nm (paragraph [0056]).
Navarro further discloses that the core comprises a rubber polymer (paragraph [0071]).
Navarro further discloses that at least one shell is a thermoplastic shell (paragraph [0056]). The scope of this disclosure encompasses an embodiment wherein the outermost shell is a thermoplastic.
Navarro further discloses that at least the outer shell has a glass transition temperature (Tg) greater than 25° C (paragraph [0057]).
Navarro teaches that an impact modified resin composition comprising the impact modifier has a good compromise of properties inclusive of having high impact strength while not decreasing the viscosity of the polymer composition and color change at elevated temperatures (paragraph [0042]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art combination before him or her, to use the core-shell rubber particle comprising a gradient polymer shell layer of Navarro as the core-shell rubber particle desired by Barnes. The motivation for doing so would have been to impart, to the cured product, high impact strength without decreasing the viscosity of the polymer composition or causing color change at elevated temperatures.
As to the claimed “drop impact strength” recited by claims 1 and 22, the scope of the prior art combination encompasses an embodiment that is substantially identical to Applicant’s invention as set forth in the rejection of the claims above. One of ordinary skill in the art would necessarily conclude that such an encompassed embodiment must have the same properties as Applicant’s invention (i.e., inclusive of the drop impact strength recited by the instant claims). Therefore, the prior art combination necessarily obviates the property limitations recited by the instant claims.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Navarro with Barnes to obtain the invention as specified by the instant claims.
Regarding instant claim 2:
Barnes further discloses that the cyanoacrylate component comprises H2C=C(CN)-COOR, wherein R is selected from alkyl, alkoxyalkyl, cycloalkyl, alkenyl, aralkyl, aryl, allyl, and haloalkyl groups (Claim 2).
Regarding instant claim 3:
Barnes further discloses that the peroxide catalyst comprises perbenzoates (Claim 3).
Regarding instant claim 4:
Barnes further discloses that the peroxide catalyst is t-butyl perbenzoate (Claim 4).
Regarding instant claim 6:
Barnes further discloses that the rubber particles having a core-shell structure have a core comprised of a polymeric material having rubbery properties (i.e., a glass transition temperature less than about 0° C) (paragraph [0125]).
Similarly, Navarro further discloses that the core-shell impact modifier comprises a polymeric core and at least two polymeric layers, each layer with a different polymer composition, one polymeric layer is a polymeric core layer with a different polymer composition than the core, wherein the polymeric core layer comprises a polymer that is a gradient polymer (paragraph [0039]).
Navarro further discloses that the core layer has a glass transition temperature (Tg) of less than 0° C (paragraph [0063]).
Regarding instant claim 7:
Navarro further discloses that the core-shell impact modifier comprise a polymeric core, at least one polymeric core layer, and at least two polymeric shell layers, wherein the core layer has a different composition than the polymeric core layer and the shell layers, wherein each shell layer has a different polymeric composition, and wherein at least one polymeric shell layer comprises a polymer that is a gradient polymer (paragraph [0040]).
Regarding instant claim 8:
Barnes further discloses that the rubber particles having a core-shell structure have a core comprised of a polymeric material having rubbery properties (i.e., a glass transition temperature less than about 0° C) (paragraph [0125]).
Similarly, Navarro further discloses that the rubber core has a glass transition temperature of more particularly between -90° C and -40° C (paragraph [0060]).
Regarding instant claim 9:
Barnes further discloses that the rubber particles having a core-shell structure have a core comprised of a polymeric material having rubbery properties (i.e., a glass transition temperature less than about 0° C) (paragraph [0125]).
Similarly, Navarro further discloses that the rubber core has a glass transition temperature of preferably between -80° C and -40° C (paragraph [0060]).
Regarding instant claim 10:
Barnes further discloses that the core is comprised of a diene homopolymer or copolymer (e.g., a homopolymer of butadiene or a copolymer of butadiene with one or more ethylenically unsaturated monomers) (paragraph [0125]).
Barnes further discloses that the core is comprised of a diene copolymer (e.g., a copolymer of butadiene with one or more ethylenically unsaturated monomers inclusive of vinyl aromatic monomers) (paragraph [0125]).
Barnes further discloses that the core is comprised of a diene copolymer (e.g., a copolymer of butadiene with one or more ethylenically unsaturated monomers inclusive of vinyl aromatic monomers and (meth)acrylates) (paragraph [0125]).
Similarly, Navarro further discloses that the rubber core is made of butadiene homopolymers and copolymers of butadiene with a vinyl monomer inclusive of styrene, an alkyl (meth)acrylate (paragraph [0061]).
Furthermore, it would have been obvious to one of ordinary skill in the art to use both styrene and an alkyl (meth)acrylate as comonomers in combination with butadiene as both styrene and alkyl (meth)acrylates are recognized as copolymerizable with butadiene to form the disclosed rubber core. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Regarding instant claims 13 and 15:
Barnes further discloses that additives are included in either or both of the Part A or the Part B compositions to influence a variety of performance properties (paragraph [0108]).
Navarro teaches that an impact modified resin composition comprising the impact modifier has a good compromise of properties inclusive of having high impact strength while not decreasing the viscosity of the polymer composition and color change at elevated temperatures (paragraph [0042]).
As each part of Barnes is combined to form the curable composition, it would have been obvious to one of ordinary skill in the art to include the impact modifier in either one of or both parts of the curable composition to achieve a cured composition having the desired properties.
Regarding instant claim 17:
Barnes further discloses that the peroxide catalyst is present in an amount from about 0.01% to about 10% by weight of the cyanoacrylate component (Claim 6).
Regarding instant claim 18:
Barnes further discloses that the free radical curable component is a (meth)acrylate component selected from the group inclusive of polyethylene glycol di(meth)acrylates, tetrahydrofuran (meth)acrylates and di(meth)acrylates, hydroxypropyl (meth)acrylate, hexanediol di(meth)acrylate, trimethylol propane tri(meth)acrylate, diethylene glycol dimethacrylate, triethylene glycol dimethacrylate, benzylmethacrylate, tetraethylene glycol dimethacrylate, dipropylene glycol dimethacrylate, di-(pentamethylene glycol) dimethacrylate, tetraethylene diglycol diacrylate, digycerol tetramethacrylate, tetramethylene dimethacrylate, ethylene dimethacrylate, neopentyl glycol diacrylate, trimethylol propane triacrylate, ethoxylated bisphenol-A (meth)acrylate, ethoxylated bisphenol-F (meth)acrylate, and methacrylate-functional urethanes (Claim 8).
Regarding instant claim 19:
Barnes further discloses that the transition metal comprises a member selected from the group consisting of copper, vanadium, cobalt, and iron (Claim 9).
Regarding instant claim 20:
Barnes further discloses that the first part is housed in a first chamber of a dual chamber syringe and the second part is housed in a second chamber of a dual chamber syringe (Claim 10).
Regarding instant claim 21:
Barnes further discloses that that the second part comprises at least one of a plasticizer and a filler (Claim 11).
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant traverses the combination of Navarro with Barnes. Specifically, Applicant argues that Navarro’s core-shell impact modifier particle is disclosed for use in the context of a polymer composition, not a cyanoacrylate monomer composition. Applicant argues that the cyanoacrylate-containing adhesive system of Barnes are highly reactive and chemically sensitive; therefore, modifications to cyanoacrylate-containing systems have the potential to render them non-functional and must be experimentally validated. Applicant argues that the “mapping” asserted by the Office leads persons of ordinary skill to an unpredictable area of chemistry. Applicant argues that the Examiner’s combination of Navarro with Barnes smacks of hindsight. Broadly, Applicant argues that there is no actual evidence of record that those skilled in the art would have expected that a core shell copolymer impact modifier as disclosed in Navarro could simply be added to the chemically distinguishable system of Barnes without fundamentally changing the condition of Barnes’ system.
Applicant’s argument is unpersuasive. the Barnes reference positively discloses that core-shell rubber particles comprising a rubber core and thermoplastic shell are readily incorporated into two-part curable composition; therefore, it would be within the ambit of one of ordinary skill in the art to use the similar core-shell rubber particles of Navarro as especially when those core-shell rubber particles of Navarro have the additional advantages of imparting high impact strength while not decreasing the viscosity of the polymer composition and causing color change at elevated temperatures. In other words, a reasonable expectation of success exists when replacing one core-shell rubber particle composition with another core-shell rubber particle composition that offers additional benefits.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, the Examiner maintains that it would have been that it would have been within the ambit of one of ordinary skill in the art to replace one core-shell rubber particle composition with another core-shell rubber particle composition that offers additional benefits. Applicant’s arguments that the unpredictability of cyanoacrylate chemistry would prevent one of ordinary skill in the art from making the proposed modification is conclusory and not supported by persuasive arguments and evidence.
Applicant further argues the latent properties of their claimed composition. Specifically, Applicant argues that they have discovered that the cured reaction products of their claimed composition demonstrate a greater drop impact strength on substrates bonded together in a 1 mm spaced apart relationship that on substrates bonded together in a 0 mm space apart relationship. Further, Applicant argues that the claimed type of core-shell impact modifier can be included in a system that includes a cyanoacrylate component without causing the cyanoacrylate to react before its intended use. Finally, Applicant contends that the claimed combination unexpectedly provides results that include additional benefits relative to compositions in the absence of, or the use of a different, core-shell impact modifier.
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 03/27/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788