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 .
Election/Restrictions
Claims 8-20 are still withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 and 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is insufficient support in the originally filed disclosure for a first “sealed container” and a second “sealed container”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 already encompasses the limitations of claim 4, from which claim 5 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 6, 7 and 21-25 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Batdorf (USPN 4,070,225).
In Example 3 and Example 6, Batdorf teaches a method for preparing an adhesive by combining polyamide resin (adhesive additive) in a n-propyl alcohol solution, then adding to that polyamide resin solution, a pre-mixture comprising water and talc (filler), and mixing.
Thus, the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1, 3, 4, 6, 7 and 21-25 is/are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by Carlson et al. (US 2012/0263836).
In ¶’s 15, 16 and 65, Carlson et al. teach application of an adhesive by first preparing a Part (B) comprising isocyanate-terminated polyurethane prepolymer and a Part (A) comprising a polyol, where the two parts are kept separate prior to the application, and are mixed immediately before application; wherein either Part A or Part B include adhesion promoters, non-reactive resins, organic solvents, fillers, surfactants, and mixtures thereof.
Thus, the requirements for rejection under 35 U.S.C. 102((a)(1)/(a)(2)) are met.
Claim(s) 1, 3, 4, 6, 7 and 21-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uto et al. (JP H1192728).
In the Abstract and Examples, Uto et al. teach mixing a resin in a device with an organic solvent, then adding a water-soluble filler solution, and further mixing until uniform.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
Claim(s) 1, 3-7 and 21-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muranaka (JP 2000297269).
In the Abstract and ¶ 7, Muranaka teach a two-component curable adhesive, each component is stored in a separate container or tube, one component comprising a basic resin and the other comprising an inorganic adhesive filler, such as talc and calcium carbonate.
In ¶ 7, Muranaka teach the components are separated by a water-dispersible sheet, such that introduction of the adhesive filler and the adhesive resin, each with solvent, occurs before application.
Further, in ¶ 15, Muranaka teach that each of the two-components may be put in separate containers made of a water-dispersible sheet, and combined and mixed along with water at the time of application.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batdorf (USPN 4,070,225), Carlson et al. (US 2012/0263836), Uto et al. (JP H1192728), Muranaka (JP 2000297269).
While each of Batdorf, Carlson et al., Uto et al. and Muranaka, above, do not explicitly recite that more solvent is added to adjust the viscosity of the adhesive after mixing, it would have been obvious to ordinary workers in the art at the time the invention was made to adjust the viscosity, as needed, with more solvent. It is noted that it may not even be necessary to add any additional solvent if no adjustment is needed to the viscosity of the adhesive for application.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to add or not add additional solvent to the adhesive admixture, as needed for the application, with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 1/5/26 have been fully considered but they are not persuasive.
While applicant argues that none of the prior art teach "introducing a pre-packaged quantity of adhesive additive components from a first sealed container portion to a volume of a solvent, wherein the adhesive additive components comprise a resin and at least one additive" or "introducing a pre-packaged quantity of adhesive filler components from a second sealed container portion to the volume of the solvent", as noted above, the originally filed disclosure does not provide sufficient support for said “first sealed container” or “second sealed container”.
Also, as the original disclosure lacks the recitations of the “first sealed container” or “second sealed container,” it also lacks the definitions of what is meant by these terms. Further, the claim actually recites that the components in the process are “from” the “sealed” containers; which does not exclude removal of the components from the “sealed” containers prior to their use in the process.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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