DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 11/6/25, claims 1-29 are currently pending in the application, with claims 1-18 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s arguments with regard to prior art rejections and applied art are deemed persuasive and accordingly, the rejections of record are withdrawn. Additionally, upon further consideration, new grounds of rejections are presented in this office action. Examiner regrets the delay in prosecution as a result of mailing this second non-final office action.
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.
Claim 21 is 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 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. The specification as originally filed (pages 9-10), at best, provides support for Ethanox 330, p-benzoquinone, Ethaphos 368, and toluhydroquinone as stabilizers, but does not reasonably provide enablement for any high molecular weight phenolic antioxidant as in the claimed invention.
Applicants may amend the claim to recite the specific structure of Ethanox 330 dosclosed on page 9 to overcome the rejection.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “high” in claim 21 is a relative term which renders the claim indefinite. The term “high molecular weight” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claims 19, 20-28 are rejected under 35 U.S.C. 103 as being unpatentable over Schuft et al. (US 2010/0101724 A1, of record), in view of Kish et al. (US 2007/0117885 A1).
Regarding claim 19, Schuft teaches two-part, curable (meth)acrylic adhesives prepared from a first part including at least one (meth)acrylate component and a cure system, and a second part comprising at least one oxygen such oxygen scavenger ([0009]-[0019], ref. claims 1 and 20).
Schuft teaches a (meth)acrylate monomer [0037]-[0046], a cure system including a free radical initiator, such as cumene hydroperoxide (CHP), di-tertiary peroxide, tertiary butyl perbenzoate (TBPB), benzoyl peroxide etc. [0075]-[0077], i.e., equivalence thereof, individually or as a combination, and 3,5-diethyl-1,2-dihyrdro-1-phenyl-2-propylpyridine (PDHP) as an oxygen scavenger [0066].
Disclosed Example 1 is drawn to a two-part adhesive prepared from a first part, comprising methyl methacrylate, methacrylic acid, 2-ethylhexyl methacrylate (read on acrylic monomer), and cumene hydroperoxide and tert. butyl peroxybenzoate, and a second part comprising PDHP.
Schuft is silent on an adhesive formed from a first part comprising dilauroyl peroxide as the radical initiator as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
In an analogous field of endeavor, the secondary reference to Kish teaches anchoring systems utilizing acrylate compositions comprising an acrylate ester monomer and free radical catalyst (Ab.). Disclosed genus of free radical catalysts include dibenzoyl peroxide, dilauroyl peroxide, cumyl hydroperoxide, tertiary butyl perbenzoate etc., i.e., equivalence thereof (col. 3, lines 22-46).
Given the teaching in Kish on peroxide initiators suitable for polymerizing methacrylate ester monomers, and the teaching in Schuft on an adhesive composition comprising (meth)acrylate esters and a peroxide, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an adhesive from a first part comprising an (meth)acrylate ester monomers and lauroyl peroxide, and a second part comprising PDHP. For instance, a skilled artisan would have found it obvious to prepare the first part of Example 1 in Schuft by substituting cumene hydroperoxide and tert. butyl peroxybenzoate with lauroyl peroxide, based on their art recognized equivalence. It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Regarding claim 20, Schuft teaches a free radical inhibitor (reads on stabilizer) to prevent the first part from reacting prematurely [0052]-[0055].
Regarding claim 21, the secondary reference to Kish teaches a catalyst activator/free radical accelerator, such as N,N-bis(hydroxypropyl)-toluidine (encompasses diisopropanol-p-toluidine) (col. 3, lines 47-61).
Regarding claims 22 and 23, Schuft teaches a total peroxide content of the first part at about 1% to 2% by weight of the first part [0079], and a mixing ratio of the first part and second part at 1:1, 5:1, 10:1 or higher [0084], thereby obviating the claimed range.
Regarding claims 24 and 25, Schuft prescribes the oxygen scavenger, such as PDHP, at 0.01% to about 5% by weight of the composition (ref. claims 1, 14).
Regarding claims 26-27, Schuft does not teach phenyl or benzene containing constituents (other than PBHP) as being essential in the disclosed adhesives.
Regarding claim 28, Schuft does not teach aldehyde-containing or aldehyde-generating compounds as being essential in the disclosed adhesives.
Claims 21 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Schuft et al. (US 2010/0101724 A1, of record), in view of Kish et al. (US 2007/0117885 A1) and Huang et al. (US 6,225,408 B1, of record).
The discussions on Schuft and Kish from preceding paragraphs 9-13, as applied to claim 19, are incorporated herein by reference. Schuft further teaches free radical inhibitors, such as phenols [0054], and DMPT as a reducing agent (Example 5).
Although Schuft is silent with regard to the claimed limitations, the secondary reference to Huang is in a related field of endeavor and is directed to radical curable acrylic adhesives (Ab., col. 1, lines 7-11, ref. claims).
Regarding claim 21, Huang teaches Ethanox 330 as an inhibitor/stabilizer (Examples-col. 10, col. 8, lines 40-54). Regarding claim 29, Huang teaches reducing agents, such as diisopropanol-p-toluidine (DIIPT) and dimethyl p-toluidine (DMPT), i.e., equivalence thereof, for use with oxidizing agents/peroxides/hydroperoxides so as to initiate addition polymerization (col. 7, lines 5-30).
Given the teaching in Schuft on DMPT as a reducing agent, and given that Schuft is open to stabilizers, such as phenols, and given the teaching in Huang on diisopropanol-p-toluidine (DIIPT) as a reducing agent and Ethanox 330 as an inhibitor/stabilizer, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Schuft’s adhesive compositions comprising Ethanox 330 as a stabilizer, or diisopropanol-p-toluidine as a reducing agent. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Response to Arguments
In view of the amendment dated and persuasive arguments dated 11/6/25, the rejections of record have been withdrawn. Additionally, new grounds are rejections are presented herein above.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. 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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/Satya B Sastri/
Primary Examiner, Art Unit 1762