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Claims 37, 33-34, and 39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 16, 2026.
Specification
The disclosure is objected to because of the following informalities: The specification does not include a section entitled “Brief description of the Drawings”.
Appropriate correction is required.
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 states “free radical polymerizsation polymerization”. It is believed applicant only meant to include the second polymerization. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 13 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.
Regarding claim 13, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation that compound III is one or more of C1-C30 aliphatic alcohols, linar, branched, or cyclic C1-C18 aliphatic alcohols, and the claim also recites that it is preferably linear, branched, or cyclic C1-C12 aliphatic alcohols; branched C3-C12 aliphatic alcohols or branched C6-C18 aliphatic alcohols, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 2 and 3 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 2 further limits the upper range of the degree of substitution of the polyisocyanate but does not include the lower limit. Therefore, the values for the degree of substitution range now includes values lower than 0.2 and does not further limit the range given in claim 1.
Claim 3 changes the lower limit of the degree of substitution to be at least 0.3, however, does not change/state the upper limit. The newly claimed range includes values above the lesser of 0.3Y and 0.8 and, therefore, does not further limit the claims.
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.
Claims 1-4, 7-8, 10-11, 13, 15-16, 20-21, 23-27, 30, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krebs et al (WO 99/28363).
With regards to claims 1-3, 7-8, 15-16, 20-21, and 24-26, Krebs teaches a polyurethane adhesive composition that is a reaction product of a polyisocyanate and a low molecular weight polymer derived from ethylenically unsaturated monomers (abstract). Krebs teaches the molecular weight of the polymer to be from 10,000 to 40,000 (page 13) and for the polymer to have active hydrogen groups (page 8) preferably in the form of -OH groups (page 13) reading on nucleophilic group. Krebs teaches the hydroxyl funcationality to be between 1.2 and 5 (page 13). Krebs teaches the polyisocyanate that includes diisocyanates having 2 functional groups (pages 9 and 10) and a polyol (page 8).
Krebs is silent on the degree of substitution of the polyisocyanate component. However, the degree of substitution is the average number of substituent groups attached per base unit and, therefore, having 2 substituent groups and the degree of substation is 2.
With regards to claim 4, Krebs teaches the reaction of the polyisocyanate with a polyol (reading on an active hydrogen group containing compound without a free-radical polymerization group) (page 8) and a hydroxyl group containing (meth)acrylate (pages 12-13).
With regards to claim 10, Krebs teaches the isocyanate to be an aromatic diisocyanate (page 9).
With regards to claim 11, Krebs teaches the reaction of the polyisocyanate with a hydroxyl group containing (meth)acrylate (pages 12-13).
With regards to claim 13, Krebs teaches the polyol to be a linear polyether polyols (reading on aliphatic alcohols) (page 10).
With regards to claim 27, Krebs teaches the addition of anthraquinone compounds (page 12).
With regards to claim 30, Krebs teaches the addition of stabilizers (page 8).
With regards to claim 32, Krebs is silent on the reduction in peel force of the adhesive. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the reduction in peel force are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claims 1-4, 7-8, 10-11, 13, 15-16, 20-21, 23-27, 30, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tunius (US 2018/0030321).
With regards to claims 1-4, 7, 21, 24, and 26, Tunius teaches an adhesive component (abstract) that contains a compound capable of cross-linking with an isocyanate (abstract) that has an average of more than one functional group containing an active hydrogen atom and having a molecular weight from 100 to 100,000 (0031). Tunius teaches the isocyanate to have an average of more than one isocyanate function to cross-link the material (0024) and a hydroxyl containing methacrylic ester (0279). Tunis teaches the functionality of the polymer to be 2 or 3 (0051).
With regards to claim 8, Tunius teaches the isocyanates to include diisocyanates (0041).
With regards to claim 10, Tunius teaches the isocyanate compound to have the following structure:
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23
256
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41
269
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174
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(0067-0070).
With regards to claim 11, Tunius teaches the reaction for the crosslinking component to include a hydroxyl containing methacrylic ester (0279).
With regards to claim 13, Tunius teaches the polyols to include trimethylolpropane (0097).
With regards to claims 15 and 25, Tunius teaches the amount of functional groups on the compound (reading on claimed “X”) to be 2 or 3 or higher (0051).
With regards to claim 16, Tunius teaches the material capable of crosslinking to include hydroxyl terminated compounds (0032).
With regards to claim 20, Tunius teaches the molecular weight of the compound to be from 100 to 100,000 daltons (0031).
With regards to claim 23, Tunius teaches the amount of functional groups on the compound (reading on claimed “X”) to be 2 or 3 or higher (0051) and the amount of isocyanate groups to be 2 reading on the sum being 4, 5, or higher.
With regards to claim 27, Tunius teaches the addition of a photoinitiator (abstract) that includes benzoin compounds, benzophenones, or acetophenones (0147).
With regards to claim 30, Tunius teaches the addition of a stabilizer (0149).
With regards to claim 32, Tunius teaches the reduction in peel force to be as great as 99% and as little as 30% (0002).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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