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 06/09/2025, the examiner has carefully considered the amendments. The examiner acknowledges the cancellation of claim 1 and 16-23. The claim rejection under 35 U.S.C. § 112, 2nd paragraph for claims 2-3 and 22-23 have been overcome by the amendment and has hereby been withdrawn for consideration. Applicant has not clarified the indefiniteness of claims 14 and 15, please find the rejections below.
Response to Arguments
Applicant's arguments filed 06/09/2025 have been fully considered and are persuasive-in-part. Woods fails to expressly teach and/or fairly suggest the urethane acrylate has a molecular weight of over 25,000 g/mol, as well as, setting forth the adhesive composition has a modulus of less than 10.0 mPa at -20 deg. C and having a creep recovery of greater than about 50 %. Therefore, Woods does not expressly teach and/or render obvious amended claim 8.
It appears claim 4 was mistakenly deemed to comprise allowable subject matter. However, as set forth in the previous rejection Woods sets forth the use of a diol/polyol as a component in the urethane acrylate reaction having a molecular weight ranging from 1900 to 2000, which is deemed to read on the limitation, “the diol has a molecular weight of greater than about 1000 g/mol”. Thus, claim 4 will be rejected over the teachings of previously cited Woods et al. Additionally, claim 6 was indicated as comprising allowable subject matter, as well as, being discussed in the previous rejection over Woods. Woods sets forth the use of aliphatic/cycloaliphatic diisocyanate compounds in the reactions for obtaining the polyurethane acrylate oligomer—see paragraph 5 of the previous rejection. Also, claims 11 and 12 were indicated as comprising allowable subject matter, as well as, being discussed in the previous office action as rejected over Woods. Woods is deemed to comprises said properties, as previously discussed.
Currently, amended claims 2-15 are currently pending in the application. Amended claim 8 will be removed from the previous rejection over Woods under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious. Amended claims 2-7, 9-10 and 13-15 will be rejected—please find the rejections below.
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.
Claims 14-15 are 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 14: Claim 14 sets forth said vinyl ether is a member selected from the homo-polymeric compounds listed in the claimed grouping.
The listed polymers do not appear to comprise active/reactive vinyl ether groups. Does applicant intend for the polyvinyl ethers of claim 14 to be unsaturated or saturated, i.e., having reactive vinyl ether groups or having no reactive vinyl ether groups? Does applicant intend for the monomeric compounds of the claimed homopolymers of claim 14 to be added as the vinyl ether compounds in the mixture to be co-cured, i.e., butyl vinyl ether combined with the polyurethane acrylate which upon co-curing would result in an adhesive composition comprising the reaction product of the monomeric vinyl ether and the acrylated polyurethane—see formulation 70D. Does applicant intend for the vinyl ether found in claim 1 to actually be the polymeric compounds found in claim 14, i.e., co-curing the combination of a polyurethane acrylate and poly (alkyl vinyl ether) resulting in an interpenetrating network-type adhesive upon co-curing. Clarification is requested.
Claim 15 sets forth said polyurethane acrylate in claim 1 is selected from the acrylic homopolymers poly(2- ethylhexyl acrylate), poly(2,2,3,3,-tetrafluoropropyl acrylate), poly(4-cyanobutyl acrylate), poly(butyl acrylate), poly(dodecyl acrylate), poly(ethyl acrylate), poly(hexyl acrylate), poly(isobutyl acrylate), poly (isopropyl acrylate), poly (nonyl acrylate), poly(propyl acrylate), poly(sec-butyl acrylate), poly (tetrahydrofurfuryl acrylate), poly decyl methacrylate), poly(dodecyl methacrylate), poly(hexyl methacrylate), poly(isodecyl methacrylate), poly(octyl methacrylate), and combinations thereof; however, none of said acrylic polymers comprise urethane bonds and, as written, do not appear to be polyurethane acrylate(s) but instead substituted and unsubstituted alkyl acrylate homopolymers.
It is not clear if applicant intends for the acrylic homopolymers to be saturated or unsaturated acrylic homopolymers, i.e., having reactive acrylate groups or not having reactive acrylate groups.
It is unclear if applicant intends for the adhesive composition to further comprise an acrylic homopolymer selected from said grouping found in claim 15, which is in a pre-mixture with said polyurethane acrylate—see pages 13-16, i.e., a premixture of polyurethane acrylate and the high molecular weight acrylic polymer. Does applicant intend for the polyurethane acrylate, as found in claim 1, to comprises backbone units of the homopolymers found in claim 15, such as seen in the disclosure on page 8? Does applicant intend for the polyurethane acrylate, as found in claim 1, to comprise a mixture of said polyurethane acrylate and the acrylate homopolymers of claim 15, wherein the homopolymer is the high molecular weight polymer as described in the disclosure on pages 13-16?
It is unclear if applicant intends for said adhesive composition to further comprise the corresponding monomer of said homopolymers listed in claim 15, wherein said homopolymer is the result upon co-curing said mixture. It is unclear if applicant intends for the adhesive or polyurethane acrylate to include said corresponding monomer, to obtain said adhesive composition as required in claim 1—see formulation 70D, as an example. Clarification is requested.
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, 4-7, 9-10, and 13 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Woods et al (US2008/0139687).
Woods sets forth vinyl ether/acrylate clocked resins and compositions comprising such--abstract. Woods sets forth in an embodiment compositions comprising acrylate-terminated polyurethane block copolymers, a reactive diluent comprising a vinyl ether or 1-alkenyl ether and one (meth) acrylate group and a curing initiator—see [0015] – [0018] and [0020].
Per example 1, Woods sets forth obtaining a polyurethane acrylate in the presence of a vinyl ether reactive diluent and methacrylic acid. Said polyurethane acrylate is obtained by reacting a polyol (Polymeg 2000, mw 1900-2100) with a cycloaliphatic diisocyanate (isophorone diisocyanate) to obtain an isocyanate-capped reaction product and said reaction product is reacted with hydroxyethyl methacrylate to obtain said (meth)acrylate-capped isocyanate oligomer in a vinyl ether reactive diluent—see example 1, Table 1 and scheme 1. Said acrylated polyurethane block copolymer/vinyl ether diluent mixture were then formulated into visible light adhesive compositions by the addition of a reactive diluents, additional monomers, and curing catalyst—see table 7. Said reactive diluents includes at least one or more of a divinyl ether, N, N’-dimethyl acrylamide; hydroxyethyl acrylate; trimethylolpropane triacrylate; and 2-vinyloxyethoxy ethyl (meth) acrylate—see table 7.
Regarding claims 4 and 6: Woods explicitly sets forth in example 7 adhesives obtained from compositions comprising an acrylated polyurethane in combination with a vinyl ether and other reactive components and curing in the presence of a photoinitiator, wherein said acrylated polyurethane is obtained by reacting a diol having a molecular weight of 1900-2100 g/mol, which is greater than about 1000 g/mol as required by claim 4, with an aliphatic diisocyanate (isophorone diisocyanate a cycloaliphatic diisocyanate), wherein said reaction product is then reacted with a hydroxyalkyl acrylate. The primary difference is Woods does not expressly teach said composition has a modulus of less than about 10.0 mPa at -20 deg. C and a creep recovery of greater than about 50 %.
It is deemed because the rigid segments in combination with the soft segments provide the polyurethane acrylate with viscoelasticity the adhesives set forth by Woods inherently has creep recovery— [0023]. However, 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, i.e., creep recovery greater than 50%. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Additionally, is deemed a polyurethane acrylate comprising flexible soft segments, such as polyether diol segments combined with rigid aliphatic polyisocyanates, such as isophorone, provide said polyurethane with flexible yet UV stable backbone should inherently provide the adhesive with a low modulus at low temperatures. However, 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, i.e., a modulus of less than 10.0 mPa at -20 deg. C. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants
Regarding claim 2: The polyurethane acrylate as set forth in the overall teachings, including example 1 is obtained by reacting a polyol (Polymeg 2000, mw 1900-2100) with a cycloaliphatic diisocyanate (isophorone diisocyanate) to obtain an isocyanate-capped reaction product and said reaction product is reacted with hydroxyethyl methacrylate to obtain said (meth)acrylate-capped isocyanate oligomer—see example 1.
Regrading claims 5 and 13: Woods sets forth said compositions are curable upon exposure to visible light, UV light or heat, wherein said curing agents include UV photoinitiators, visible light photoinitiators, thermal initiators, redox initiators and combinations thereof—see [0069].
Regarding claim 7: Example 1 sets forth 411.7 g of polyurethane acrylate in 86.12 g of vinyl ether (cyclohexanedimethanol divinyl ether) which is a ratio of vinyl ether to polyurethane acrylate of 0.75 (less than 1)—see table 1 and example 1.
Regarding claims 9 and 10: Woods does not explicitly set forth the adhesive has a modulus and creep recovery set forth as found in claims 9-10. However, it is deemed because the rigid segments in combination with the soft segments provide the polyurethane acrylate with viscoelasticity the adhesives set forth by Woods inherently has creep recovery— [0023]. However, 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, i.e., creep recovery greater than 70% or 90%. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Additionally, is deemed a polyurethane acrylate comprising flexible soft segments, such as polyether diol segments combined with rigid aliphatic polyisocyanates, such as isophorone, provide said polyurethane with flexible yet UV stable backbone should inherently provide the adhesive with a low modulus at low temperatures. However, 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, i.e., a modulus of less than 1.0 mPa or less than 0.3 mPa at -20 deg. C. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants
Regarding claims 11-12: Woods does not expressly set forth the Tg of the polyurethane acrylate; however, it is generally known in the art of polyurethanes having high flexibility (elasticity) and good resilience (recovery) generally have low glass transition temperatures (Tg), wherein a lower Tg means the material becomes rubbery at lower temperatures, allowing for greater flexibility and elasticity while materials with higher Tg values are more rigid and less flexible. Thus, based upon the reasoning above and the reasoning regarding the modulus and creep recovery above, it is deemed the polyurethane acrylates set forth by Woods inherently have low Tg values. And 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.
Allowable Subject Matter
Claims 3 is objected to as being dependent upon a rejected base claim, but would be -allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Woods does not expressly teach the diol compounds set forth in claim 3.
Claim 8 is allowed.
The following is an examiner’s statement of reasons for allowance: Woods fails to expressly teach and/or fairly suggest the urethane acrylate has a molecular weight of over 25,000 g/mol, as well as, setting forth the adhesive composition has a modulus of less than 10.0 mPa at -20 deg. C and having a creep recovery of greater than about 50 %.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5,352,713 to Snyder et al sets forth adhesive compositions comprising urethane acrylates in admixture with vinyl ether compounds. The primary difference is the adhesive have a modulus of higher than 10 mPa at -20 deg. C. US 5,512,608 to Bachmann sets forth multi-part adhesive compositions comprising a part A including a polyurethane acrylate and a Part B comprising a vinyl ether compound and co-curing the mixture. The primary difference is Bachmann makes not reference to the modulus or the creep recovery of said adhesive compositions. Patent document CN107353854 sets forth optically clear adhesives comprising polyurethane acrylates in combination with a vinyl ether. CN107353854 is silent with regard to the modulus at -20 deg. C, as well as, the creep recovery.
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.
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, Heidi Riviere-Kelley can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc