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 .
Response to Amendment
The amendment of claim 7 is supported by the specification. The new claim 19 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 new grounds of rejection set forth below are necessitated by applicant's amendment filed on 10/24/2025. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-4, 7, 12, 19 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a viscosity increase ratio of the composition is 65% or less”. However, the specification supports specific composition having the claimed viscosity increase ratio.
Claims 1-4, 7, 12, 19 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 pre-AIA the applicant regards as the invention.
For claim 1, there is a conflict or inconsistency between the claimed subject matter and the specification disclosure. The claim recites the copolymer A’ “includes an XY diblock structure or an XYX triblock structure therein”. An XY diblock structure or an XYX triblock structure is well known in the art. However, the examples of the present application disclose copolymers prepared by three steps which results in a XYZ triblock structure. The specification does not clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. For purposes of expediting prosecution, “includes an XY diblock structure or an XYX triblock structure” is interpreted as “is a block copolymer”.
Claim Rejections - 35 USC § 103
Claim 1-4, 7, 12, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al (JP2018162394) in view of Saito et al (WO2016035718).
In setting forth this rejection a machine translation of WO2016035718 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claim 1, 7, 12, 19: Sasaki teaches a poly(meth)acrylate block copolymer used as moisture-curing polymers and as the main component of constructure sealants and adhesives. The method of preparing the copolymer comprising: (1) a first step of polymerizing 1 to 10 molar equivalents of a (meth)acrylic monomer (B) having a hydrolyzable silyl group and 1 to 100 molar equivalents of a (meth)acrylic monomer (C) having no hydrolyzable silyl group relative to 1 molar equivalent of a radical initiator (A) having one halogen group in the molecule to synthesize a macroinitiator; (2) a second step of adding 2 to 600 molar equivalents of a (meth)acrylic monomer (C) having no hydrolyzable silyl group relative to 1 molar equivalent of the macroinitiator synthesized in the first step to synthesize an intermediate polymer (D); (3) a third step of adding 1 to 10 molar equivalents of a (meth)acrylic monomer (B) having a hydrolyzable silyl group relative to 1 molar equivalent of the intermediate polymer (D) synthesized in the second step to synthesize an intermediate polymer (E) [0007]. The blocks formed by the first step and the second step read on Y block and the amount of repeating units having an alkoxysilyl group overlaps the claimed range. The block formed by the third step and the first step reads on X block. The Mw/Mn is less than 1.8 (table 1). It is noted that epoxy group of monomer (C) is optional.
Sasaki does not teach an epoxy compound.
However, Saito discloses a moisture cured sealant composition and teaches an epoxy compound such as epoxidized soybean oil can improve the restorability of the cured product [0156, 0169-0170, 0013]. The blending ratio of epoxy compound is 0.5-50 parts by weight per 100 parts by weight of a moisture curable silyl group-containing (meth)acrylic polymer. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include an epoxy compound into the composition of Sasaki to improve the restorability of the cured product. prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Sasaki is silent with respect to the viscosity of the composition. However, the combination of teachings from Sasaki and Saito have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claims 2-3: the (meth)acrylic monomer (C) can be 2-methoxyethyl acrylate [0014]. The amount of repeating units of monomer C overlaps the claimed range.
Claim 4: The block formed by the third step and the first step reads on X block. The amount of repeating units having an alkoxysilyl group overlaps the claimed range.
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the X blocks on the both sides of the methacrylic based copolymer A’ may substantially be the same or different, which is contrary to its ordinary meaning. The specification does not clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term.
Applicant’s argument that the claimed X block and Y block are distinguished is irrelevant to the 112(b) rejection.
In response to applicant's argument that inclusion of the claimed epoxy compound is critical in obtaining improved storage viscosity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WENWEN CAI/
Primary Examiner, Art Unit 1763