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
Applicant's election with traverse of Group I, claims 1-10 and the species alkoxysilane in the reply filed on 8/14/2025 is acknowledged. The traversal is on the ground(s) that Suen does not disclose claim 1. This is not found persuasive for the reasons provided below in the rejections.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 6 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group and Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/14/2025.
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 1-4 and 7-10 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. Claim 1 is indefinite for the following reasons:
The word "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
The limitation “low molecular weight” is indefinite. The metes and bounds of the term are indefinite.
The limitation “alpha-silane” is indefinite. It is not an established term in the art, and the instant specification does not provide a clear definition. There are three levels of explanation provided in the specification. 1. A silane-terminated polymer [0025]; 2. An alkoxysilane with a donor atom located in the alpha-position to the silicon atom [0027]; or 3. An alkoxysilane with a nitrogen atom located in the alpha-position to the silicon atom [0027]. For the purposes of applying prior art, any of the above three are considered an “alpha-silane”.
Claim 4 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. Since the “acrylate resin-based polymer” was introduced in the claim 1 with the phrase “at least one” preceding it, any further recitation of the “acrylate resin-based polymer” in dependent claims must have the phrase “at least one” preceding it.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 7 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suen (2014/027056) as evidenced by Jing et al. (2015/0240105).
Regarding claims 1, 7, and 8: Suen teaches a reactive hotmelt adhesive composition [abstract] comprising 40 wt% silane modified polymer Max 951, 20 wt% of acrylate polymer Krystalex 3100, 0.9 wt% 3-methacryloxypropyltrimethoxysilane (claimed c)), and 0.1 wt% silquest A-1110 (claimed d)). Silquest A-1110 is 3-aminopropyltrimethoxysilane (248.35 g/mol) as evidenced by Jing et al. [0038].
0.9 wt% when converted to the claimed significant digits is 1 wt%. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) where the district court interpreted 0.91 to include the values between 0.905 and 0.914, based on the reasoning that numbers in that range would be rounded to 0.91.
The silane modified polymer of Suen has the following structure:
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Since there is an alkyl group in the alpha position (methylene in Max 951), it is considered an alpha-silane-terminated organic polymer.
The amount of 20 wt% is very close to the claimed amount of “less than 20 wt%”.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Regarding claim 3: Suen teaches a polyacrylate [0017; Examples].
Regarding claim 9: Suen teaches 24 wt% tackifier [Examples; Table 1].
Regarding claim 10: Suen teaches 0 to 50 wt% of a filler [0046-0047]. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suen (2014/027056) as evidenced by Jing et al. (2015/0240105) as applied to claim 1 above further in view of Laferte et al. (WO 2019/115952).
US 2020/0317962 is being used as an English equivalent to WO 2019/115952 since it is national stage entry of the international application.
Suen fails to teach the claimed formula even though it is within the formula taught by Suen [0018].
However, Laferte et al. teach that Geniosil STP-E10 is a silane modified polymer for hotmelt adhesive compositions [0003; 0068].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Geniosil STP-E10 as taught by Laferte et al. as the silane modified polymer in Suen. It is a simple substitution one known element for another to obtain predictable results.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suen (2014/027056) as evidenced by Jing et al. (2015/0240105) as applied to claim 1 above as evidenced by Stark et al. (2010/0006217).
Suen teaches Elvacite 2903 [Examples; Table 1] is a copolymer of two different methacrylates as evidenced by Stark et al. [0066 (2971 is clearly a typographical error for 2903)].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/692435. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763