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 .
Election/Restrictions
Applicant’s election with traverse of Group 1, Claims 1-16, 9-12, filed on 12/26/2025 is acknowledged. The traversal is on the ground that Groups I, II and III do not lack unity of invention, the argument is not persuasive because 1) for PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner. 2) those three groups do not share a common special technical feature because claim 7 is related to a cured composition which is not included in claims 1 and 8.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 7-8, 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/26/2025.
Claim Objections
Claim 1 objected to because of the following informalities: line 3 “in an ester residue” should be “in the ester residue” due to inherent antecedent basis. Appropriate correction is required.
Claim 1, 5 objected to because of the following informalities: a proper Markush format is “selected from the group consisting of A, B and C”. 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.
Claims 3,9 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.
Claim 3, 9 recites the limitation "the cured product". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-5, 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kakishita et al (JPH09118839).
In setting forth this rejection a machine translation of JPH09118839 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claim 1, 4-5: Kakishita teaches a composition comprising 20wt% of an alkyl 2-cyanoacrylate, 60 wt% of ethoxyethyl-2-cyanoacrylate and 20 wt% of KAYARAD HX-620 and a peroxide (example 2, 0023). The alkyl 2-cyanoacrylate can be isopropyl-2-cyanoacrylate [0010].
Claim 2-3, 9-11: because Kakishita teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 6, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kakishita et al (JPH09118839) in view of Mcardle et al (US 2016/0251548).
Kakishita teaches the limitation of claim 5 and claim 11, as discussed above. Kakishita further teaches the composition comprising polymerization accelerator such as crown ethers [0021].
Kakishita does not teach the amount of crown ethers.
However, Mcardle discloses a cyanoacrylate composition and teaches an accelerator such as crown ether can be included in an amount of 1000-3000 ppm [0029, 0052]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include crown ethers in an amount like claimed because it is recognized in the art being a suitable amount for cyanoacrylate compositions.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No.18/004,453. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘453 claims a composition comprising at least 10wt% of a 2-cyanoacrylate having an ether bond in the ester residue, and an alkyl-2-cyanoacrylate..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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Primary Examiner, Art Unit 1763
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