4Notice 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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-11) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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 of this title, 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) 1-11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Yamaga et al. (WO 2018216737, US 20200152350 as English equivalent, listed on IDS and ISR) in view of Ishizaki et al. (US 20160200951) and evidenced by Ishizaki (US 20110251318).
As to claims 1-11, Yamaga (abs., claims, examples) discloses a composition for sealing a covered electric wire (claims 3-9) comprising 10-90 wt% (falling within the range of instant claim 8) of alkyl-2-cyanoacrylate, such as n-hexyl-2-cyanoacrylate (meets the species of instant claim 7 and instant examples), 0-40 wt% (overlapping with the range of instant claim 1) of 2-cyanoacrylate having an ether bond in an ester residue, and 0-50 wt% (falling within the range of instant claim 11) a (meth)acrylate having two more (meth)acryloyloxy groups, such as Kayarad HX-620 (used in instant examples). Ethoxyethyl-2 cyanoacrylate (Ex.6, Table1) is an exemplary 2-cyanoacrylate having an ether bond in an ester residue used in instant examples. Yamaga further discloses the composition comprises rubbery thickeners (43). It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. Yamaga’s composition solves the problem of adhesion (4, 32, 48).
Yamaga is silent on the claimed thickener of claims 1, 3-6 and 9-10 that appears to render to the suction length and viscosity of claims 1-2.
Solving the same problem of adhesion, Ishizaki (abs., claims, examples) discloses a 2-cyanoacrylate based adhesive composition (1) comprising 20 parts per 100 pars of 2-cyanoacrylate of an elastomer (falling within the range of instant claim 3), such as Vamac G, to improve adhesion durability (44, 51, 55, Ex.1) owing to the acrylic acid moiety. Vamac G, the same thickener used in instant examples, is an elastic copolymer of ethylene/methyl acrylate/acrylic acid of having Mw of 26.2k, as evidenced by Ishizaki ‘318 (67, Table 6).
Therefore, as to claims 1-11, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Yamaga and added 20 parts of Vamac G per 100 pars of 2-cyanoacrylates of in view of Ishizaki, because the resultant composition would yield improved adhesion durability.
Yamaga and Ishizaki are silent on the intended use of "thickener” of Vamac G. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference has been found between the claimed and disclosed Vamac G, and the disclosed Vamac G would inherently be capable of performed the claimed intended use.
The references are silent on the claimed properties of suction length and viscosity of claims 1-2. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. In this particular case, the aforementioned compositional ingratiates and their loadings. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. refractive index, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. 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.
/SHANE FANG/Primary Examiner, Art Unit 1766