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 .
Claims 17-19 and 23-30 are pending as amended on January 28, 2026. Support for amended claim 17 is found in the title. Support for amended claim 19 is found in original claim 18.
The new grounds of rejection set forth below were necessitated by the amendment to claim 17 specifying that the polymerization is a free-radical polymerization and the amendment to claim 19 further limiting the substrate. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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 the action can be found in a prior Office action.
Claim Objections
Claims 18-19 are objected to because of the following informalities:
Claim 18, lines 5-6 – for the utmost clarity, the examiner recommends that “fibres, for reinforcing built structures” should read “fibers for reinforcing built structures” without the comma.
Claim 18, lines 15-16 – for the utmost clarity, the examiner recommends that “wherein the substrate is selected from the group consisting of a building substrate made of” should read “wherein the substrate is a building substrate made of a material selected from the group consisting of.”
Claim 19, lines 2-3 – for the utmost clarity, the examiner recommends inserting “, wherein the building substrate is” after “building substrate” in line 2 and deleting “, respectively” in line 3.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 17-19, 23-25, 28, and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Gruen (US 2018/0179304 A1, Cite No. 10 on 12/26/2022 IDS) in view of Burckhardt (EP 2 017 260, US 2010/0101455 A1 is used as a translation).
Regarding claim 17 and 25, Gruen teaches a composition that is used as an adhesive (Gruen, [0020]), reading on an adhesive system. The adhesive system comprises a free-radical-polymerizable reactive resin and a hardener, wherein the hardener as initiator for the free-radical-polymerizable resin includes the following initiator system: (a) at least one activator in the form of a metal salt and as a free-radical starter (b) an imine (Gruen, abstract and [0001] where free-radical-polymerizable compound reads on free-radical-polymerizable reactive resin and aldimine reads on imine). The imine of Gruen is obtainable by reaction of an amine and an aldehyde (Gruen, [0048]). As the aldehyde, Gruen teaches isobutyraldehyde (Examples of especially preferred aldehydes are isobutyraldehyde, …, Gruen, [0058]). Isobutyraldehyde reads on an aldehyde having a hydrogen atom at the carbon atom in the alpha-position to the carbonyl group. As the amine, Gruen teaches amine-functionalized polyoxyalkylenes, such as Jeffamines from Huntsman Corp (Gruen, [0051]), but does not explicitly teach polyoxyalkylene chains that are a copolymer of oxyethylene and oxypropylene units.
However, Gruen points to Burckhardt for examples of suitable amines (Gruen, [0049]). Therefore, it would have been obvious to one of ordinary skill in the art to utilize any amine taught by Burckhardt. Burckhardt teaches specific Jeffamine® amino-functionalized polyoxyalkylenes, including ED-600 (Burckhardt, [0085]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the Jeffamine amine-functionalized polyoxyalkylene of Gruen for the Jeffamine ED-600 of Burckhardt in order to utilize a specific commercially available polymer from a reference suggested by Gruen. Jeffamine ED-600 reads on an amino-functionalized polyoxyalkylene, the polyoxyalkylene chains of which are a copolymer of oxyethylene and oxypropylene units, those polyoxyalkylene chains carrying alkoxy groups having primary amino groups, as recited in claim 17, and wherein for the imine the amino-functionalized polyoxyalkylene carries two 2-aminopropyloxy groups which are terminal in each case as, recited in claim 25 (see Jeffamine ED600 formula in instant Table 1).
Gruen further teaches utilizing the composition as an adhesive in a method for adhesively bonding an article to a fixed substrate, the method comprising: applying an adhesive system for adhesively bonding an article to a fixed substrate (drilled holes are then filled two-thirds full with the particular curable composition for fixing purposes, Gruen, [0093]), after mixing components thereof that otherwise do not react with one another including a free-radical-polymerizable reactive resin and a hardener (formulations are mixed in advance, Gruen, [0088]), and areas to be adhesively bonded are brought into contact with one another (A threaded rod is pushed into each drilled hole, Gruen, [0093]) and the adhesive system is cured (24 hours at room temperature, Gruen, [0093]), with polymerization taking place (The polymerization is initiated by adding and mixing in the constituent marked “X”, Gruen, [0088]).
There is reasonable basis to conclude that the polymerization of Gruen is a free-radical polymerization because Gruen’s composition is described as a “composition having free-radical-polymerisable compounds” (Gruen, abstract) and Gruen teaches that use of imines as free-radical starters in combination with metal activators for free-radical polymerizations was not previously known (Gruen, [0006]). In addition, Gruen describes the activators as “free-radical starters” (Gruen, [0022]), suggesting that the polymerization is a free-radical polymerization.
Regarding claim 18, Gruen teaches the method according to claim 17,(ii). Gruen teaches articles such as fibres and woven fabrics for reinforcing built structures (Gruen, [0030]) and further teaches building substrates, such as masonry or concrete (Gruen, [0020] and [0028]).
Regarding claim 19, Gruen teaches the method according to claim 18, for adhesively bonding an anchoring element in a hole or a recess in the substrate (Gruen, [0029] where crevice reads on recess and [0093]). As substrates, Gruen teaches walls, ceilings, or floors in the building sector, reading on walls, ceilings, and floors in the construction field (Gruen, [0086]).
Regarding claims 23-24, modified Gruen teaches the method according to claim 17 wherein the imine is obtainable by reaction of Jeffamine ED-600 with an aldehyde. As an aldehyde, Gruen teaches isobutyraldehyde (Gruen, [0058]). Jeffamine ED-600 reads on an amino-functionalized polyoxyalkylene (claim 24), which carries a primary amino group in each case bonded to the terminal oxyalkylene group (claim 23). Isobutyraldehyde (claim 24) reads on an alkanaldehyde (ii) having only one hydrogen atom at the carbon atom in the alpha- position to the carbonyl group (claim 23).
Regarding claim 28, Gruen teaches the method according to claim 17, wherein the imine has an average molecular weight of 2000 g/mol or less (Gruen, [0016]).
Regarding claim 30, Gruen teaches the method according to claim 17, wherein the adhesive system is in the form of a multi-component system (Gruen, [0080]), which includes a free-radical hardenable reactive resin in one component and the hardener in another component (constituent… b2) can likewise be included with… constituent a) in one component, Gruen, [0083]).
Regarding claim 31, Gruen teaches the method according to claim 17, wherein the coating system or adhesive system is in the form of a single-component system (Gruen, [0029]).
Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Gruen (US 2018/0179304 A1) in view of Burckhardt (EP 2 017 260, US 2010/0101455 A1 is used as a translation) as applied to claim 23 above, and as evidenced by Marauska (US 2017/0355862 A1).
Modified Gruen teaches the method according to claim 23. As evidenced by Marauska, Jeffamine ED-600 reads on the following formula: NH2-CH(CH3)-CH2-[O-CH2-CH(CH3)-]l(O-CH2-CH2-)m[O-CH2-CH(CH)-]nNH2 wherein, on average, I and n denote approximately 3.6 and, on average, m denotes approximately 9 (Marauska, [0044-0046]).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Gruen (US 2018/0179304 A1) in view of Burckhardt (EP 2 017 260, US 2010/0101455 A1 is used as a translation) as applied to claim 17 above, and further in view of Grün (DE 10 2014 103 923 A1 (Cite No. 3 on 12/26/2022 IDS), US 2016/0060493 A1 (cite No. 9 on 12/26/2022 IDS) is used as an English translation).
Modified Gruen teaches the method according to claim 17. Gruen teaches that the preferred resins include ethoxylated bisphenol A di-(meth)acrylates and points to the reactive resins described by Grün as examples of suitable resins (Gruen, [0064]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have utilized any reactive resin, particularly any ethoxylated bisphenol A di-(meth)acrylate reactive resin, taught by Grün, including a free-radical-hardenable reactive resin of the formula
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in which a and b each independently of the other denote a number greater than or equal to 0, with the proviso that preferably at least one of the values is greater than 0 (Grün, [0062]). One would have been motivated to use this resin in order to utilize an ethoxylated bisphenol A di-(meth)acrylates reactive resin from a reference suggested by Gruen.
Response to Arguments
Applicant’s arguments filed January 28, 2026 have been fully considered.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (paragraph 1 of page 7 and second to last paragraph of page 8), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the conclusion of obviousness is based solely on the disclosures of Gruen (US 2018/0179304 A1) and Burckhardt (EP 2017260) and does not rely on Applicant’s disclosure. It would have been obvious to one of ordinary skill to have modified the method of Gruen with the Jeffamine ED-600 of Burckhardt because Gruen both teaches Jeffamines generally and points to Burckhardt for examples of suitable amines. Therefore, it would have been obvious to use any amine taught by Burckhardt, including Jeffamine ED-600.
In response to applicant's argument that the aldimines of Burckhardt participate in a polyaddition to isocyanate compounds yielding urethanes whereas in the claimed method the polymerization takes place as a radical reaction (page 7, paragraph 2), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, one would have been motivated to modify the method of Gruen with the Jeffamine ED-600 of Burckhardt because Gruen both teaches Jeffamines and points to Burckhardt for examples of suitable amines. Therefore, it would have been obvious to use any amine taught by Burckhardt, including Jeffamine ED-600.
Applicant argues (page 7, paragraph 3) that Burckhardt only exemplifies aldimines based on a Jeffamine with a polyoxypropylenediamine structure and does not include this aldimine in the exemplified compositions. While Burckhardt does not exemplify the claimed copolymer of oxyethylene and oxypropylene units, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Jeffamine ED-600 (reading on a copolymer of oxyethylene and oxypropylene units) given that Burckhardt teaches it and Gruen teaches that the amines of Burckhardt are suitable in the composition of Gruen.
Applicant argues (end of page 7) that there is no rational basis to select a copolymer amine with both propyleneoxy and ethyleneoxy repeat units because the specific Jeffamines mentioned by Gruen do not have both types of repeat units. While Gruen does not exemplify the claimed copolymer of oxyethylene and oxypropylene units, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). In this case, one would have been motivated to modify the method of Gruen with the Jeffamine ED-600 of Burckhardt because Gruen both teaches Jeffamines and points to Burckhardt for examples of suitable amines. Therefore, it would have been obvious to use any amine taught by Burckhardt, including Jeffamine ED-600.
Applicant argues (page 8, paragraph 2) that Jeffamine ED-600 leads to shorter gel times in radical polymerization when compared with the D-230 based aldimine (instant Table 4) and better bond stress values in comparison with D-230 and EDR-148 based aldimines (instant Table 5). To the extent that this can be considered an allegation of unexpected results, the evidence pointed to by Applicant does not demonstrate the alleged unexpected result in a manner that is commensurate in scope with the claimed invention. MPEP 716.02(b) states that appellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). Applicant has not sufficiently explained the data provided in Table 4 and Table 5 because Applicant has not compared the data to the closest prior art or described how the data demonstrate an unexpected result. It is unclear from the data what result would have been expected when using ED-600. For example, ED-600, D-230, and EDR-148 differ in both chemistry and molecular weight (see instant Table 1), so it is unclear based on the data in Table 4 and Table 5 how the claimed combination of oxyethylene and oxypropylene units would be expected to impact the resulting gel times and bond stress values. In addition, evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Applicant relies on the instant examples utilizing ED-600, but the amino-functionalized polyoxyalkylene of claim 17 is not limited to the specific structure of ED-600. In addition, claim 17 does not limit the quantity of any reagent, does not use the specific free-radical polymerizable reactive resins and metal salts used in the instant example, and encompasses both methods of coating and methods of adhesively bonding.
In addition to applicant’s argument of hindsight reasoning that is addressed above, Applicant argues (page 8, paragraph 3) that the positive effect on bond stress found for the claimed class of copolymers is not suggested by the combined prior art and is therefore non-obvious. 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). In this case, bond stress is a result of the composition prepared by the claimed method and modified Gruen teaches the method of claim 17.
Applicant argues (end of page 8) that one would not have been motivated to look to Marauska (US 2017/03355862 A1) for the formula of Jeffamine ED-600 because Marauska is non-analogous art. Applicant points to MPEP 2141.01(a). The requirements in MPEP 2141.01(a) do not apply to evidentiary references. Marauska is used as an evidentiary reference in the rejections of claims 26-27 solely to confirm that the structure of Jeffamine ED-600 satisfies the limitations of claims 26-27.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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