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 .
Instant application was transferred to examiner Kat Kolb upon departure of Examiner Miller from the USPTO. Consequently, this office action has received full search which resulted in prior art references and co-pending applications that are applicable against instant claims. As a result, this office action is non-final. The examiner will further maintain the restriction issued by examiner Miller. The method claims may be rejoined upon applicant’s request as long as the method comprises all allowable limitations of instant claim 1 or 16. Pending 112 1st paragraph rejections are withdrawn. Pending 112 2nd paragraph rejection of formula a) in claim 1 is also withdrawn as it is interpreted as a structure of ring opened THF (or polymerized tetramethylene oxide functionalized with at least 1 amine. Pending 112 2nd rejection of claims 18 and 22 is restated because it the integer of the additional monomer includes 4 which is already claimed in independent claims as formula a). Additionally, examiner requests that the number b) in claims 18 and 22 be changed to another since b) is already assigned to amine terminated polydimethylsiloxane in claim 1.
Claim Interpretation
Instant claim 1 is directed to a curable composition comprising cyclic amide containing (meth)acrylate monomer, additional mono functional (meth)acrylate monomer, crosslinker and cure initiator. Claim further defines the crosslinker structure L-R1)q. The last sentence states that the composition is an adhesive. Adhesive is a product made from the composition of claim 1. Since claim 1 is a composition, the adhesive is viewed as intended product and composition has to be only capable of performing the intended function as an adhesive.
With respect to the limitations directed to number average molecular weight, this measurement is dimensionless according to IUPAC. It is a ratio calculated by summing the molecular weights of all molecules in the sample and dividing it by the total number of all the molecules fiving an arithmetic mean of molecular weights. Consequently, if prior art discloses molecular weight that is dimensionless, the prior art will meet the claims. Applicants are requested to correct this information in the claims.
For more prompt prosecution of the application the examiner will interpret claim 3 as requiring the crosslinker to be present in an amount of 2-60 wt.% based on the content of the entire composition. Applicants are requested to correct claims to include the basis upon which the content of any component in the composition is based.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claims 1 and 16 discloses crosslinker which comprises linking group L that is a polymer of polytetramethylene oxide functionalized with at least 1 amine or ring opened THF functionalized with at last 1 amine. The integer n for the formula a) of claims 1 and 16 is 4. Dependent claims 18 and 22 disclose additional monomer having structure [(CHR4)n-Z] where R4 can be hydrogen and n can be 4. This compound would fail to further limit the scope of independent claims 1 and 16. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Furthermore, formula of the polymer structure a) in claims 1 and 16 fails to explicitly state how many repeat units are present within the polymer.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-9, 11, 12 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Driscoll (US 4,447,493) in view of Jayakumar et. Al. Studies on copolymers of 2-(N-phthalimido)ethyl methacrylate with methyl methacrylate EU, Polym, J 36(2000) 1659-166 and in view of evidence in US 4,098,742) and Okazaki article.
With respect to claim 1, Driscoll discloses viscoelastic polymer composition which is utilized to adhere together two vibration dampening substrates. The composition comprises (col. 3 and 4):
At least one or more free-radically polymerizable monomers and
At least one or more free-radically polymerizable monomers being acryloyl or methacryloyl compounds.
Methacryloyl compounds are first reacted with isocyanate according to following scheme:
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Wherein Y is selected from -O-. -S- and NR2, and wherein R2 is hydrogen. Definition of Driscoll’s Y meets instantly claimed X.
(HY)nR is interpreted as diamine, where Y is NH, n will be 2 because the R groups in col. 3 are divalent groups. Specifically, the compounds will be diamine terminated polyoxyalkylene compounds, and polysiloxane compounds, with molecular weight of 600-20,000.
Preferred methacryloyl compound is 1-isocyanatoethyl acrylate or (meth)acrylate (col. 5, l. 45 or examples).
Preferred polyalkylene oxides terminated with amine as shown in the reaction scheme above, are based on polyethylene glycol, polytetramethylene glycol, polypropylene glycol (col. 6) polysiloxane polyols such as those in cited references, which clearly establish that the silanes are based on polydimethylsiloxanes terminated wit R1-X group and which is alkylene group and X is NH (see US, 4,089,742), specifically siloxane segments IIa that are reacted with diisocyanate as in Driscoll. It should also be noted that polytetramethylene glycol has the same structure as ring opened THF (alkyl group having four CH groups and functionalized with NH group.
As it was disclosed above the composition of Driscoll the composition comprises additional components which are initiators as well as additional monomers. Examples of monomers include methyl methacrylate; however, the list is not exhaustive.
Jayakumar conducted study and effects of 2-(N-phthalimido)ethyl methacrylate when polymerized with methyl methacrylate (disclosed by Driscoll).
The 2-(N-phthalimido)ethyl methacrylate (NPEMA) was synthesized using scheme 1. What Jayakumar reported is that the addition of the NPEMA alters thermal stability of the acrylate polymers. Specifically, decomposition of PMMA occurs via single stage while polyNPEMA and copolymer with MMA undergo decomposition in two different stages. Table 4 shows how the decomposition temperature of the copolymers is changed based on the content of each monomer.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize small amount of NPEMA in order to adjust for the properties of the resulting composition. As evidenced by Okazaki, NPEMA also improves UV curability of formed films, improve flexibility and adhesion which would be highly desired in the composition of Driscoll.
With respect to claim 2, Driscoll discloses the nucleophilic oligomer that has molecular weight of 600-20,000 encompassing claimed range (see claim 1 of Driscoll).
WIth respect to claim 3, methacryloyl based monomer as shown in the abstract can be utilized in an amount of 25-75 parts (claim 1).
With respect to claim 4, Jayakumar as disclosed above teaches NPEMA which structure of instant claim 4.
With respect to claim 5, the use of NPEMA is result effective variable as evidenced by Jayakumar. Addition of this monomer to MMA showed that the higher the content of MMA the higher thermal stability is. At the same time as evidenced in Ozaka NPEMA will improve other properties. The balance between the properties is dependent on the intended use of the composition. At approximately 1:1 ratio (Table 4) the weight loss as a function of temperature was higher than for the polymer where the content of NEMPA to MMA was 20:80.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant inventio was filed, that the content of NEMPA has to be adjusted to tailor the properties of the composition.
With respect to claim 7, additional monomers of Driscoll include methyl methacrylate, (meth)acrylic acid, acrylic acid and the like (col. 7).
With respect to claim 8, according to claim 1 of Driscoll, additional monomers are utilized in the amount of 25-75 wt.%
With respect to claims 9 and 11, composition of Driscoll discloses use of free-radical initiators (col. 8), wherein free radical initiator is utilized in an amount of 0.01-5 wt.%
With respect to claim 12, the composition of Driscoll may also include fillers (col. 7).
With respect to claim 22, Driscoll teaches that at least one derivative of the methacryloyl compound is utilized. Consequently, the polyalkylene oxide component can be a mixture (Abstract, col. 2) wherein types of the oligomers are disclosed in col. 6n any alkylene oxide listed is suitable for use.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Driscoll (US 4,447,493) in view of Jayakumar et. Al. Studies on copolymers of 2-(N-phthalimido)ethyl methacrylate with methyl methacrylate EU, Polym, J 36(2000) 1659-166 including evidentiary references as applied to claims 1-5, 7-9, 11, 12 and 22 above, and further in view of Dynamar HC-1101 datasheet.
Discussion of Driscoll from paragraph 1 of this office action is incorporated here by reference. While Driscoll discloses polyalkylene oxides modified with amines, he provides examples, which are not exhaustive.
One of ordinary skill in the art would have to give the research due diligence in order to form the best polyalkylene oxides to make the methacryloyl derivatives, including those compounds that are already on sale.
Specifically, Dynamar HC-1101 has been on the market since 2018, and its structure meets the limitation of polyalkylene oxide polymer of Driscoll.
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Use of polyoxyalkylene diamines is already known in the art and since 1984 the development of polymers skyrocketed. Therefore, it would have been obvious to one having ordinary skill in the art to look into the current market to include polyalkylene oxide such as Dynamar HC-1101 for there is a market need to develop stronger better materials, there is finite number of predictable solution because Dynamar HC-1101 is structurally very similar to the disclosed by Driscoll polytetramethylene oxide. Due to structural similarities, making of metharyolyl derivative will succeed because the same functional groups would be participating in formation of the derivatives.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Driscoll (US 4,447,493) in view of Jayakumar et. Al. Studies on copolymers of 2-(N-phthalimido)ethyl methacrylate with methyl methacrylate EU, Polym, J 36(2000) 1659-166 including evidentiary references as applied to claims 1-5, 7-9, 11, 12 and 22 above, and further in view of Tsubouchi (WO 2012/033079 machine translation provided).
Discussion of Driscoll from paragraph 1 of this office action is incorporated here by reference. In summary, Driscoll discloses monomers of the instant claim 1, which are polymerized. The focus of Driscoll’s invention was the polymer itself and novel monomers that are reaction product of polyalkylene oxide diamine with isocyanate functionalized (meth)acrylates, consequently Driscoll only briefly disclosed types of initiator system suitable for polymerizing disclosed therein monomers. In. col. 8 Driscoll in a generic manner discloses free radical initiators that include azo compounds, peroxides as well as redox system comprising persulfates/bisulfates, peroxides/tertiary amines, as well as other redox systems that are capable of free radical polymerization.
The difference between instant invention and Driscoll is more detailed description of the initiator system which can polymerize monomers via free radical mechanism.
Tsubouchi also discloses a very similar composition which discloses polymerization of monomers a1, a2 and a3, wherein a1. Monomer a1 is acrylate monomer having urea bond [0038], wherein exemplified compound includes Karen MOI (IEM), which is the same isocyanatoethyl methacrylate as that in Driscoll. Monomer a2 is methacrylate monomer modified with modified by hydroxy containing compounds, such as polyethylene glycols, polypropylene glycols and polyTHF which adducts are made via ring opening and modification with amines [0055]. Monomer a3 is phthalimidoethyl (meth)acrylate [0059].
Tsubouchi discloses polymerization of the monomers in presence of chain transfer agent which includes metal complexes as well as radical polymerization initiator [0080]. Examples of metal complexes include those based on cobalt, iron, nickel and the like with cobalt complexes being preferred [0081. Free radical polymerization initiator includes peroxides and persulfates which are also initiators disclosed in Driscoll. Specifically, persulfate initiator as shown in Tsubouchi includes emmonium persulfate [0082].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the initiator system of Tsubouchi in the teachings of Driscoll, because such initiators are encompassed by Driscoll. Additionally, the initiator system is also free radical initiator system, which will polymerize the monomers of Driscoll because all monomers in both references are (meth)acrylate monomer where free radical polymerization occurs at the ethylenic unsaturation.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Driscoll (US 4,447,493) in view of Jayakumar et. Al. Studies on copolymers of 2-(N-phthalimido)ethyl methacrylate with methyl methacrylate EU, Polym, J 36(2000) 1659-166 and further in view of Dynamar HC-1101 datasheet.
Evidentiary references are: Okazaki article, Husken article
With respect to claim 1, Driscoll discloses viscoelastic polymer composition which is utilized to adhere together two vibration dampening substrates. The composition comprises (col. 3 and 4):
At least one or more free-radically polymerizable monomers and
At least one or more free-radically polymerizable monomers being acryloyl or methacryloyl compounds.
Methacryloyl compounds are first reacted with isocyanate according to following scheme:
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Wherein Y is selected from -O-. -S- and NR2, and wherein R2 is hydrogen. Definition of Driscoll’s Y meets instantly claimed X.
(HY)nR is interpreted as diamine, where Y is NH, n will be 2 because the R groups in col. 3 are divalent groups. Specifically, the compounds will be diamine terminated polyoxyalkylene compounds, and polysiloxane compounds, with molecular weight of 600-20,000.
Preferred methacryloyl compound is 1-isocyanatoethyl acrylate or (meth)acrylate (col. 5, l. 45 or examples).
Preferred polyalkylene oxides terminated with amine as shown in the reaction scheme above, are based on polyethylene glycol, polytetramethylene glycol, polypropylene glycol (col. 6) polysiloxane polyols.
It should also be noted that polytetramethylene glycol has the same structure as ring opened THF (alkyl group having four CH groups and functionalized with NH group. However, Driscoll does not teach the exact formula required by claim 1.
One of ordinary skill in the art would have to give the research due diligence in order to form the best polyalkylene oxides to make the methacryloyl derivatives, including those compounds that are already on sale.
Specifically, Dynamar HC-1101 has been on the market since 2018, and its structure meets the limitation of polyalkylene oxide polymer of Driscoll.
The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397 ("The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘[o]bvious to try.’ ... When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103."). Thus, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.
Use of polyoxyalkylene diamines is already known in the art and since 1984 the development of polymers skyrocketed. Therefore, it would have been obvious to one having ordinary skill in the art to look into the current market to include polyalkylene oxide such as Dynamar HC-1101 for there is a market need to develop stronger better materials, there is finite number of predictable solution because Dynamar HC-1101 is structurally very similar to the disclosed by Driscoll polytetramethylene oxide. Due to structural similarities, making of methacryolyl derivative will succeed because the same functional groups would be participating in formation of the derivatives.
As it was disclosed above the composition of Driscoll the composition comprises additional components which are initiators as well as additional monomers. Examples of monomers include methyl methacrylate; however, the list is not exhaustive.
Jayakumar conducted study and effects of 2-(N-phthalimido)ethyl methacrylate when polymerized with methyl methacrylate (disclosed by Driscoll).
The 2-(N-phthalimido)ethyl methacrylate (NPEMA) was synthesized using scheme 1. What Jayakumar reported is that the addition of the NPEMA alters thermal stability of the acrylate polymers. Specifically, decomposition of PMMA occurs via single stage while polyNPEMA and copolymer with MMA undergo decomposition in two different stages. Table 4 shows how the decomposition temperature of the copolymers is changed based on the content of each monomer.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize small amount of NPEMA in order to adjust for the properties of the resulting composition. As evidenced by Okazaki, NPEMA also improves UV curability of formed films, improve flexibility and adhesion which would be highly desired in the composition of Driscoll.
With respect to claim 17, Dynamar HC-1101 is the same compound as utilized by the applicants consequently all attributes to structural limitations will be the same.
With respect to claim 18, Driscoll teaches that at least one derivative of the methacryloyl compound is utilized. Consequently, the polyalkylene oxide component can be a mixture (Abstract, col. 2) wherein types of the oligomers are disclosed in col. 6n any alkylene oxide listed is suitable for use.
With respect to claim 19, methacryloyl based monomer as shown in the abstract can be utilized in an amount of 25-75 parts (claim 1).
With respect to claim 20, the claim requires that the repeat unit of formula a) be utilized in 10-20 wt.% (actually original language in the claim was much clearer). One of ordinary skill in the art would readily know, that mixtures of alkylene oxides are utilize to fine tune the properties of the polymer. This is a well-established technical knowledge necessary to those practicing within the art.
As evidenced by Husken, the content of PTMO and in PEO do matter with respect to the properties of polyether polyol as a whole. In experimental section polyether polyols having PEG and PTMO of different molecular weights and different content were produced and analyzed. The properties are influenced by the combination of PEO/PTMO and as the content of PEO increases included: increase in melt temperature, increased in crystallinity, decrease in heat of fusion, change in glass transition temperatures (lower Tg for higher PTMO content). In turn these properties will influence an overall mechanical property of the composition and copolymer itself. Consequently, one of ordinary skill in the art would know that content of the PTMO would have to be lower in order to have higher Tg, higher crosslink density and mechanical properties such as modulus and elasticity. Consequently, the content of the PTMO block is a result effective variable, which is adjusted to tailor the properties of the polyether polyols based on the intended use.
The findings with respect to the content of PEO and PTMO within polymeric chain as evidenced by Husken, provides predictability with respect to increasing or decreasing content of both, consequently further optimization based on the known trends would fall under routine experimentation performed by one of ordinary skill in the art to fine tune the content of each alkylene oxide which would result in adhesive formulation with proper glass transition temperature.
Specifically, for adhesives, more PEO means more tackiness and low temperature flexibility, so for optimal performance the content of the blend is varied to tailor viscoelastic and thermal properties depending on the purpose of the adhesive.
With respect to claim 21, Jayakumar as disclosed above teaches NPEMA which structure of instant claim 21.
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 1-5, 6-12, 16-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,378,340 to Mahoney. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 3 of Mahoney discloses curable composition comprising a monofunctional monomer, cure initiator system and a crosslinker. The crosslinker of Mahoney as depicted in claims 1, 2, 5 and 6 is the same as the crosslinker of the instant invention. Thereby meeting crosslinker limitations in claims 1-3, 16-20 and 22.
Initiator of Mahoney is not disclosed in the claims, therefore consistent with the MPEP 804 the examiner can utilize specification as a dictionary to learn the meaning of the term “initiator” is defined in col. 11 of Mahoney, the cure system comprises metal salt, barbituric acid, peroxide and ammonium salt. This is the same initiator system as claims in instant claims 9-11.
Monofunctional monomers in claim 3 of Mahoney are very generic in scope and it includes. The scope of claim 3 is so generic and with use of term “comprising” additional monomers other than those listed in Mahoney’s claim 4 are encompassed including monofunctional phthalimidoethyl methacrylate. Consequently, instant claims 4, 7 and 21 are met.
In his claim 7, Mahoney discloses use of fillers which meet instant claim 2.
Relevant Prior Art
US 12, 600,885 and US11,739,172 to Rotto, does not qualify as a prior art as it is commonly assigned and filed after effective date of the instant invention. US 4,233,425 and US 4,287,323 to Teffertiller, US 4,605,712 to Mueller, US 4833213 to Leir, US 6,441,118 to Sherman.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
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