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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4, 7-9, 11-14, 16-21, and 23-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 8, and 16, the claim limitation covalent copolymerization is not taught and/or suggested by the instant specification.
In claims 1, 8, and 16, the claim limitation wherein said composition is a “single-phase”, solution form adhesive is not taught and/or suggested by the instant specification.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-4, 8, 11-14, 16, 18-19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO-2009/094060 to Stewart at al.
As to claims 1, 3-4, 8, and 11, Stewart discloses an adhesive in solution comprising the following copolymerized polymer wherein covalent attachments are present in the backbone and further after curing (Abstract):
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The copolymer would be capable of increasing surface wetting because it is the same polymer as currently claimed. The content of phosphate is calculated as follows based on the above formula: the copolymer contains 90% of phosphate oligomer that contains anywhere from 10 to 90% by weight of phosphate moieties (Pg. 14, ll. 14-25). Accordingly, the content of phosphate moieties within the copolymerized adhesive ranges from 9% to 81%. The polycation and polyanion contain crosslinkable groups. For example, the polyanion can include one or more groups that can undergo oxidation, and the polycation contains on or more nucleophiles that can react with the oxidized crosslinker to produce new covalent bonds. Polymers 3 and 7 in Figure 6 provide examples of DOPA residues incorporated into a polyanion and polycation, respectively. In each of these polymers, an acrylate containing the pendant DOPРА residue is polymerized with the appropriate monomers to produce the polyanion 3 and polycation 7 with pendant DOPA residues.
As to claims 12-14, 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 /n re Otto, 136 USPQ 458, 459 (CCPA 1963). Stewart teaches the copolymer in adhesive compositions that can be used to bond metals, dry bonding, and surface coatings (Abstract).
As to claim 16, Stewart discloses mixing monmoacryloxyethyl phosphate, dopamine methacrylamide or methyl methacrylate (Pg. 14, Il. 19), and acrylamide in a solvent (MeOH), adding a free radical polymerization, quenching, and removing said solvent to prepare the copolymer (Pg. 22, Il.1-8).
As to claims 18-19 and 21, 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 /n re Otto, 136 USPQ 458, 459 (CCPA 1963). Stewart teaches the copolymer in adhesive compositions that can be used to bond metals, dry bonding, and surface coatings (Abstract).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7, 9, 17, 20, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2009/094060 to Stewart at al.
As to claims 7, 9, 17, 20, and 23-26, Stewart discloses an adhesive in solution comprising the following copolymerized polymer wherein covalent attachments are present in the backbone and further after curing (Abstract):
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The copolymer would be capable of increasing surface wetting because it is the same polymer as currently claimed. The content of phosphate is calculated as follows based on the above formula: the copolymer contains 90% of phosphate oligomer that contains anywhere from 10 to 90% by weight of phosphate moieties. Accordingly, the content of phosphate moieties within the copolymerized adhesive ranges from 9% to 81%. Stewart discloses the polyanion is a polymerization product of ethylene glycol methacrylate phosphate and acyrylamide wherein the phosphate groups amount to 45 to 90 mol% (Pg. 15, ll. 2-11). Stewart discloses wherein the polycation is a polymer backbone of acrylamide and methacrylate residues wherein the tertiary monomer moieties derived from acrylamide range from 15 to 30 mol% (Pg. 13. Ll. 6-21). The content of phosphate groups overlaps the claimed range of 8 to 50%. The content of DMA and MMA overlap the claimed range. At the time of filing it would have been obvious to decrease the content of phosphate moieties within the claimed values in order to provide cohesive strength and to maintain the desired pH in underwater applications as taught in Stewart (Pg. 3, 1-10, figure 1).
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive.
The applicant argues that Stewart fails to teach covalent polymerization between phosphate-bearing and catechol-bearing monomers. This is not found persuasive because the polycation and polyanion contain crosslinkable groups. For example, the polyanion can include one or more groups that can undergo oxidation, and the polycation contains on or more nucleophiles that can react with the oxidized crosslinker to produce new covalent bonds. Polymers 3 and 7 in Figure 6 provide examples of DOPA residues incorporated into a polyanion and polycation, respectively. In each of these polymers, an acrylate containing the pendant DOPРА residue is polymerized with the appropriate monomers to produce the polyanion 3 and polycation 7 with pendant DOPA residues. Stewart discloses the polyanion is a polymerization product of ethylene glycol methacrylate phosphate and acyrylamide wherein the phosphate groups amount to 45 to 90 mol% (Pg. 15, ll. 2-11). Stewart discloses wherein the polycation is a polymer backbone of acrylamide and methacrylate residues wherein the tertiary monomer moieties derived from acrylamide range from 15 to 30 mol% (Pg. 13. Ll. 6-21). The backbone of the polymers are covalently attached monomers that have phosphate, amine, and catechol moieties that further undergo crosslinking upon curing. In other words, the phosphate and catechol moieties are covalently attached by monomer units comprising the moieties.
With regards to the argument pertaining to single-phase, the limitation is taken to coincide with a solution containing the adhesive copolymerized product. The specification does not provide definitions or teachings with regards to the limitation single-phase. The limitation single-phase is met because the adhesive composition is obtained in a solution.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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