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 .
Claim Objections
Claim 7 is objected to because it repeats the limitation “non-glycidyl epoxide” in line 2.
Claim 4 is objected to because it repeats the limitation “glycidyl epoxide” in line 2.
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 11 and 18 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation "the polymer" in line 1. There is insufficient antecedent basis for this limitation in the claim, examiner presumes claim 11 is meant to depend from claim 10 because it has the limitation of “a polymer.”
Claim 18 is unclear because it states a temperature that is “attained” by the polymerized mixture, and applicant does not define what is meant by this term. It could mean that the mixture is heated to that temperature, or that the mixture undergoes an exothermic reaction, therefore the metes and bounds of the claim are unclear.
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.
Claims 1-3, 5, 7, 9-10, 12-13, 15-17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Corstorphine et al US10689547B2.
Regarding claims 1-3, Corstorphine teaches a curable adhesive composition comprising (i) an aliphatic glycidyl ether and (ii) a cycloaliphatic epoxy and/or an aromatic glycidyl ether, Col. 1 lines 60-62. Corstorphine also teaches that the composition undergoes a frontal polymerization reaction, Col. 2 line 16. It is further taught that the polymerization reaction is cationic, Col. 15, line 60.
The example 4 composition shown in Col. 23 lines 33-40, includes two different diglycidyl ethers, ADEKA 1,6-hexanediol diglycidyl ether, and Epikote BFDGE based on bisphenol F, an initiator (OPPI hexafluoroantimonate), and filler (Genioperl P52). In Table 6, Col. 26, it shows the viscosity of the composition with added fumed silica. In table 6 the composition of example 4 has viscosities at different shear rates of 143 Pa.s and 1.5 Pa.s with 4.4 wt.% added silica, and viscosities of 269 Pa.s and 3.1 Pa.s with 5.7 wt.% silica. Corstorphine does not specify the method used for the viscosity measurements, approach but, given the compositional parallels between the composition of Example 4 and that claimed, it would inherently exhibit a viscosity within the claimed range when evaluated with a parallel plate fixture.
Regarding claims 5 and 7, the dependent claim 5 is further limiting of an embodiment different from the one on which the rejection of claim 1 is based, the claim does not require that both non-glycidyl ethers be present because they are optional selections of claim 1, but it is merely stating where either of the two are present, the non-glycidyl ethers are selected from those listed. Furthermore, Corstorphine teaches that a preferable cycloaliphatic epoxy used in place of the aromatic glycidyl ether is selected as 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexanecarboxylate, Col.4 lines 51-52, which anticipates claim 7.
Regarding claim 9 Corstorphine teaches in the example 4 composition that the OPPI initiator is 0.42 wt.% without the additional fumed silica, 0.4 wt.% with 4.4% silica added, and 0.39 wt.% with 5.7 % silica added, which anticipates the claimed range, see tables below.
Example 4, no Silica
parts
wt.%
Adeka Resin
1000
41.56%
Epikote resin
1000
41.56%
OPPI
10
0.42%
diphenylmethylsilane
34
1.41%
Epoxy TM-100
2
0.08%
Genioperl P52
360
14.96%
fumed silica
0
0.00%
Total
2406
100.00%
Example 4 and 4.4% silica
parts
wt.%
Adeka Resin
1000
39.73%
Epikote resin
1000
39.73%
OPPI
10
0.40%
diphenylmethylsilane
34
1.35%
Epoxy TM-100
2
0.08%
Genioperl P52
360
14.30%
fumed silica
110.7
4.40%
Total
2516.7
100.00%
Example 4 and 5.7% silica
parts
wt.%
Adeka Resin
1000
39.19%
Epikote resin
1000
39.19%
OPPI
10
0.39%
diphenylmethylsilane
34
1.33%
Epoxy TM-100
2
0.08%
Genioperl P52
360
14.11%
fumed silica
145.4
5.70%
Total
2551.4
100.00%
Regarding claim 10 Corstorphine teaches in the example 4 composition that the filler is Genioperl P52, which is a polymer filler, and fumed silica. It is also taught other fillers such as calcium carbonate, aluminum trihydroxide (alumina), or polymers such as polyacrylates and polyamides, Col. 15 lines 53-57, are useful.
Regarding claim 12 Corstorphine teaches in the example 4 that the Genioperl P52 filler is about 15 wt.% in the example with no added silica, and then with the added silica, the total filler is 18.7 wt.% and 19.81 wt.%, see tables above, which anticipates the claimed range.
Regarding claims 13 and 15, Corstorphine teaches an article coated by the adhesive composition with at least one layer and the article can be made of metal, wood, rubber, or plastic, Col. 18 lines 26-45.
Regarding claims 16-17, and 19, Corstorphine teaches a method of making an adhesive composition comprising mixing together (i) an aliphatic glycidyl ether and (ii) a cycloaliphatic epoxy and/or an aromatic glycidyl ether, Col. 1 lines 60-62, an ionic initiator Col. 5 line 60, and at least one filler, Col. 15 lines 53-57.
The adhesive composition is brought into contact with the catalyst and then cured (polymerized) either at room temperature or by application of heat up to 180°C Col. 17 lines 1-7.
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 4, 6, 11, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Corstorphine et al US10689547B2.
Regarding claims 4 and 6, Corstorphine teaches the invention according to claim 1 explained above. It is further taught the combined amount of diglycidyl ether and cycloaliphatic epoxy and/or aromatic glycidyl ether in the adhesive is 40-99 wt.%, Col. 5 lines 32-35, which overlaps with the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 11, Corstorphine teaches the invention according to claim 1 explained above and further teaches the filler can include polyacrylates or polyamides, as explained above, but does not explicitly say whether it is a homopolymer or block polymer. It would be obvious to the skilled artisan that a homopolymer could be used in the adhesive because of how prevalent and well known in the art they are, for example PA 6 is a well-known polyamide homopolymer.
Regarding claim 14, Corstorphine teaches the invention according to claim 1 explained above and further teaches the composition has lap shear strengths between 1.5 MPa and 7.8 MPa, Table 1, Col. 22, which falls between the claimed range.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz et al, US20120211161A1.
Regarding claims 16-19, Lutz teaches a method of making an adhesive composition comprising mixing together at least one epoxy resin, ¶[0009], which include diglycidyl ethers ¶[0037], and cycloaliphatic epoxides ¶[0041], and mixtures thereof, a free radical initiator, ¶[0069], and at least one filler ¶[0070].
The adhesive composition is cured (polymerized) by subjecting it to heat at a temperature between 80-220°C ¶[0080], which overlaps with the claimed range. It is unclear what the applicant means by the temperature is “attained” by the polymerized mixture, therefore the broadest reasonable interpretation is the temperature the mixture is heated to for polymerization, in which case, the invention of Lutz satisfies this limitation.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Corstorphine does not use a radical initiator with the cationic initiator, nor is it suggested, or obvious to combine a radical initiator with the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765