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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-13 and 17-21) in the reply filed on March 20, 2026 is acknowledged. The traversal is on the ground(s) that it should be no undue burden on the Examiner to consider all claims in the single application. This is not found persuasive because it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g. the search would require different search queries). Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 13 recites the limitation “the coupling agent". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-2, 4-6 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al (US 4,036,804) in view of Asada et al (WO 2019/230700, please refer to US 2021/0222036 for English language equivalent and mapping).
Regarding claim 1, Hirai teaches a method of making an elastic adhesive (glue) (Abstract) comprising a linear, unsaturated hydrocarbon-based polymer such as styrene butadiene (col. 2, lines 25-35), a sulfur donor molecule (col. 3, lines 60-67) and an organometallic zinc catalyst (col. 4, lines 5-10). The sulfur and the zinc catalyst are the vulcanizing agent and accelerator respectively and they are mixed together (col. 4, lines 25-30) and form a sulfurized zinc complex as an active cross-linking initiator. Then the polymer is vulcanized (col. 4, lines 50-55) and crosslinked. As this is a standard crosslinking of polymers with a sulfur crosslinking agent and accelerator, vulcanized polymers are formed with thiols and poly sulfidic bridges are formed.
However, Hirai fails to teach the addition of a polyisoprene graft maleic anhydride.
Asada teaches an adhesive (Abstract) which incorporates a maleic anhydride grafted polyisoprene (Examples).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the maleic anhydride grafted polyisoprene of Asada into the method of making the glue of Hirai. One would have been motivated to do so in order to receive the expected benefit of using a component which has excellent adhesive properties (Asada, [0014]).
While the prior art references do not explicitly state that the adhesive is for bonding part inside an inkjet printhead, 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 In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). As the prior art reference teaches an adhesive and there is no structural difference between that and the presently claimed invention, the prior art reads on the claimed invention.
Regarding claim 2, Harai teaches that the polymers are present in the amount from 1 to 50 % by weight (col. 3, lines 55-60) and the sulfur and zinc catalysts are each present in the amount from 0.1 to 10 parts by weight (col. 4, lines 15-23).
Regarding claim 4, Harai teaches that the sulfur donor molecules are elementary sulfur (col. 3, lines 64-65).
Regarding claim 5-6, Harai teaches that the zinc catalyst can be zinc dibutyldithiocarbamate (col. 4, lines 1-15).
Regarding claim 17, Harai teaches that the curing process is a thermocuring process (col. 6, lines 10-20).
Claim(s) 7, 9-10 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirai et al (US 4,036,804) in view of Asada et al (WO 2019/230700, please refer to US 2021/0222036 for English language equivalent and mapping) and Mowrey (US 5,268,404).
The discussion regarding Hirai and Asada in paragraph 6 above is incorporated here by reference.
Regarding claims 7 and 19, Hirai fails to teach the addition of the recited additives.
Mowrey teaches an adhesive composition (Abstract) with a sulfur vulcanizing agent (Abstract) which incorporates a metal oxide such as zinc oxide (Abstract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the zinc oxide of Mowrey as an additive to the composition of Hirai. One would have been motivated to do so in order to receive the expected benefit of providing environmental resistance (Mowrey, col. 4, lines 10-20).
Regarding claim 9, it is noted that the organic ligands are not mandatorily present.
Regarding claim 10, it is noted that the coupling agent is not mandatorily present.
Regarding claim 20, it is noted that the inorganic filler is not mandatorily present.
Allowable Subject Matter
Claim 3, 8, 11-12 18 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art fails to teach the amount of the additives, the reaction of a metal oxide with thiols, the desulfurizing of the polysulfidic bridges, that the sulfur is a soluble crystalline sulfur having the recited particle size and that the zinc complex is reacted to from a second sulfurized zinc complex.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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