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
Claims 10 are 11 are objected to for containing the superfluous language, “in a use application.”
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 and 7-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling of curable compositions that exhibit a full width at half maximum of 90° C and 150° C when evaluated using dynamic mechanical analysis (DMA) by incorporating into said composition 40-90% of (hydrogenated) diene-based compound bearing a plurality of (meth)acrylate substituents to an acrylic monomer mixture, does not reasonably provide enablement for any conceivable combination of curable chemical ingredients featuring an initiator which either presently exist or which might be discovered in the future and that would demonstrate this same feature when analyzed using DMA . The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to prepare an invention commensurate in scope with these claims.
As alluded to above, the claims embrace any combination of polymerizable compound and initiator whatsoever. Even if the invention were only confined to those combinations of these materials that exhibited adhesive characteristics, which of course it is not, than a suitable macromonomer component might include such disparate materials as polyoxyalkylenes, polyisobutylenes, polyorganosiloxanes, polyurethanes, etc. bearing polymerizable moieties as alternatives to the polydiene compounds in use. Also, this presupposes that the polymerizable system needs to contain any macromonomer material whereas claim 1 claims any mixture of polymerizable compound and initiator. Clearly the claims are of quite incredible scope in this regard.
Details regarding the half width of a temperature loss tangent graph seem to rarely be addressed in the chemical literature hence the body of public knowledge available to guide a person of ordinary skill is scant. Further, while that person may generally understand that these graphs chart material energy dissipation with peaks representing relaxation events in the polymer material, and aspects that might influence the temperature at which they occur include crystallinity, degree of crosslinking, the presence of significant quantities of additives such as plasticizers and fillers, etc. (thus characterizing the overall state of the prior art), the magnitude of the impacts of these variables can vary widely reflecting a substantial level of unpredictability.
Another criterion to be considered in a scope of enablement determination is the existence of working examples. While there are indeed several examples, and a couple of comparative examples differing primarily in that they exclude the aforementioned (hydrogenated) diene-based compound bearing a plurality of (meth)acrylate substituents, there are no examples of compliant polymerizable compositions that utilize macromers other than said diene-based compound, or no macromers at all, yet the claims are encompassing of all of these assorted compositions too.
In light of the substantial breadth of the claims, the unpredictability of the technology area, and the dearth of examples directed to systems other than those comprising the materials of claims 4 to 6, it is the judgement of the Examiner that claims 1-3 and 7-17 suffer from lack of scope of enablement.
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 is 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.
In general, the intent of claim 13 is in question. Why would it be necessary to verify that an adherent that is already established as having been coated is coated? Is it possible that Applicant instead meant crosslinked? As written, claim 13 seems to simply recite a means of curing a coating. The actual act of checking, or verifying, would seem to involve one or more steps not presently articulated.
Claim Interpretation
Consistent with the outlook stated by other examining authorities, it does seem that the introduction of a diene polymer featuring the attributes delineated in at least paragraph [0027] and in the quantities suggested in [0044] of the Specification is essential to realizing a composition from which a DMA plot of temperature against tan delta will exhibit the claimed feature of a full width at half maximum of between 90° Cand 150° C. (Paragraph [0024] says this is a favored approach for achieving these ends but doesn’t mention any others.) Thus, for the purpose of evaluating the instant invention against the prior art, it will be presumed that a reference that teaches macromers complying with the description of paragraph [0024], and maybe more narrowly paragraphs [0033] and certainly to include the commercial embodiments of [0034,0040], in concert with monomers conforming with the description of those disclosed in claim 6, will, when analyzed by DMA, yield a full width at half maximum measurement of between 90° and 150°.
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, 3-6, and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto et al., WO 2012/141299.
Goto is directed to free radical polymerized compositions comprising both radiation- and thermally-activated initiators. Particularly favored embodiments of the composition are summarized in Table 1 with a corresponding description of individual components being furnished in paragraphs [0073-0081]. Relevant to the present discussion, up to 70 parts by weight of TE-2000, which is the same product identified as favored in association with component (a-1) of claim 4, is combined with several other monomer materials encompassed within the description of components (a2), (a3), and (a4) of claim 6. In those instances where the acrylate-functional polybutadiene is added in an amount of 70 parts, its contribution to the overall weight of the composition is about 63 wt.% consistent with the requirements of claim 5.
As before, the prior art composition is considered to be one that inherently displays the same claimed feature in a plot of temperature against tan delta acquired therefrom given the compositional parallels between the invention defined in claims 1, 4, 5, and 6. Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning to show inherency, the burden of proof shift to Applicant (MPEP 2112)
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted).
Claims 7 and 9, likewise, are deemed to be inherently satisfied under the same rationale.
The scope of claims 10 and 11 is effectively the same as in claim 1 insofar as the body of these claims recite nothing more than an intended use.
As for claim 13, it is reiterated here that, while the language of the claim purportedly defines an approach for checking a state of being coated, the only actual step is one of subjecting the coating to UV radiation. This same operation is contemplated in [0081] of the reference.
Allowable Subject Matter
Claims 2 and 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. Whereas the properties disclosed in claims 7 and 9 are uniformly held across all inventive examples in Table 1, at least one of the inventive examples, Example 4, does not conform with the requirement of claim 2 despite being compositionally similar. Accordingly, it would not be appropriate to presume that the compositions of the prior art possess a corresponding storage elastic modulus simply because they mirror the inventive examples in many respects. As for claim 8, at least one of the surfaces to be mated by the prior art composition are not transparent to UV radiation so there would be little incentivizing the skilled artisan to include a fluorescent agent as a means of verifying that the composition has been coated/cured.
At least several other references cited on the PTO-892 form are at least anticipatory of the compositional aspects of the instant invention save for the fluorescing agent. Insofar as they fail to render unpatentable anymore than does Goto, and in the name of brevity no formal statement of rejection will be proffered over these at the present time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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February 21, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765