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 .
This Office Action is in response to Applicant’s response a Nonfinal rejection filed July 9, 2026.
Applicant’s election without traverse of Species A2 (monomer (b)) and A4 (monomer (d)) in the reply filed on February 3, 2026 is acknowledged.
The previous 112(b) rejection of claims 17, 21, 22, 75, 89, and 93 are withdrawn due to Applicant’s amendments.
Claims 2, 5, 15-16, 18, 23-24, 29-30, 35, and 39 are withdrawn due to a previous restriction requirement.
The examiner notes that cancelled claims 36-38 and 94-114 were not present in the response filed. The examiner reminds the applicant that the next response should include a proper and full claim set including the claim numbers of the cancelled claims. (See MPEP 714 and 37 CFR 1.121)
Claims 1, 4, 17, 21-22, 67, 75, 89, and 93 are pending.
This Office Action is 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.
Claims 1, 4, 17, 21-22, 67, 75, 89, and 93 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.
The recitation of “preferably” in claim 1 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 4, 17, 21-22, 67, 75, 89, and 93 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A two-component system of: (i) a first component comprising a monomer mixture which comprises or essentially consists of:
a monomer of formula (a) H2C=CR-C(=O)-O-C2-14-alkyl-OH;
a monomer of formula (b) H2C=CR-C(=O)-OH; and
a monomer of formula (d) H2C=CR-C(=O)-O-C1-6-alkyl-(hetero-)aryl, wherein the (hetero-)aryl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
and preferably additionally at least one monomer independently selected from:
monomer of formula (a) H2C=CR-C(=O)-O-C2-4-814-alkyl-OH;
a monomer of formula (c) H2C=CR-C(=0)-O-C1-62-18-alkyl-(hetero-)aryl, wherein the (hetero-)aryl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
a monomer of formula (e) H2C=CR-C(=O)-O-C2-14-alkyl-O-P(=O)(OH)2;
a monomer of formula (f) H2C=CR-C(=O)-O-C2-14-alkyl-O-C(=O)-C1-6-alkyl-C(=0)-C1-6-alkyl;
a monomer of formula (g) H2C=CR-C(=0)-[O-CH2-CH2]n-OH, wherein index n is an integer within the range of from 1 to 12;a monomer of formula (h) H2C=CR-C(=0)-[O-CH2-CH2]n-O-C1-6-alkyl, wherein index n is an integer within the range of from 1 to 12;
a monomer of formula (i) H2C=CR-C(=O)-[O-CH2-CH(CH3)]n-OH, wherein index n is an integer within the range of from 1 to 12;
a monomer of formula (j) H2C=CR-C(=O)-[O-CH2-CH(CH3)]n-O-C1-6-alkyl, wherein index n is an integer within the range of from 1 to 12;
a monomer of formula (k) H2C=CR-C(=O)-O-C2-14-(hetero-)cycloalkyl, wherein the (hetero-)cycloalkyl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
a monomer of formula (l) H2C=CR-C(=0)-O-C1-6-alkyl-C2-14-(hetero-)cycloalkyl, wherein the (hetero-)cycloalkyl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
a monomer of formula (m) H2C=CR-C(=0)-O-C2-14-(hetero-)bicycloalkyl, wherein the (hetero-)bicycloalkyl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl and =0;
a monomer of formula (n) H2C=CR-C(=0)-O-C2-14-alkyl-heterocyclyl;a monomer of formula (o) H2C=CR-C(=0)-O-aryl;
a monomer of formula (p) H2C=CR-C(=0)-O-C2-14-alkyl-O-C(=0)-CR=CH2;
a monomer of formula (q) H2C=CR-C(=0)-[O-CH2-CH2]n-O-C(=0)-CR=CH2, wherein index n is an integer within the range of from 1 to 12;
a monomer of formula (r) H2C=CR-C(=0)-O-C2-14-alkyl-O-C(=0)-CR=CH2;a monomer of formula (s) H2C=CR-C(=0)-O-C1-6-alkyl-C2-14-(hetero-)cycloalkyl-C1- 6-alkyl-O-C(=0)-CR=CH2, wherein the (hetero-)cycloalkyl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
a monomer of formula (t) H2C=CR-C(=0)-[O-CH2-CH2]n-0-phenyl-CR'R"-phenyl-0- [CH2-CH2-O]n-C(=0)-CR=CH2, wherein R' and R" independently of one another mean -H or -C1-6-alkyl; wherein index n is an integer within the range of from 1 to 16; and
a monomer of formula (u) [H2C=CR-C(=0)-O-C1-6-alkyl]3-C2-14-(hetero-)cycloalkyl,wherein the (hetero-)cycloalkyl moiety is optionally substituted with one, two or three substituents =O
wherein in each case R independently of one another means H or - CH3; and
(ii) a second component comprising: a polymerization initiator;
wherein the two-component system comprises not more than 5.0 wt.-% methyl methacrylate, relative to the total weight of the two-component system, or no methyl methacrylate at all;
wherein the first component and the second component are spatially separated from one another; and
wherein the reaction of the first component and the second component after mixing results in an acrylate structural adhesive.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1, 4, 17, 21-22, 67, 75, 89, and 93 are rejected under 35 U.S.C. 103 as being unpatentable over Curet (US 2011/0083804 as listed on IDS dated May 16, 2023).
Regarding claim 1 and 4, Curet discloses a composition A4 comprising hydroxyethyl methacrylate and methacrylic acid ([0110-0130], Table 2), thereby reading on the first component comprises monomers of formula (a) and (b) wherein formula (a) comprises a C2-alkyl group wherein R is -CH3 and formula (b) wherein R is -CH3 as recited in the instant claim. Curet further discloses a benzoyl peroxide initiator [0123], thereby reading on the second component. The additionally at least one monomer is considered optional and rendered obvious.
Curet does not disclose composition A4 comprises a monomer of formula (d) as recited in the instant claim.
However, Curet broadly teaches mixtures of ester monomers such as isobornyl methacrylate and benzyl methacrylate may be used [0051-0052]. Benzyl methacrylate overlaps with the monomer of formula (d) wherein formula (d) comprises a C1 alkyl aryl group. Therefore, it would have been obvious to one of ordinary skill in the art to add the benzyl methacrylate monomer to the composition A4 since Curet teaches the composition may have mixtures of ester monomers.
Curet is silent on if the first and second component of composition A4 are spatially separated from one another as recited in instant claim 1.
However, Curet teaches the structural adhesives are formed from two components which are a composition and a catalyst for curing the adhesive. Curet further teaches the two components are stored in two different compartments and mixed at the time of application [0087]. Therefore, it would have been obvious to one of ordinary skill in the art to separate the first and second component as taught by Curet.
Curet discloses the composition A4 comprises 27.0 wt% of methyl methacrylate, thereby lying outside the claimed range as recited in the instant claim 1 and instant claim 4.
However, Curet discloses the ester monomer is either methyl methacrylate or ethyl methacrylate [0050]. Therefore, the examiner notes that the substitution of equivalents (i.e., methyl methacrylate and ethyl methacrylate) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that methyl methacrylate and ethyl methacrylate are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art and thereby reads on the two component system comprises no methyl methacrylate at all as recited in instant claim 1 and 4. (MPEP § 2144.06).
Furthermore, methyl methacrylate and ethyl methacrylate are homologs. Compounds that are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. (MPEP 2144.09(II) (citing In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).) In this instance, because the methacrylate of Curet have alkyl chains and the alkyl chains are adjacent homologs (i.e., methyl methacrylate is CH3, ethyl methacrylate is CH3CH2) and are used for the same purpose (reactive diluents), it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used ethyl methacrylate as the monomer for the composition.
Regarding claim 17, Curet discloses the monomer of (b) is methacrylic acid (Table 2), thereby reading on the instant claim.
Regarding claim 21, Curet teaches the monomer (d) is benzyl methacrylate as recited in the rejection for claim 1 above, thereby reading on the instant claim.
Regarding claim 22, Curet teaches composition A4 comprises 5.5 wt% of isobornyl methacrylate relative to the total composition, thereby lying within the claimed range of monomer (d) as recited in the instant claim.
Curet does not disclose composition A4 comprises a monomer of formula (d) as recited in the instant claim.
However, Curet broadly teaches monomers such as isobornyl methacrylate and benzyl methacrylate may be used [0051]. Benzyl methacrylate overlaps with the monomer of formula (d) wherein formula (d) comprises a C1 alkyl aryl group. Curet teaches composition A4 comprises isobornyl methacrylate (Table 2). Therefore, the examiner notes that the substitution of equivalents (i.e., isobornyl methyacrylate and benzyl methacrylate) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that isobornyl methyacrylate and benzyl methacrylate are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Regarding claim 67, Curet discloses composition A4 comprises methacrylate and methacrylic monomers and teaches a benzyl methacrylate monomer as recited in the rejection for claim 1 above (Table 2), thereby reading on the monomer mixture comprises monomers wherein each case R means -CH3.
Regarding claim 75, Curet discloses the initiator used with composition A4 is benzoyl peroxide (Table 2, [0124]), thereby reading on the instant claim.
Regarding claim 89, Curet discloses the composition A4 comprises zinc dimethacrylate as a cure accelerator (Table 2), thereby reading on the instant claim.
Regarding claim 93, Curet does not disclose the composition A4 comprises a stabilizer.
However, Curet broadly teaches ultraviolet stabilizers may be added to the composition [0085], thereby reading on the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to add a stabilizer to the composition as taught by Curet.
Response to Arguments
Applicant’s arguments, see pages 10-13, filed July 9, 2026, with respect to the rejections of claims 1, 4, 17, 21-22, 67, 75, 89, and 93 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of over Curet (US 2011/0083804 as listed on IDS dated May 16, 2023).
Applicant states “First, merely listing two monomers as possible components in a generic list does NOT es
The examiner agrees and directs attention to the new grounds of rejection above, wherein Curet broadly teaches mixtures of ester monomers such as isobornyl methacrylate and benzyl methacrylate may be used [0051-0052]. Benzyl methacrylate overlaps with the monomer of formula (d) wherein formula (d) comprises a C1 alkyl aryl group. Therefore, it would have been obvious to one of ordinary skill in the art to add the benzyl methacrylate monomer to the composition since Curet teaches the composition may have mixtures of ester monomers.
Applicant states “A person of ordinary skill in the art (POSITA) would not have had a reasonable expectation of success in making such a wholesale substitution while maintain the adhesive’s structural performance.”
The examiner disagrees. Methyl methacrylate and ethyl methacrylate are homologs. Compounds that are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. (MPEP 2144.09(II) (citing In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).) In this instance, because the methacrylate of Curet have alkyl chains and the alkyl chains are adjacent homologs (i.e., methyl methacrylate is CH3, ethyl methacrylate is CH3CH2) and are used for the same purpose (reactive diluents), it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used ethyl methacrylate as the monomer for the composition.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant states “The present specification demonstrates (see Examples and paragraphs [0050]-[0052] of the published application, US 2024/0018362 A1) that the claimed combination of monomers (a)+(b)+(d) in an MMA-free or low-MMA system provides unexpected results…”
The examiner is not convinced. Applicant’s examples are not commensurate in scope with the claims. The examples all use hydroxyethyl methacrylate as monomer (a), methacrylic acid as monomer (b), and benzyl methacrylate as monomer (d). However, claim 1 recites “a monomer of formula (a) H2C=CR-C(=O)-O-C2-14-alkyl-OH, a monomer of formula (b) H2C=CR-C(=O)-OH; and a monomer of formula (d) H2C=CR-C(=O)-O-C1-6-alkyl-(hetero-)aryl, wherein the (hetero-)aryl moiety is optionally substituted with one, two or three substituents independently of one another selected from -C1-6-alkyl;
”. There is no evidence that all monomers represented in formula (a), (b), and (d) would behave in the same manner. Therefore, the examples are not commensurate in scope with claim 1.
Furthermore, the amounts of each monomer present in the first component would also have an effect on the adhesive. However, Applicant has only provided data for 0 to 17 wt% of monomer (a), 4.40 to 9.90 wt% of monomer (b), and 0 to 21.76 wt% of monomer (d) of the total composition. There is no evidence that any amount of monomers (a), (b), and (d) would behave in the same manner.
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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763 /JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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