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 .
Applicant’s election without traverse of Species A2 (monomer (b)) and A4 (monomer (d)) in the reply filed on February 3, 2026 is acknowledged.
Claims 2, 5, 15-16, 18, 23-24, 29-30, 35, and 39 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 3, 2026.
Claims 1, 4, 17, 21-22, 67, 75, 89, and 93 are pending.
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 17, 21, 22, 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “(meth)acrylic acid”, and the claim also recites “preferably methacrylic acid” which is the narrower statement of the range/limitation. Claim 21 recites “benzyl (meth)acrylate, 2-phenylethyl (meth)acrylate, 3-phenylpropyl (meth)acrylate, and furfuryl (meth)acrylate”, and the claim also recites “preferably benzyl acrylate or benzyl methacrylate” which is the narrower statement of the range/limitation. Claim 22 recites “at least 2.0 wt-%”, and the claim also recites “preferably at least 3.0 wt.-%, more preferably at least 4.0 wt.-%, still more preferably at least 5.0 wt.-%, yet more preferably at least 6.0 wt.-%, even more preferably at least 7.0 wt.-%, most preferably at least 8.0 wt.-%, and in particular at least 9.0 wt.-%; and/or-at most 24 wt.-%, preferably at most 22 wt.-%, more preferably at most20 wt.-%, still more preferably at most 18 wt.-%, yet more preferably at most 16 wt.-%, even more preferably at most 14 wt.-%, most preferably at most 12 wt.-%, and in particular at most 10 wt.-%;” which is the narrower statement of the range. Claim 75 recites “a peroxide polymerization initiator”, and the claim also recites “preferably selected from the group consisting of benzoyl peroxide, tert-butyl hydroperoxide, ditert-butyl peroxide, cumene hydroperoxide, di- cumene peroxide, tert-butyl peracetate, tert-butyl perbenzoate, and ditert-butyl perphthalate; preferably benzoyl peroxide” which is the narrower statement of the limitation. Claim 89 recites “an accelerator”, and the claim also recites “preferably a metal di(meth)acrylate; more preferably a metal di(meth)acrylate selected from zinc di(meth)acrylate, aluminum di(meth)acrylate and magnesium di(meth)acrylate; most preferably zinc dimethacrylate” which is the narrower statement of the limitation. Claim 93 recites “a stabilizer”, and the claim also recites “preferably a stabilizer selected from the group consisting of phenols, quinones, hydroquinones, thiazines, phenothiazines, N-oxyls, aromatic amines, phenylenediamines, sulfonamides, oximes, hydroxylamines, urea derivatives, phosphorus compounds, sulfur compounds and metal salts; more preferably mono- tert-butyl hydroquinone (MTBHQ) and/or 10H-phenothiazine” which is the narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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; and
additionally at least two monomers independently of one another selected from:
a monomer of formula (b) H2C=CR-C(=O)-OH;
a monomer of formula (d) H2C=CR-C(=O)-OCl -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;
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.
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).
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).
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 including 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.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights