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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2010/0087576 to Prasse.
As to claims 10-12 and 15, Prasse discloses a curable composition comprising 225 grams of a polymer (A) represented by compounds of the following formula:
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a is 0 or 1, b is 1 to 10, and x is 1 to 10 (0013-0015).
and 20 grams of hydrogenated castor oil as a thixotropic agent (0126). Prasse discloses the content of thixotropic agent ranges from 0.01 to 20 parts by weight per 100 parts by weight of the polymer (A). The content of thixotropic agent overlaps the claimed range. Accordingly, a prima facie case of obviousness exists. At the time of filing it would have been obvious to a person of ordinary skill in the art to include the thixotropic agent within the claimed amounts as taught in Prasse to improve storage stability (0082). Prasse discloses all components within the curable composition as mixed at room temperature and atmospheric pressure (0095). Prasse discloses the curable composition are stored in cartridges (See Examples) and Prasse teaches tests wherein the curable composition after mixing are applied to surfaces and stored at standard climate (23°C) for 7 days prior to testing (0107). This is taken to meet the claimed storage limitation.
As to claims 13-14, Prasse discloses polyamide waxes as suitable thixotropic agents that can be used instead of hydrogenated castor oil (0081).
As to claim 16, Prasse discloses wherein the composition contains 100 parts by weight of polymer (A), 0.01 to 20 parts by weight of thixotropic agents, and 0.01 to 10 parts by weight of a component (B)
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As to claims 17-18 with regard to the viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Amendment
The affidavit-Rule 130(a)-America Invents Act is effective. U.S. Patent Pub. No. 2023/0357502 is not considered prior art from a different inventor.
Response to Arguments
Applicant’s arguments with respect to claim(s) 10-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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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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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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