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 .
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirino (US Serial No. 2014/0329926), in view of Zillessen et al. (US Serial No. 2020/0385513).
Regarding claims 1, 2, 11, 12, and 15; Kirino teaches a composition comprising, in a preferred embodiment, 100 parts JER807 (epoxy resin), 3 parts UCAT-5002 (tetraborate salt), 3 parts total radical photoinitiator (2-ethylanthrquinone and Speedcure MBF), and 200 parts UN-6200 (urethane acrylate) [Table5; Ex54].
Although Kirino discloses these amounts in a preferred embodiment, larger ranges are contemplated, such as 0.15 to 15 parts by weight of the photobase generating agent (tetraborate salt) [0069] and 0.1 to 200 parts by weight of the radically polymerizable compound (urethane acrylate) [0114], both with respect to 100 parts by mass of the total amount of the component (A) and (B) in the present invention. When looking to Example 54 of Kirino as a starting point, in the instance the composition comprises 100 parts JER807 (epoxy resin; 30.9 wt.% of the total composition), 100 parts QX40 (thiol compound), 20 parts UCAT-5002 (tetraborate salt; 6.2 wt.% of the total composition; 10 parts per 100 parts A and B), 3 parts total radical photoinitiator (2-ethylanthrquinone and Speedcure MBF; 0.9 wt.% of the total composition), and 100 parts UN-6200 (urethane acrylate; 30.9 wt.% of the total composition, 50 parts per 100 parts A and B), as calculated by Examiner, thus falling within the scope of the claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Although urethane acrylate is employed in the preferred embodiment, Kirino contemplates a larger range of useful polymerizable compounds, such as isobornyl acrylate, stearyl acrylate, tetrahydrofurfuryl acrylate, cyclohexyl acrylate, 2-methoxyethyl acrylate, isooctyl acrylate, and lauryl acrylate [0114].
Kirino fails to teach the polymerizable compound is a (meth)acrylamide monomer. Zillessen et al. teaches suitable compounds to be used as the radiation curable component include, for example, isobornyl acrylate, stearyl acrylate, tetrahydrofurfuryl acrylate, cyclohexyl acrylate, 2-methoxyethyl acrylate, isooctyl acrylate, lauryl acrylate, and N,N-dimethyl acrylamide [0051]. Therefore, Zillessen teaches that isobornyl acrylate, stearyl acrylate, tetrahydrofurfuryl acrylate, cyclohexyl acrylate, 2-methoxyethyl acrylate, isooctyl acrylate, lauryl acrylate, and N,N-dimethyl acrylamide are functional equivalents for the purpose of functioning as a radiation curable compound for use in epoxy-based adhesive compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06). Zillessen et al. teaches a photocurable resin composition comprising an epoxy resin, a radiation curable resin, and a photoinitiator [abs]. Kirino and Zillessen et al. are analogous art because they are both concerned with the same field of endeavor, namely photocurable epoxy-thiol based compositions, suitable for use in joining or coating substrates.
The Examiner makes note that Kirino teaches a mixture of all the components listed above, thus considered a liquid one-component composition.
Regarding claims 3-4; Kirino teaches the epoxy resin has 2 or more glycidyl groups, and may further have (meth)acrylic functional groups [0034]. Kirino teaches epoxy resins may be diglycidyl ether derived from bisphenol A and epichlorohydrin (glycidyl ether of polyhydric alcohols and phenols) [0035].
Regarding claims 5-10; Kirino teaches preferred borate salts of the present invention are a salt of 1,8-diazabicyclo[5.4.0]undeca-7-ene structure-containing compound and tetraphenyl borate (UCAT-5002) and 2-ethyl-4-methyl imidazolium tetraphenyl borate (EMZ-K) [0143; Ex].
Regarding claim 13; Kirino teaches a preferred photoinitiator for the present invention is phenyl-1-hydroxy-cyclohexyl ketone [0094].
Regarding claim 14; Kirino teaches a cured product [0123].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 8, and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8, and 12-14 of copending Application No. 17/833148 in view of in view of Kirino (US Serial No. 2014/0329926). Although the conflicting claims are not identical, they are not patentably distinct from each other because they are both drawn to the same art specific subject matter, namely a curable composition comprising an epoxy resin, borate salt, and acrylamide. The essential difference between the instant application and the patent is that the instant application further requires a 0.1 to 5 wt.% of a free radical photoinitiator. Kirino teaches a composition comprising, in a preferred embodiment, an epoxy resin, tetraborate salt, 3 parts total radical photoinitiator (0.7 wt.% of the total composition; e.g. phenyl-1-hydroxy-cyclohexyl ketone [0094]), and a urethane acrylate [Table5; Ex54]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add 0.7 wt.% of a free radical photoinitiator, as taught by Kirino, to the claims of the patent, and would have been motivated to do so in order to enhance the activity of the composition to light, as suggested by Kirino [0072]. The Examiner makes note that the instant application is directed to a composition “comprising…”. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., > Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“like the term comprising,’ the terms containing’ and mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003).
This is a provisional nonstatutory double patenting rejection.
Terminal Disclaimer
The terminal disclaimer filed on 23 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,338, 342 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 23 December 2025 have been fully considered but they are not persuasive.
Applicants argue the application as filed describes a 1K liquid composition based on epoxy resins that provide for effective utility in a dual cure system; the instant invention demonstrates 1K compositions including 10 wt% of an organoboron compound that achieved cure under only 1 second of UV exposure at an intensity of 100 mw/cm2. The Examiner makes note that the claims of the instant invention is directed to a composition, not to a method of curing, thus applicant’s arguments are moot with respect to the claimed invention.
Applicant’s arguments directed to alleged unexpected results is not persuasive. The Examples disclosed in the instant specification are not commensurate in scope with the claimed invention. Specifically, the Examples of the specification only show results for 10 wt% of the organoboron compound, while the claims require a larger range of 5 to 25 wt.%. Furthermore, the alleged unexpected results must occur over all ranges and therefore applicants must show a broad range of examples. It is unclear whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
As set forth in the above rejection, Kirino renders obvious the basic claimed ranges, as required by the instant claim language. Zillessen is merely relied upon for rendering obvious functional equivalence of certain acrylate monomers.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767