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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 July 2025 has been entered.
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, 5-6, 8, 10, 12-22 and 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 21-22 and 31, there is no teaching in the original disclosure or claims of “at least one” of the recited cyanoacrylates. For example, see claim 1, line 3. Accordingly, Applicant was not in possession of this new limitation at the time the application was filed.
Claim Rejections - 35 USC § 103
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, 5-6, 8, 10, 12-13, 15-21 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Tully (WO 2018/202384 A1).
Regarding claim 1, Tully teaches a cyanoacrylate composition comprising allyl cyanoacrylate and ethyl-2-cyanoacrylate (paragraph 36; Table 2, Formulation J), a fluorobenzonitrile in an amount of about 0.1 to about 3 wt% (paragraphs 24 and 29), a hydrogenated aromatic anhydride in an amount of 0.2 to 1.2 wt% (paragraphs 25 and 31), and a toughening agent present in an amount of about 6 wt% or about 8 wt% (paragraphs 42-46 and 51). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. While Tully teaches hexanediol diacrylate, Tully clearly teaches that hexanediol dimethacrylate or a range of other suitable compounds may be used instead, thus clearly teaching embodiments in which the cyanoacrylate composition excludes hexanediol diacrylate (paragraphs 53-57). Given the similar compositions detailed above and below, and the lap shear strengths reported in Table 2 of Tully for Formulation J (6 Weeks is about 1000 hours, N/mm2 and MPa are equivalent units), the recited properties on steel substrates appear to naturally flow from compositions taught by Tully, i.e. the claimed initial bond strength, bond strength after about 1000 hours at about 135°C and hot strength at about 135°C.
Regarding claim 5, Tully teaches a 41.5:39.6 wt% ratio (Table 2, Formulation J), which is about 1.05:1. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claim 6, Tully teaches pentafluorobenzonitrile (paragraph 29).
Regarding claim 8, Tully teaches this limitation (paragraph 31).
Regarding claim 10, Tully teaches the anhydride may be as low as 0.05 wt% (paragraph 25) and the benzonitrile component may be 0.2 to 1.2 wt% (paragraph 24), which includes values about an order of magnitude greater than the anhydride component. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Regarding claims 12-13, Tully teaches the addition of silica, which satisfies these claims (paragraph 81).
Regarding claim 15, Tully teaches ethylene vinyl acetate copolymer as the toughening component (paragraphs 42-46).
Regarding claim 16, Tully teaches the accelerator component which may be calixarene, oxacalixarene, silacrown, cyclodextrin, crown ether, poly(ethyleneglycol) di(meth)acrylate, ethoxylated hydric compound, and combinations thereof (paragraph 67).
Regarding claims 17-19, these claims further limit alternatives of claim 16 which are not required for the above noted alternatives oxacalixarene, silacrown, cyclodextrin, and ethoxylated hydric compound. Alternatively, Tully clearly satisfies these limitations (paragraphs 70-71 and 75).
Regarding claim 20, Tully teaches shock resistance additives, thixotropy conferring additives, thickeners, and thermal degradation resistance enhancers (paragraphs 65-66 and 81).
Regarding claim 21, Tully teaches a cyanoacrylate composition comprising allyl cyanoacrylate and ethyl-2-cyanoacrylate present in a ratio of about 1.05:1 (paragraph 36; Table 2, Formulation J), a fluorobenzonitrile in an amount of about 0.2 to 1.2 wt% (paragraphs 24 and 29), a hydrogenated aromatic anhydride in an amount of about 0.05 to 5 wt% or about 0.1 to 3 wt% (paragraphs 25 and 31), and an ethylene vinyl acetate copolymer as a toughening agent in an amount of about 3 to 12 wt% and with about 90 wt% vinyl acetate content (paragraphs 22, 42-46). It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Claim 31 is satisfied for the reasons provided above.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tully as applied to claims 1, 5-6, 8, 10, 12-13, 15-21 and 31 above, or alternatively, is rejected under 35 U.S.C. 103 as being unpatentable over Tully as applied to claims 1, 5-6, 8, 10, 12-13, 15-21 and 31 above, which incorporates McDonnell (US 5530037 A) by reference.
Regarding claim 14, Tully is applied as above in the rejection of claims 1, 5-6, 8, 10, 12-13, 15-21 and 31. One having ordinary skill in the art would have understood paragraph 79 of Tully to teach a stabilizing amount of an acidic stabilizer, satisfied by an anionic stabilizer, and a free radical inhibitor, satisfied by a free radical stabilizer. Alternatively, Tully incorporates McDonnell by reference for suitable stabilizers. McDonnell teaches free radical inhibitors such as BHA, BHT, methyl hydroquinone, catechol and others (column 5, line 35 to column 6, line 5) and acidic stabilizers such as sulfur dioxide and others (column 6, lines 6-42). Thus it is clear that with the incorporation by reference of McDonnell that Tully satisfies the additional limitation of claim 14.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tully as applied to claims 1, 5-6, 8, 10, 12-13, 15-21 and 31 above, and further in view of Hedderman (US 2014/0124137 A1).
Regarding claim 14, Tully recites a stabilizer, but does not recite an acidic stabilizer or free radical inhibitor. However these limitations are suggested by Hedderman for providing desired stabilization (claim 6). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Tully because one having ordinary skill in the art would have been motivated to provide desired stabilization using known suitable components, as evidenced by Hedderman.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hedderman in view of Tully.
Regarding claim 22, Hedderman teaches a cyanoacrylate composition consisting of a combination of allyl cyanoacrylate and ethyl-2-cyanoacrylate (paragraph 24), a fluorobenzonitrile (paragraph 28), and a hydrogenated aromatic anhydride (paragraph 26). Hedderman does not require any additional components excluded by claim 22, and thus satisfies the claimed “consisting of” limitation in line 1.
Hedderman differs from claim 22 in that:
i. Hedderman does not teach the claimed ethylene vinyl acetate copolymer (EVA) with about 90% vinyl acetate content.
(i) In a similar cyanoacrylate composition, Tully suggests including the claimed EVA copolymer with about 90 wt% vinyl acetate content to provide a toughened composition with improved performance at reduced cost (paragraphs 42-50). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional component in the composition of Hedderman because one having ordinary skill in the art would have been motivated to provide a toughened composition, improved performance and/or cost benefits in accordance with the teachings of Tully.
Response to Arguments
Applicant's arguments filed 06 August 2025 have been fully considered but they are not persuasive.
Applicant argues Tully does not exclude hexane diol diacrylate. While Tully teaches hexanediol diacrylate, Tully clearly teaches that hexanediol dimethacrylate or a range of other suitable compounds may be used instead, thus clearly teaching embodiments in which the cyanoacrylate composition excludes hexanediol diacrylate (paragraphs 53-57).
Applicant argues unexpected results in the disclosed examples. The data does show some improved properties in Examples 5-6, as compared to Examples 1-4. However, Tully suggests providing each of these components, as does Hedderman in view of Tully. Moreover, the examples use a specific cyanoacrylate, fluorobenzonitrile, anhydride and copolymer combination not required by the claims. Accordingly, the unexpected results are not commensurate in scope with the claims. The data is also not extensive enough to show unexpected results with respect to particular ranges of the components. In particular, such requires a sufficient number of data points both inside and outside each range, and each variable needs to be individually controlled, i.e. comparisons can only be made if one variable is being changed. As seen in Table I, while the amount of copolymer is changed in examples 3-4 as compared to examples 5-6, the amount of nitrile is also changed. Accordingly, the evidence of unexpected results does not outweigh strong evidence for providing each of these components in a cyanoacrylate composition. Additionally, as detailed in the grounds of rejection, Tully suggests values within each of the claimed ranges of fluorobenzonitrile content, hydrogenated aromatic anhydride content, toughening component content, and weight ratio of the allyl cyanoacrylate and another cyanoacrylate. Since there is insufficient evidence of unexpected results with respect to specific ranges of these components, the prima facie case of obviousness for satisfying these ranges has not been overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip C. Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745