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 .
Information Disclosure Statement
The information disclosure statement filed October 7, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed.
A copy of the non-patent literature “MANUS-BOND FLEX-WELD product informationhttps://www.manus.net/products/epoxy-hybrid/flex-weld-15/” has not been provided; as such, that reference has not been considered.
Claim Objections
Claims 1-5, 7, 19, and 26-28 are objected to because of the following informalities:
In claim 1, line 2, “Part” should read “part.”
In claim 1, line 5, “Part” should read “part.”
In claim 1, line 8, “Part A” should read “part A.”
In claim 1, line 8, “Part B” should read “part B.”
In claim 1, line 9, “Part A” should read “part A.”
In claim 1, line 9, “Part B” should read “part B.”
In claim 1, line 11, “Part A” should read “part A.”
In claim 1, line 12, “Part B” should read “part B.”
In claim 2, line 2, “Part” should read “part.”
In claim 3, line 2, “Part” should read “part.”
In claim 4, line 2, “Part” should read “part.”
In claim 7, line 3, “Mw” should be deleted.
In claim 19, line 1, “Part” should read “part.”
In claim 26, line 1, “Part” should read “part.”
In claim 26, line 3, “Part” should read “part.”
In claim 27, line 2, “Part A” should read “part A.”
In claim 27, line 2, “Part B” should read “part B.”
In claim 28, line 2, “Part” should read “part.”
In claim 28, line 4, “comprises” should read “comprising.”
In claim 28, line 7, “Part” should read “part.”
In claim 28, line 10, “Part A” should read “part A.”
In claim 28, line 10, “Part B” should read “part B.”
In claim 28, line 11, “Part A” should read “part A.”
In claim 28, line 11, “Part B” should read “part B.”
In claim 28, line 13, “Part” should read “part.”
In claim 28, line 14, “Part” should read “part.”
Appropriate correction is required.
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 4, 14, 16, 18, and 21 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.
Claim 4, lines 4-5, recites “about 10 to about 50 percent by weight.” It is unclear whether the weight percentage is based on the total weight of part A or the total weight of the composition. For the purpose of further examination, it is taken to be based on the total weight of part A.
Claim 14, lines 2-3, recites “about 0.01 percent to about 10 percent by weight.” It is unclear whether the weight percentage is based on the total weight of the part that the oxidant is contained in or the total weight of the composition. For the purpose of further examination, it is taken to be based on the total weight of the part that the oxidant is contained in.
Claim 16 recites the limitation "the nitrogen containing component" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, it is taken to be dependent on claim 15.
Claim 16, lines 2-3, recites “about 0.01 percent to about 10 percent by weight.” It is unclear whether the weight percentage is based on the total weight of the part that the nitrogen containing component is contained in or the total weight of the composition. For the purpose of further examination, it is taken to be based on the total weight of the part that the nitrogen containing component is contained in.
Claim 18, lines 2-3, recites “about 0.005 percent by weight to about 0.5 percent by weight.” It is unclear whether the weight percentage is based on the total weight of the part that the transition metal containing compound is contained in or the total weight of the composition. For the purpose of further examination, it is taken to be based on the total weight of the part that the transition metal containing compound is contained in.
Claim 21, line 3, recites “30 percent by weight to 95 percent by weight.” It is unclear whether the weight percentage is based on the total weight of part B or the total weight of the composition. For the purpose of further examination, it is taken to be based on the total weight of part B.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8-19, 22, 24-25, and 27 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by David (US 2021/0332266 A1).
Regarding Claims 1, 11-13, and 15: David teaches a two-part adhesive (para. 0004), wherein one part comprises a (meth)acrylate-functionalized component (para. 0052), a block copolymer component (para. 0112), and a nitrogen-containing reducing agent (para. 0122-0123, tertiary amine with electron donor group), and the second part comprises an alkoxysilane-functionalized component (para. 0207) and an oxidant comprising a peroxide or perbenzoate such as benzoyl peroxide, cumene hydroperoxide, or t-butylperbenzoate (para. 0209).
Regarding Claims 2-3: David teaches a mono-functional (meth)acrylate component (para. 0037, formula (I) and (II)) and an additional (meth)acrylate component such as isobornyl methacrylate, ethylhexyl methacrylate, or lauryl methacrylate (para. 0048).
Regarding Claim 4: David teaches a mono-functional (meth)acrylate contained at 25-35% (para. 0045).
Regarding Claims 5-6: David teaches core-shell rubbers (para. 0093), (meth)acrylate-terminated liquid polybutadiene (para. 0118), and styrene-containing block copolymers such as SIS and SBS (para. 0112).
Regarding Claims 8-10: David teaches a reactive acid component such as 2-hydroxyethyl methacrylate phosphate ester (para. 0154).
Regarding Claim 14: David teaches that the oxidant is present at 0.5-50 wt%, and may be adjusted to approximately 10% if a longer cure time is desired (para. 0209).
Regarding Claim 16: David teaches the nitrogen-containing reducing agent is present at 0.1-2 wt% (para. 0151).
Regarding Claims 17-18: Because it is not positively claimed that the reducing agent must be the transition metal containing compound, the limitations of claims 17 and 18 are considered optional.
Regarding Claim 19: David teaches a reactive acid component (2-hydroxyethyl methacrylate phosphate ester) in the part of the adhesive corresponding to part A of the instant application (para. 0154).
Regarding Claim 22: Not disclosed is the composition curing to 90% of its ultimate within 24 hours of mixing the two parts. However, David teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be 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.
Regarding Claims 24-25: David teaches an alkyl (meth)acrylate such as hydroxypropyl methacrylate (para. 0077).
Regarding Claim 27: David teaches a filler component (para. 0169).
Claim 7 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by David (US 2021/0332266 A1), as evidenced by Sablong et al (US 2015/0084100 A1).
David teaches the limitations of claim 5, as set forth above. David is silent to the molecular weight of the styrene-containing block copolymer. However, David teaches Kraton D1114 as an example of a styrene-containing block copolymer (para. 0105), which Sablong teaches has a molecular weight of 160,000 (para. 0093).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21, 23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over David (US 2021/0332266 A1).
Regarding Claim 21: David teaches 1-30 wt% of the alkoxysilane-functionalized component (para. 0207). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the alkoxysilane-functionalized component and would have been motivated to do so since David teaches that it enables the manufacture of a composition with a low amount of plasticizing agent (para. 0208).
Regarding Claim 23: David teaches a tensile strength on an aluminum substrate of 3.2-17.4 MPa (para. 0252, 0266) and an elongation at break of at least 100% (para. 0019), with a working example having an elongation at break of 220% (p.11, Table 1, Example 5).
Not disclosed is the linear shrinkage or Shore A hardness of the cured adhesive. However, David teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be 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.
Regarding Claim 26: David teaches a dual-compartment cartridge, wherein each compartment houses one component of the two-component adhesive (para. 0213-0215). David does not teach that the device is a syringe; however, syringes are a well-known dispensing method for adhesives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the dual-component cartridge of David into a syringe because it is a common and easy dispensing method.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over David (US 2021/0332266 A1) in view of Garnier et al (US 2022/0049143 A1).
David teaches the limitations of claim 1, as set forth. However, David is silent to the alkoxysilane-functionalized component being a polymer.
Garnier teaches a multicomponent adhesive (para. 0186-0187), wherein one component comprises an alkoxysilane-functionalized polymer, wherein the alkoxysilane groups are bonded to the polymer through ether or carbonyl groups (para. 0032), and the second component comprises an acrylate-functionalized component (para. 0292, (meth)acrylate silanes). Garnier and David are analogous art because they are directed toward the same field of endeavor, namely two-component adhesive.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the alkoxysilane-functionalized polymer of Garnier to the composition taught by David because Garnier teaches that adhesives made from curing said polymer have very good adhesive power and tack (para. 0406).
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over David (US 2021/0332266 A1) in view of Xie (US 2013/0267670 A1).
Regarding Claim 28: David teaches a two-part adhesive (para. 0004), wherein one part comprises a (meth)acrylate-functionalized component (para. 0052) comprising a monofunctional (meth)acrylate component (para. 0037), a block copolymer component (para. 0112), and a reducing agent (para. 0122-0123, tertiary amine with electron donor group), and the second part comprises an alkoxysilane-functionalized component (para. 0207) and an oxidant/oxidizing agent (para. 0209).
However, David is silent to the (meth)acrylate-functionalized urethane.
Xie teaches a two-part acrylic adhesive (abstract) wherein the inclusion of urethane-acrylate oligomers impart flexibility and toughness to the cured adhesive (para. 0035). Xie and David are analogous art because they are directed toward the same field of endeavor, namely two-part acrylic adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a (meth)acrylate-functionalized urethane component to the adhesive composition taught by David in order to improve flexibility and toughness of the cured adhesive.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al (US 10308846 B2) teaches an adhesive comprising (meth)acrylate components and a silane-terminated oligomer.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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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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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767