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 .
DETAILED ACTION
Note new Examiner due to a reassignment after applicant’s election.
Applicant’s election without traverse of Group I (i.e., claims 1-14) in the reply filed on November 18, 2025 is acknowledged.
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.
Claim 2, 7, 9, 10 and 12 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.
The recited “said Part B acrylate monomer, ---or a combination thereof” of claim 2 would lack an antecedent basis in claim 1.
The recited “wherein said polyvinyl acetal resin” of claim 7 is indefinite since it is incomplete.
The recited “molecular weight ranging from 10,000 to 120,000” of claim 9 is indefinite absent further limitation such weight average molecular weight (Mw) or number average molecular weight (Mn) since the Mw is inherently the same or larger than the Mn for polymers. Machine translated CN 103971784 B (Aug. 17, 2016) discussed below clearly teaches polyvinyl butyral having a weight average molecular weight, not just a molecular weight.
The recited “said polyacetal resin a glass transition temperature” of claim 10 does not make sense and ti should be “said polyacetal resin has a glass transition temperature”.
The recited “said reactive methacrylate phosphate monomer or oligomer” of claim 12 lacks an antecedent basis in claim 1
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, 7, 11, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chitnavis et al. (US 2014/0231009 A1) in view of Machine translated JP 5059261 B2 (Oct. 24, 2012).
Chitnavis et al. teach a two-part adhesive formulation comprising an adhesive part A and an activator part B in abstract. Chitnavis et al. teach that the part A comprises at least one curable acrylic monomer, an impact modifier and an adhesion promoter in the abstract. Chitnavis et al. teach that the part B comprises an impact modifier and an adhesion promoter in abstract.
Chitnavis et al. teach that the adhesive part A includes acrylate monomer, methacrylate monomer, or a combination thereof in [0012].
Chitnavis et al. teach that the adhesive part B includes an accelerator (i.e., the recited induction agent of claim 1).
The instant invention further recites polyvinyl acetal resin having greater than 60 percent polyvinyl butyral (PVB) over Chitnavis et al.
Machine translated JP teaches an acrylic adhesive composition in abstract and utilization a filler for improving fluidity in [0031] and polymeric fillers such as polyvinyl butyral powder in [0036]. The polyvinyl butyral would comprise 100% PVB absent further limitation by JP meeting the recited “greater than 60%”.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known polyvinyl butyral used with the acrylic adhesive for adjusting the viscosity and improving the flexibility of the cured product taught by JP in Chitnavis et al. since JP teaches advantages of employing the polyvinyl butyral in the acrylic adhesive composition absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding an amount of the polyvinyl butyral resin claim 1 which would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Thus, one having an ordinary skill in the art would be able to modify an amount of the polyvinyl butyral resin in order to adjust desired fluidity of the acrylic adhesive composition.
Regarding claims 2 and 13, Chitnavis et al. teach that both the adhesive part A and part B include methacrylate ester monomer in table 1A.
Regarding claim 3, Chitnavis et al. teach that both the adhesive part A and part B comprise impact modifiers in Table 1A and the impact modifiers would encompass the same impact modifiers. The court held that very limited choice (same or different impact modifiers in this case) is anticipation and thus the same impact modifiers would be at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding claim 4, Chitnavis et al. teach that both the adhesive part A and part B comprise an adhesion promoter in abstract the adhesion promoter would encompass the same adhesion promoter. The court held that very limited choice (same or different adhesion promoter in this case) is anticipation and thus the same adhesion promoter would be at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding claim 5, the court held that very limited choice is anticipation (see In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131), and there would be a few choices, the polyvinyl butyl acetal resin in the Part A, in the Part B or in both Part A and Part B. Thus, presence of the polyvinyl butyl acetal resin in both Part A and Part B would be at least obvious.
Regarding claim 7, the polyvinyl butyl acetal resin taught by JP would meet claim 7 although it is incomplete format.
Regarding claim 11, JP teaches the polyvinyl butyral powder in [0036] and a particle size of 0.1 µm to 5 mm in [0038].
Regarding claim 14, Chitnavis et al. teach a mixing ratio of 1:1 and 10:1 in the Table 1A meeting claim 14.
Claims 1-5, 7, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chitnavis et al. (US 2014/0231009 A1) in view of Machine translated JP 3934701 B2 (June 20, 2007).
Chitnavis et al. teach a two-part adhesive formulation comprising an adhesive part A and an activator part B in abstract. Chitnavis et al. teach that the part A comprises at least one curable acrylic monomer, an impact modifier and an adhesion promoter in the abstract. Chitnavis et al. teach that the part B comprises an impact modifier and an adhesion promoter in abstract.
Chitnavis et al. teach that the adhesive part A includes acrylate monomer, methacrylate monomer, or a combination thereof in [0012].
Chitnavis et al. teach that the adhesive part B includes an accelerator (i.e., the recited induction agent of claim 1). The instant invention further recites polyvinyl acetal resin having greater than 60 percent polyvinyl butyral (PVB) and a molecular weight over Chitnavis et al.
The instant invention further recites polyvinyl acetal resin having greater than 60 percent polyvinyl butyral (PVB) over Chitnavis et al.
Machine translated JP teaches an acrylic adhesive composition in abstract and utilization a resin such as polyvinyl butyral for the purpose of adjusting the viscosity and improving the flexibility of the cured product in line 2 of [0020]. The polyvinyl butyral would comprise 100% PVB absent further limitation by JP meeting the recited “greater than 60%”.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known polyvinyl butyral used with the acrylic adhesive for adjusting the viscosity and improving the flexibility of the cured product taught by JP in Chitnavis et al. since JP teaches advantages of employing the polyvinyl butyral in the acrylic adhesive composition absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding an amount of the polyvinyl butyral resin claim 1 which would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Thus, one having an ordinary skill in the art would be able to modify an amount of the polyvinyl butyral resin in order to adjust the viscosity of the acrylic adhesive composition and the flexibility of the cured product desired.
Regarding claims 2 and 13, Chitnavis et al. teach that both the adhesive part A and part B include methacrylate ester monomer in table 1A.
Regarding claim 3, Chitnavis et al. teach that both the adhesive part A and part B comprise impact modifiers in Table 1A and the impact modifiers would encompass the same impact modifiers. The court held that very limited choice (same or different impact modifiers in this case) is anticipation and thus the same impact modifiers would be at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding claim 4, Chitnavis et al. teach that both the adhesive part A and part B comprise an adhesion promoter in abstract the adhesion promoter would encompass the same adhesion promoter. The court held that very limited choice (same or different adhesion promoter in this case) is anticipation and thus the same adhesion promoter would be at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding claim 5, the court held that very limited choice is anticipation (see In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131), and there would be a few choices, the polyvinyl butyl acetal resin in the Part A, in the Part B or in both Part A and Part B. Thus, presence of the polyvinyl butyl acetal resin in both Part A and Part B would be at least obvious.
Regarding claim 7, the polyvinyl butyl acetal resin taught by JP would meet claim 7 although it is incomplete format.
Regarding claim 14, Chitnavis et al. teach a mixing ratio of 1:1 and 10:1 in the Table 1A meeting claim 14.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chitnavis et al. (US 2014/0231009 A1) in view of Machine translated JP 3934701 B2 (June 20, 2007) as applied to claims 1-5, 7, 13 and 14 above, and further in view of Machine translated CN 103971784 B (Aug. 17, 2016).
Regarding claim 9, Machine translated CN teach a slurry binder and utilization of a low molecular weight polyvinyl acetal having a weight average molecular weight of 50,000 to 150,000 in lines 11-12 of page 7 which would encompass or overlap the instant molecular weight.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known polyvinyl butyral used with the acrylic adhesive for adjusting the viscosity and improving the flexibility of the cured product taught by JP and the low average molecular weight polyvinyl butyral having a weight average molecular weight of 50,000 to 120,000 taught by CN in Chitnavis et al. and JP thereof since JP teaches advantages of employing the polyvinyl butyral absent showing otherwise.
Regarding the recited Tg of claim 10, the polyvinyl butyral having a weight average molecular weight of 50,000 to 120,000 taught by CN would be expected to have a Tg falling within scope of the claim since the molecular weight is overlapped.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of CN. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
CLAIM OBJECTION
Claims 6 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since none of the prior art recites teaches the limitations of claims 6 and 8.
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/TAE H YOON/Primary Examiner, Art Unit 1762