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
Election/Restrictions
Applicant's election with traverse of Group 1, claims 1-19 and 23-24 in the reply filed on 01/06/2026 is acknowledged. The traversal is on the ground that the examiner has not shown that it would be a “serious burden” to perform a complete search and examination on all the claims. This is not found persuasive because the composition and the process of making the composition belong in two statutory categories, the restriction between these two distinct inventions is proper even though these inventions are related. Therefore, the requirement is still deemed proper and is therefore made FINAL. The Claims 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-19 and 23-24 are currently under examination on the merits.
Claim Objections
Claims 3 and 5 are objected to because “select from the group comprising … and…” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
It is suggested to delete “(i) and (ii) in the claims.
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 13 is 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 pre-AIA the applicant regards as the invention.
Claim 13 is rejected as being vague and indefinite when it recites “for example” because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In addition, it is not clear what is the base for the percentage (0.5%) of OH number.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4, 7-19 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al (US 2020/0231736, ‘736 hereafter) in view of Sweeney et al (GB 2593752, ‘752 hereafter).
Regarding claims 1-4, 7-13 and 17, ‘736 discloses a curable composition comprising a curable cyanoacrylate component being an ethyl cyanoacrylate, butyl cyanoacrylate, or β-methoxy cyanoacrylate, which is a liquid curable cyanoacrylate ([0009]-[0019]); and at least one thermoplastic polyurethane (TPU) component having a preferred mass average molar mass Mw from 10,000 to 150,000 overlapping presently claimed range, which comprises polyester segment ([0009], [0018]); wherein the glass transition temperature of the TPU can preferably be -50 to -30°C ([0013]), satisfying present claims 8 and 9. ‘736 does not set forth the TPU is derived from a polyol that is formed from at least one diol or dicarboxylic acid having 6 carbon atoms in its main chain. However, in the same field of endeavor, ‘752 discloses a curable composition comprising a liquid curable component and a thermoplastic polyurethane having molecular weight of 40,000 to 100,000 ([0020]) in a content range of 20 to 75 wt%, wherein the TPU contains a polyol formed from at least one diol or dicarboxylic acid having 6 carbon atoms in its main chain (Pearlbond 106 ([0075], Examples, table 1), to render the curable composition having sufficient adhesive performance and elastomeric properties being applicable to a substrate to be bonded ([0024]). In light of these teaching, one of ordinary skill in the art would have been motivated to use the TPU as taught by ‘752, to modify the curable composition of ‘736, in order to render a curable composition having desired adhesion performance and application properties. ‘752 discloses that the composition has two TPUs and one of the TPUs is Pearlbond 106 ([0075], Examples, table 1), which is identical to the TPU used in the present application, thus includes all the technical features as recited in the present claims 1, 8-13 and 17. ‘752 also discloses that the liquid curable component has a preferred content range of 5 to 20 wt% in the composition to render the composition having sufficient adhesion and applicability on a desired substrate, satisfying the present claim 4.
Regarding claims 14-16, modified ‘736 teaches all the limitations of claim 1, ‘736 also discloses that the composition also contains a stabilizer being boron trifluoride (BF3) or sulfur dioxide (SO2), wherein the content of the stabilizer is preferably of 5 to 50 ppm of cyanoacrylate ([0017], [0036]).
Regarding claims 18-19 and 23-24, modified ‘736 teaches all the limitations of claim 1, ‘736 also discloses a curable composition being applied in tape form and a cured form between tow substrate ([0060]-[0064]).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Barnes et al (US 2020/0231736, ‘736 hereafter) in view of Sweeney et al (GB 2593752, ‘752 hereafter) as applied to claim 1 above, further in view of Ikuno et al (JPS53106734, of record, ‘734 hereafter).
Regarding claims 5-6, modified ‘736 teaches all the limitations of claim 1, but does not disclose the curable composition further including a solvent. However, in the same field of endeavor, ‘734 discloses a curable composition comprising a cyanoacrylate and a polyester based polyurethane, wherein a solvent is used to dissolve polyurethane to prevent whitening during the application of the composition on to a substrate ([0002]), wherein the lower aliphatic ester such as methyl acetate and ethyl acetate can be used to render the composition having good stability ([0002], Table 1). In light of these teachings, one of ordinary skill in the art would have been motivated to use the solvent as taught by 734, to modify the curable composition of ‘736, in order to render a curable composition having better stability.
Claims 1-11, 14-19 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ikuno et al (JPS53106734, of record, ‘734 hereafter) in view of Barnes et al (US 2020/0231736, ‘736 hereafter).
Regarding claims 1-7, 10-11 and 17, ‘734 discloses a curable composition comprising a curable cyanoacrylate component being an ethyl cyanoacrylate, which is a liquid curable cyanoacrylate ([0002]); one polyester-based polyurethane with polyester formed from adipic acid (C6 dicarboxylic acid) and a diol ([0002]) reading upon thermoplastic polyurethane (TPU), and a solvent preferably being a lower aliphatic ester ethyl acetate ([0002], table 1); wherein the content of cyanoacrylate can be 33.3 wt% (Table 1, Example 4, 100 parts cyanoacrylate with 200 parts polyurethane, 100/200=0.333) and the content of polyurethane can be 66.7 wt% (Table 1, Example 4, 200/300=0.667), satisfying present claims 1, 4 and 7. ‘734 does not expressly set forth the molecular weight of polyurethane, however, in the same field of endeavor, ‘736 discloses a curable composition comprising a curable cyanoacrylate component being an ethyl cyanoacrylate, butyl cyanoacrylate, or β-methoxy cyanoacrylate, which is a liquid curable cyanoacrylate ([0009]-[0019]); and at least one polyester-based thermoplastic polyurethane (TPU) component having a preferred mass average molar mass Mw from 10,000 to 150,000 overlap presently claimed range, which has sufficient solubility with curable cyanoacrylate monomers ([0009]) to render the composition having desired adhesion and application properties ([0066]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the TPU as taught by ‘736, to modify the curable composition of ‘734, to take the advantage of the TPU having good solubility with cyanoacrylate monomers and thus render the curable composition having desired properties. It is noted that the TPU as taught by the prior also reads upon two of the TPU having identical technical features as in claim 17.
Regarding claims 8 and 9, modified ‘734 teaches all the limitations of claim 1, ‘736 also discloses that the glass transition temperature of the TPU can preferably be in a range of -5°C to -30°C ([0013]).
Regarding claims 14-16, modified ‘734 teaches all the limitations of claim 1, ‘736 also discloses that the composition contains a stabilizer being boron trifluoride (BF3) or sulfur dioxide (SO2), wherein the content of the stabilizer is preferably of 5 to 50 ppm of cyanoacrylate ([0017], [0036]).
Regarding claims 18-19 and 23-24, modified ‘734 teaches all the limitations of claim 1, ‘736 also discloses a curable composition being applied in tape form and a cured form between tow substrate ([0060]-[0064]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782