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 .
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.
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Claims 1-2, 6, and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, and 12 of co-pending Application No. 18/238798. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claim 1, co-pending ‘798 claims a photo-curable adhesive or sealant composition comprising, based on the weight of the composition:
from 1 to 10 wt.% of a) at least one oxetane compound according to Formula (1) below:
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148
378
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wherein: R1 and R2 are H, C1-C6 alkyl, C6-C18 aryl or C7-C18 aralkyl; each R3 is independently a C1-C12 alkylene group, C6-C18 arylene group, C2-C12 alkenylene group or a poly(C1-C6 alkyleneoxy) group; and, n is an integer of from 1 to 3;
from 5 to 20 wt.% of b) at least one epoxide compound, wherein part b) is characterized in that at least 50 wt.% of the total weight of epoxide compounds is constituted by b1) at least one cycloaliphatic epoxide;
from 0.1 to 5 wt.% of c) at least one ionic photoacid generator;
from 0 to 10 wt.% of d) at least one free radical photoinitiator;
and, from 50 to 90 wt.% of f) particulate filler (Claims 1 and 9).
It would have been obvious to one of ordinary skill in the art that the specific composition of co-pending ‘798 would fall within the broad composition of the present claims.
Regarding Claim 2, co-pending ‘798 claims the composition according to claim 1 comprising, based on the weight of the composition:
from 5 to 10 wt.% of a) said at least one oxetane compound according to Formula (1);
from 5 to 15 wt.% of b) said at least one epoxide compound;
from 0.1 to 5 wt.%, of c) said at least one ionic photoacid generator (PAG);
from 0.1 to 10 wt.% of d) said at least one free radical photoinitiator;
and, from 50 to 80 wt.% of f) said particulate filler (Claim 2).
Regarding Claim 6, co-pending ‘798 claims the composition according to claim 1, wherein part a) comprises or consists of an oxetane of Formula (IA):
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142
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wherein: R1 and R2 are H or C1-C6 alkyl (Claims 3-5).
Regarding Claim 10, co-pending ‘798 claims the composition according to claim 1, wherein b1) said at least one cycloaliphatic epoxide compound constitutes at least 65 wt.% of said part b) (Claim 6).
Regarding Claim 11, co-pending ‘798 claims the composition according to claim 1, wherein said cycloaliphatic epoxide is selected from the group consisting of bis(3,4-epoxycyclohexylmethyl) adipate, bis(3,4- epoxy-6-methylcyclohexylmethyl) adipate, bis(2,3-epoxycyclopentyl) ether, 3,4- epoxycyclohexylmethyl-3',4'-epoxycyclohexanecarboxylate and mixtures thereof (Claim 7).
Regarding Claim 12, co-pending ‘798 claims the composition according to claim 1, wherein part b) further comprises at least one glycidoxy alkyl alkoxy silane having the formula:
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76
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wherein: each R is independently selected from methyl or ethyl; and n is from 1-10 (Claim 8).
Regarding Claim 13, co-pending ‘798 claims the composition according to claim 1, wherein part f) comprises amorphous silica particles having an average particle diameter (d50) of from 5 to 100 microns as measured by laser diffraction (Claim 10).
Regarding Claim 14, co-pending ‘798 claims a bonded structure comprising: a first material layer; and, a second material layer; wherein a cured adhesive composition as defined in claim 1 is disposed between and contacts said first and second material layers (Claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claims 1-11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dake et al. (US 2012/0259031 A1) in view of Cook et al. (US 2021/0047510 A1) and Isobe et al. (US 2020/0079972 A1).
Regarding Claims 1-11, 13, and 15-17, Dake discloses a photocurable resin composition (Abstract). The photocurable resin composition comprises up to 95% cationic polymerizable component (para 0047), such as a mixture of cycloaliphatic epoxy and oxetane (paras 0044, 0046). The cycloaliphatic epoxy may be 3,4-epoxycyclohexylmethyl-3',4-epoxycyclohexanecarboxylate (para 0045). The oxetane compound may be bis((1-ethyl(3-oxetanyl))methyl)ether (para 0043), which corresponds to the claimed oxetane of Formulas (I) and (IA).
The photocurable resin composition further comprises up to 15 wt% free radical photoinitiator (para 0059) and up to 10 wt% photoacid generating cationic photoinitiator (paras 0061, 0088). The photocurable resin composition may further comprise additives including fillers (paras 0093-0094).
Dake does not disclose the amount of filler in the photocurable resin composition. Dake discloses the photocurable resin composition used in additive fabrication (Abstract), and discloses the filler may comprise silica particles (para 0094).
Cook discloses organic resin systems for additive manufacturing (Abstract) comprising resin such as epoxy and/or oxetane (para 0020), photoinitiator, and 50-90 wt% inorganic particulate filler (para 0006) such as fumed silica particles (i.e. amorphous silica particles) (para 0025) wherein the filler particles can have D50 of from 100 nm to 8 microns (para 0023). The high filler load of the resin system allows production of articles that can be post-processed to remove the organics, leaving a high-density, fully-inorganic structure, without the previous issues of particle settling in low viscosity solution, low particle loading, and low part shrinkage and stress build up in green or cured article (para 0018).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Dake to incorporate the teachings of Cook and produce the photocurable resin composition of Dake comprising 50-90 wt% of the inorganic particulate filler of Cook (i.e. fumed silica particles having D50 of from 100 nm to 8 microns). Doing so would produce an article without the previous issues of particle settling in low viscosity solution, low particle loading, and low part shrinkage and stress build up in green or cured article.
Dake in view of Cook does not separately disclose the amounts of oxetane and cycloaliphatic epoxy.
Isobe discloses a curable composition comprising polymerizable compounds including 1-100% epoxy compound (A) (para 0072) which may consist of alicyclic epoxy resin compounds (para 0041) (i.e. may be 100% cycloaliphatic epoxide) such 3,4-epoxycyclohexylmethyl(3,4-epoxy) cyclohexanecarboxylate (paras 0054); hydroxy compound (B) (para 0074), which is preferable a compound having one oxetane ring, such as 3-ethyl-3-hydroxymethyloxetane (i.e. 3-ethyl-3-oxetanemethanol as claimed), in order to obtain cured product having high hardness, low cure shrinkage, and improved adhesion (paras 0076-0077, 0096), wherein the ratio of Epoxy compound (A) and hydroxy compound (B) is 1/99 to 99/1 (para 0102); and up to 90% third polymerizable compound (para 0119) such as an oxetane compound (para 0104) according to formula (7-1) (i.e. bis((1-ethyl(3-oxetanyl))methyl)ether) or formula (7-2) (i.e. 1,4-bis[(3-ethyl-3- oxetanylmethoxy)methyl]benzene) (para 0117). Isobe discloses the amount of epoxy compound (A) in the polymerizable compounds produces desirable hardness, heat resistance, sliding properties, and abrasion resistance (para 0102), and the use of the oxetane third polymerizable compound produces curable composition having a fast curability and a cured product having a high hardness (para 0117). The curable composition further comprises a curing agent such as cationic photoacid generator (para 0188).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Dake in view of Cook to incorporate the teachings of Isobe and use the polymerizable compound mixture of Isobe as the cationic polymerizable component of Dake. Doing so would produce desirable hardness, heat resistance, sliding properties, abrasion resistance, low cure shrinkage, improved adhesion, and fast curability.
As shown above, Dake in view of Cook and Isobe discloses the photocurable resin composition comprises up to 95% cationic polymerizable component, up to 15 wt% free radical photoinitiator, up to 10 wt% photoacid generating cationic photoinitiator, and 50-90% inorganic particulate filler. Therefore the photocurable resin composition comprises up to 50% cationic polymerizable component (100% total composition – 50% filler – up to 15 wt% free radical photoinitiator – up to 10 wt% photoacid generating cationic photoinitiator).
As shown above, Dake in view of Cook and Isobe discloses the cationic polymerizable component comprises 1-100% epoxy compound (A), a ratio of (A)/(B) of 1/99 to 99/1, and up to 90% oxetane third polymerizable compound. Therefore, the photocurable resin composition comprises up to 49.5% (50*0.99) epoxy compound (A), up to 49.5% hydroxy compound (B), and up to 45% (50*0.9) oxetane third polymerizable compound.
While Dake in view of Cook and Isobe does not disclose the photocurable resin composition is an adhesive or sealant, since Dake in view of Cook and Isobe discloses photocurable resin composition as presently claimed, including types and amounts of compounds as claimed, the photocurable resin composition of Dake in view of Cook and Isobe would necessarily function as an adhesive or sealant.
Regarding Claim 14, Dake in view of Cook and Isobe disclose all the limitations of the present invention according to Claim 1 above. Dake further discloses curing successive layers of the photocurable resin composition to form a three-dimensional article having a plurality of layers (para 0024) (i.e. including a first and second material layer, with a layer disposed between and in contact with the first and second material layers, wherein each layer comprises a cured product of the photocurable resin composition).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dake in view of Cook and Isobe as applied to claim 1 above, and further in view of Jung et al. (US 2019/0382591 A1).
Regarding Claim 12, Dake in view of Cook and Isobe discloses all the limitations of the present invention according to Claim 1 above. Dake in view of Cook and Isobe does not disclose the epoxy-functional silane as claimed.
Jung discloses a coating composition comprising cycloaliphatic epoxy (para 0137) and discloses use of silanes improves drying properties at low temperature, flexibility, adhesion to substrates, and anti-corrosive performance (para 0147), the silane preferably containing epoxy groups (para 0147), such as Silquest A-187 (para 0164).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Dake in view of Cook and Isobe to incorporate the teachings of Jung, and produce the curable composition further comprising Silquest A-187. Doing so would improve drying properties at low temperature, flexibility, adhesion to substrates, and anti-corrosive performance.
According to the present specification, Silquest A-187 is the epoxy-functional silane used in the present examples (para 00122).
Response to Arguments
In light of applicant’s amendments filed 12/16/2025, the Claim Objections and 35 USC 112(a) rejection of record are withdrawn.
Applicant’s arguments, see Remarks, filed 12/16/2025, with respect to Suzuki have been fully considered and are persuasive. Specifically, that Suzuki teaches filler amount of 5-40% in view of improving surface hardness (para 0161), and therefore it would not be obvious to amend to use the amount of filler as claimed. The 35 USC 103 rejections of record over Suzuki in view of.
New grounds of rejection are set forth above.
Conclusion
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787