CTNF 18/246,851 CTNF 84813 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoenberg et al (US 4,125,494) in view of Brasen et al (US 4,255,308) Regarding claim 1 , Schoenberg teaches a thickener (col. 5, lines 55-62) for a cyanoacrylate based adhesive (Abstract) that comprises a poly(methyl methacrylate) (col. 5, lines 60-65), however, it fails to teach that the poly(methyl methacrylate) has from 0.1 to 5% by mass of an alkyl(meth)acrylate monomer unit having an alkyl group with a carbon number of 4 or more. Brasen teaches a methyl methacrylate polymer (Abstract, polymer A) which can incorporate up to 15% by weight of alkyl acrylate or methyl acrylates having 2-18 carbon atoms (col. 3, lines 55-65). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the poly(methyl methacrylate) of Schoenberg incorporate the alkyl acrylate or methyl acrylates as taught by Brasen. One would have been motivated to do so in order to receive the expected benefit of being able to adjust the glass transition temperature of the thickener (Brasen, col. 3, lines 55-65). Regarding claim 6 , Schoenberg teaches an adhesive comprising the thickener for cyanoacrylate-based adhesives according to claim 1 and an alkyl cyanoacrylate (Schoenberg, col. 3, lines 1-10) . 07-21-aia AIA Claim (s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoenberg et al (US 4,125,494) in view of Brasen et al (US 4,255,308) and Goto (JP 2012-201844, please see machine translation for mapping) . The discussion regarding Schoenberg and Brasen in paragraph 3 above is incorporated here by reference. Regarding claim 2 , Schoenberg fails to teach that the MMA volatilization is 10 ppm or less when 5 mg of the methacrylic resin is heated at 60 C for 10 minutes. Goto teaches methacrylate polymers which have less than 20 ppm of unreacted monomer (page 15, 4 th paragraph). While the measurement techniques in Goto is not the same as presently recited, given that the Goto measurement technique is gas chromatography (page 13), the amount of unreacted monomer measured would be the same as if it were measured via the recited method. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the MMA compound of Schoenberg have the unreacted monomer as taught by Goto. One would be motivated to do so in order to receive the expected benefit of having no odor (page 15, Example 1). Regarding claim 3 , modified Schoenberg teaches that the particle size of the methacrylate polymer is 8.2 microns (Goto, page 13, production example 1) and therefore, given the standard distribution of particle sizes, the number of particles with a particle diameter of 710 microns or more approaches zero probability. Regarding claim 4 , modified Schoenberg teaches that the pH of the thickener dispersed in water can be pH 4 or pH 7 (Goto, page 15) . 07-21-aia AIA Claim (s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoenberg et al (US 4,125,494) in view of Brasen et al (US 4,255,308) and Saito et al (US 2002/0156196) . The discussion regarding Schoenberg and Brasen in paragraph 3 above is incorporated here by reference. Regarding claim 5 , Schoenberg fails to teach the molecular weight distribution for the thickener. Saito teaches a method for making methyl methacrylate polymers with a narrow molecular weight distribution (Abstract) of not more than 1.5 ([0166]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the methyl methacrylate polymer of Schoenberg have the molecular weight distribution as taught by Saito. One would have been motivated to do so in order to receive the expected benefit of using a molecular weight distribution for an adhesive with high industrial value (Saito, [0169]-[0170]) . 07-21-aia AIA Claim (s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schoenberg et al (US 4,125,494) in view of Brasen et al (US 4,255,308) and Yosida (US 4,764,545) . The discussion regarding Schoenberg and Brasen in paragraph 3 above is incorporated here by reference. Regarding claim 7 , Schoenberg fails to teach the viscosity of the adhesive. Yoshida teaches a cyanoacrylate compound which is used in adhesive applications (col. 1, lines 1-15). Yoshida teaches that the visocisty of the adhesive ranges from 10 to 5000 cps ( 0.001 to 5 Pas) (col. 5, lines 25-35). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the adhesive of Schoenberg have the viscosity as taught by Yoshida. One would have been motivated to do so in order to receive the expected benefit of using a viscosity appropriate for adhesive applications . Double Patenting 08-33 AIA 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. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-35 Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/574,302 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a thickener for a methacrylic resin with the same monomer makeup . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. DORIS L. LEE Primary Examiner Art Unit 1764 /DORIS L LEE/Primary Examiner, Art Unit 1764 Application/Control Number: 18/246,851 Page 2 Art Unit: 1764 Application/Control Number: 18/246,851 Page 3 Art Unit: 1764 Application/Control Number: 18/246,851 Page 4 Art Unit: 1764 Application/Control Number: 18/246,851 Page 5 Art Unit: 1764 Application/Control Number: 18/246,851 Page 6 Art Unit: 1764 Application/Control Number: 18/246,851 Page 7 Art Unit: 1764