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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over Jialanella et al. (US 2020/0002587 A1, “Jialanella”) in view of Guichard et al. (WO 2018/219729 A1, “Guichard”).
With respect to claims 16 and 18-21, Jialanella discloses a two-component adhesive composition comprising an A-side and a B-side, where the A-side comprises a first acrylate-capped polyurethane, a second acrylate capped polyurethane, a core-shell graft copolymer, and a reducing agent, while the B-side comprises an oxidizing agent ([0008]). Given that Jialanella discloses a core-shell graft copolymer identical to that presently claimed, it would necessarily inherently function as an impact modifier.
However, Jialanella does not disclose that the A-side comprises an itaconate monomer as presently claimed.
Guichard discloses a curable adhesive composition (page 1, lines 6-7) comprising at least one reactive comonomer a) that is an itaconate (page 2, lines 10-12; page 3, lines 23-24, 29) and at least one (meth)acrylate-functionalized compound b) that is a urethane (meth)acrylate (page 2, lines 10-11, 20; page 10, lines 3-4, 10). The itaconates include dimethyl itaconate, diethyl itaconate, di-n-butyl itaconate, di-isobutyl itaconate, dicyclohexyl itaconate, bis(hexafluoroisopropyl) itaconate, diphenyl itaconate, dibenzyl itaconate, ethyl isobornyl itaconate, ethyl cyclohexyl itaconate, and combinations thereof (page 9, lines 12-15), which are identical to those of claim 20 and would inherently read on the R1 and R2 groups of claims 18-19. The itaconate monomer is present in an amount of 1-99% by weight (page 13, lines 16-17), which overlaps the presently claimed range. The reactive monomers produce a composition that exhibits faster curing and improved physical properties (page 1, line 32 - page 2, line 9).
Jialanella and Guichard are analogous inventions in the field of adhesive compositions made from urethane (meth)acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive composition of Jialanella to contain an itaconate as taught by Guichard in order to provide an adhesive composition that exhibits faster curing and improved physical properties (Guichard, page 1, lines 33-39).
With respect to claims 17 and 22, Jialanella discloses the molecular weight of the urethane acrylate is not particularly limited and can be determined by one of ordinary skill in the art for a particular application ([0017]). Jialanella further discloses the molecular weight should be high enough that the urethane block soft segments impart suitable elasticity to the adhesive, but low enough that the acrylate polymer is not so viscous that it is either difficult to process or too viscous to combine to obtain a mixture of suitable proportions and/or viscosity ([0017]). Therefore, it would have been obvious to one of ordinary skill in the art to use a urethane acrylate with a molecular weight, including the number average molecular weight as claimed, to produce a composition with viscosity, including a viscosity as claimed, in order to provide a composition having suitable elasticity, that is processable, and that is mixable.
With respect to claim 23, Jialanella discloses the acrylate-capped polyurethanes can be made from tri-isocyanates which are capped with an isocyanate capping group such as hydroxyalkyl acrylates ([0014-0015]). Therefore, the acrylate-capped polyurethanes would have three (meth)acrylate groups.
With respect to claim 24, Jialanella discloses that each arylate-capped polyurethane is present in an amount of 5-25 wt% ([0019]), which overlaps the presently claimed range.
With respect to claim 25, Jialanella discloses the acrylate-capped polyurethanes can be made from diisocyanates which are capped with an isocyanate capping group such as hydroxyalkyl acrylates ([0012], [0014-0015]). Therefore, the acrylate-capped polyurethane would have two (meth)acrylate groups. Further, Jialanella discloses the first acrylate-capped polyurethane has a glass transition temperature (Tg) greater than or equal to 20°C while the second acrylate-capped polyurethane has a Tg of less than or equal to -20°C ([0013)] (i.e., the first acrylate-capped polyurethane is different from the second acrylate-capped polyurethane).
With respect to claim 26, Jialanella discloses the core-shell graft copolymer has a core made from butadiene and isoprene monomers ([0021]).
With respect to claim 27, Jialanella discloses the core-shell graft copolymer has a shell made from (meth)acrylate monomers ([0022]).
With respect to claim 28, Jialanella discloses a ratio of the A-side to the B-side of, for instance, 4:1 ([0079]).
With respect to claim 29, Jialanella discloses that all the components of the A-side are combined in a single composition, and that all the components of the B-side are combined in a single composition, and then the compositions are combined ([0056], [0079]) (i.e., a ready-for-use kit where the components A and B are packaged in two separate compartments).
Response to Arguments
Due to the amendment to claim 29, the objections to claim 29 are withdrawn.
Due to the amendment to claim 29, the 35 U.S.C. 112(b) rejection of claim 29 is withdrawn.
Applicant's arguments filed 28 April 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues one of ordinary skill in the art would not be motivated to combine Jialanella with Guichard. Specifically, Applicant argues there are significant difference between the curing mechanisms of Jialanella and Guichard, and that Guichard’s examples demonstrate the use of different reactive monomers than itaconates. Applicant argues Guichard is drawn to UV-curable compositions while Jialanella is drawn to redox-curable adhesives, and that Jialanella does not contemplate UV curing, such that one of ordinary skill in the art would not look to Guichard in order to modify Jialanella. Applicant further argues Guichard generically discloses the use of itaconate among other reactive comonomers and does not exemplify the use of itaconate, such that one of ordinary skill in the art would not have any basis to select itaconates over the reactive comonomers used in the examples. Applicant additionally argues the rationale presented by the examiner for combining the references stems from the UV-curing context. Applicant further argues that Jialanella in view of Guichard does not disclose claim 25 because Jialanella has two different bifunctional polyurethanes, but not a polyurethane comprising two (meth)acrylate end functions and a polyurethane with more than two (meth)acrylate end functions. Applicant further argues that while Jialanella discloses the use of triisocyanates, Jialanella allegedly discourages the use of higher-functionality polyurethanes because Jialanella discloses that diisocyanates are preferred and warns of excessive branching, and that Jialanella’s examples use difunctional urethane acrylates. The examiner respectfully disagrees.
In response to Applicant’s argument that Jialanella and Guichard use different curing mechanisms, this is not found persuasive. Guichard teaches the curing “may” be accelerated by exposing the composition to a radiation source such as UV light (page 16, lines 6-8); that is, Guichard does not require the use of UV curing. Further support for this position is found on page 13, line 24, “If the curable composition is to be cured using light”, indicating that the curable composition is not always and is not required to be cured using light. Further, the examiner is not suggesting incorporating the curing methods of Guichard into the curing methods of Jialanella. Guichard is only used as a teaching reference in order to teach the use of itaconates in a curable adhesive composition that includes urethane (meth)acrylates. It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference… Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413, 208 USPQ 871, 881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA).
In response to Applicant’s argument that Guichard generically discloses the use of itaconates but does not exemplify the use of itaconates in the examples, this is not found persuasive. Given that the reactive comonomers taught by Guichard includes itaconates identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any reactive comonomer in Guichard including the claimed itaconate, absent some evidence to the contrary. One of ordinary skill in the art would consider all the reactive comonomers taught by Guichard to be equivalent and interchangeable and equally suitable, absent a showing of criticality by Applicant of the claimed itaconate. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Guichard teaches a finite number of reactive comonomers and given that the references discloses all the reactive comonomers being equally applicable, there would be a reasonable expectation of success when using the itaconate as set forth by the examiner. It is further noted that the fact that “the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious…”. See, e.g., Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Further, while the examples of Guichard may not use itaconates, the examples are not the only disclosure of reactive comonomers. It is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The fact remains that Guichard teaches the use of itaconates as set forth above. It is further noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See also MPEP 2123 II.
In response to Applicant’s argument that there is no motivation to combine Guichard with Jialanella, this is not found persuasive. Guichard teaches the reactive monomers produce a composition that exhibits improved physical properties (page 1, line 32-page 2, line 9), providing motivation to include the itaconate monomers of Guichard in the adhesive composition of Jialanella.
In response to Applicant’s argument that Jialanella in view of Guichard does not meet claim 25, this is not found persuasive. Jialanella discloses that any di- or multi-functional isocyanate may be used, including diisocyanates and triisocyanates ([0014]), and thus one of the acrylate-capped polyurethanes of Jialanella is trifunctional (made from a triisocyanate) and comprises more than two (meth)acrylate end functions while the other is bifunctional (made from a diisocyanate) and comprises two (meth)acrylate end functions.
In response to Applicant’s argument that Jialanella discourages the use of higher-functionality polyurethanes, prefers the use of diisocyanates, and exemplifies the use of difunctional urethane acrylates, this is not found persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See also MPEP 2123 II. Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The fact remains that Jialanella discloses the use of both diisocyanates and triisocyanates ([0014]).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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