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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0145406 to Bieber et al. (hereinafter Bieber), as evidenced by the Technical Data Sheet for Sartomer® SR 252 Data Sheet from Arkema France (hereinafter Arkema).
Regarding Claims 1 and 2. Bieber teaches a pressure sensitive adhesive foam composition comprising:
a crosslinking additive [0061] – [0066]; and
a filler preferably selected from expandable microspheres and glass bubbles [0065]. i.e. hollow particles.
The crosslinking additive may specifically be SARTOMER® SR252 [0049]. Arkema provides evidence that SARTOMER® SR252 has the following structure:
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(Page 1). SARTOMER® SR252 thus corresponds to a compound of instantly claimed Formula (1) in which R11 and R12 are each methyl and R13 corresponds to a divalent group having an oxyalkylene chain which is an oxyethylene group.
Regarding Claim 7. Bieber teaches a sheet comprising the composition of Claim 1 ([0174] and [0255] – [0256]).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0145406 to Bieber et al. (hereinafter Bieber), as evidenced by the technical data sheet for Sartomer® SR 252 Data Sheet from Arkema France (hereinafter Arkema) – as applied to Claim 1 above.
Regarding Claim 6. Bieber teaches the composition of Claim 1. Bieber does not expressly teach an embodiment in the claimed combination of thermally expandable particles are used in conjunction with SARTOMER® SR252. However, Bieber does teach the concept of using a combination of EMS F100 D and K37 as the filler in inventive Example 16 (Table 6). EMS F100 D corresponds to thermally expandable microspheres, while K37 corresponds to hollow glass bubbles (Table 1). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of EMS F100 D and K37 as the filler in an embodiment of Bieber in which SARTOMER® SR252 is used as the crosslinking agent. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Bieber shows in Example 16 that a combination of EMS F100 D and K37 are suitably used as the filler in the disclosed compositions (Table 6).
Claims 1 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0145406 to Bieber et al. (hereinafter Bieber). Note: this rejection relied upon a different embodiment of Bieber than is applied in the rejection of the instant claims under 35 U.S.C. 102(a)(1) above.
Regarding Claims 1 – 5. Bieber teaches a pressure sensitive adhesive foam composition comprising:
a crosslinking additive [0061] – [0066]; and
a filler preferably selected from expandable microspheres and glass bubbles [0065]. i.e. hollow particles.
Suitable crosslinking additives comprise multiple (meth)acryloyl groups and may be formed by reacting (meth)acrylic acid and a polyhydric alcohol [0046].
Bieber does not expressly teach the crosslinking agent contains a polyoxyalkylene chain comprising both an oxyethylene group and an oxypropylene group. However, Bieber does teaches polyethylene glycol and polypropylene glycol diacrylates as suitable species of crosslinkers [0047], corresponding to species in which polyethylene glycol and polypropylene glycol polymers are the polyhydric alcohols reacted with acrylic acid. Bieber further teaches the concept of using polyethylene/polypropylene copolymer diacrylates as crosslinking agents [0047]. Before the effective filing date of the instantly claimed invention, it is then the Office’s position that it would have been obvious to a person of ordinary skill in the art to use a copolymer comprised of both polyethylene glycol units and polypropylene glycol units to prepare the diacrylate crosslinker of Bieber. The diacrylate crosslinker of Bieber would thus correspond to a compound of instantly claimed Chemical Formula 1 in which R11 and R12 are each methyl and R13 corresponds to a divalent group having an oxyalkylene chain comprising both an oxyethylene group and an oxypropylene group. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining polyethylene glycol and polypropylene glycol in the form a copolymer that is reacted with acrylic acid would have been obvious given that each polymer is already envisioned by Bieber as a suitable polyhydric alcohol precursor for the disclosed crosslinking additive and Bieber also already envisions as suitable precursors [0046]. Moreover, as all copolymers are necessarily random or block copolymers, a person of ordinary skill in the art would have readily envisioned a random copolymer be provided and would have been specifically motivated to provide a random copolymer as it can manufactured by a simpler, less expensive one step process than a block copolymer.
Regarding Claim 6. Bieber teaches the composition of Claim 1. Bieber does not expressly teach an embodiment in the claimed combination of thermally expandable particles are used in conjunction with SARTOMER® SR252. However, Bieber does teach the concept of using a combination of EMS F100 D and K37 as the filler in inventive Example 16 (Table 6). EMS F100 D corresponds to thermally expandable microspheres, while K37 corresponds to hollow glass bubbles (Table 1). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of EMS F100 D and K37 as the filler in an embodiment of Bieber in which SARTOMER® SR252 is used as the crosslinking agent. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Bieber shows in Example 16 that a combination of EMS F100 D and K37 are suitably used as the filler in the disclosed compositions (Table 6).
Regarding Claim 7. Bieber teaches a sheet comprising the composition of Claim 1 ([0174] and [0255] – [0256]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764