DETAILED ACTION
Summary
This is a non-final office action for application 18/268,173 filed on 16 June 2023. The preliminary amendment filed on the same date is acknowledged.
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 .
Election/Restrictions
During a telephone conversation with Kathleen Gross on 2 February 2026, a provisional election was made with traverse to prosecute the invention of one subgroup of claims.
Upon further consideration, the restriction is withdrawn. Claims 1-20 are pending.
Claim Objections
Claims 3, 13 and 15 are objected to because of the following informalities:
In Claim 3, please replace “alky methacrylate” with “alkyl methacrylate” to match the recitation of Claim 1.
In Claim 13 and Claim 15, please replace “(poly(methyl) methacrylate” with “poly(methyl methacrylate)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites 20-35 wt% of the acrylic monomer comprising a carboxylic acid group. Claim 19 depends upon, and therefore includes, Claim 1. Claim 1 recites at least 1 wt% and less than 20 wt% of an acrylic monomer comprising a carboxylic acid group. The range of dependent Claim 19 includes amounts for this component that are excluded by Claim 1. Claim 19 fails to include all the limitations of Claim 1 upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim 1, 9 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 8 and 11 of copending Application No. 18/291,552 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain all of the limitations with overlapping ranges recited by the instant claims. The mappings between the instant claims and the copending claims are as follows.
Regarding Claim 1, Copending Claim 8, which depends upon, and therefore includes all the limitations of, copending Claim 1, recites 5-19 wt% of an acrylic monomer comprising a carboxylic acid group which is narrower than the 1-20wt% recited by instant Claim 1. Copending Claim 8 recites at least one alkyl acrylate or alkyl methacrylate and an acrylic monomer comprising a hydroxyl group, each of which matches the recitation of instant Claim 1. Copending Claim 8 recites the same compound comprising segments L and at least two X groups with the same definitions for L, X and the same (i), (ii), (iii) limitation for the bonding to the L groups as is recited by instant Claim 1. Copending Claim 8 recites that this compound with divalent segments L and at least two X groups is present in an amount of from 15-22 wt%. This overlaps the 20-35 wt% that is recited by Instant Claim 1. It would be obvious to modify the copending claim to include amounts that are recited by the copending claim that are also recited by the instant claim. That is, the recited amount in the copending claim is an obvious modification of the recited amount of the instant claim due to overlapping ranges. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 9, Copending Claim 11 recites an adhesive comprising the composition of Copending Claim 8 that is at least partially cured with a free radical initiator which requires the presence of a free radical initiator in the composition. This is the equivalent of the limitation that instant Claim 9 adds to instant Claim 1 that composition further comprises a free radical initiator.
Regarding Claim 11, Copending Claim 11 recites an adhesive comprising the composition of Copending Claim 8 that is at least partially cured with a free radical initiator where the adhesive has a glass transition temperature of 90-130 °C or an elongation property within a certain range. This overlaps with the recitation of Instant Claim 11 which recites an adhesive comprising the composition of instant Claim 1 where the adhesive has a glass transition temperature of 90-130 °C.
Regarding Claim 12, Copending Claim 11 recites an adhesive comprising the composition of Copending Claim 8 that is at least partially cured with a free radical initiator where the adhesive has and elongation of 30-250% or a glass transition temperature within a certain range. This overlaps the recitation of Instant Claim 12 which recites an adhesive comprising the composition of instant Claim 1 where the elongation is in a range of 30-80%. The limitation on the elongation property in the instant claim is an obvious modification of the elongation property in the copending claim due to overlapping ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1, 9 and 11-12 are only rejected with obviousness double patenting and would be allowable if those issues are resolved.
Claims 2-8, 10, 13-18 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if the obviousness double patenting rejection of Claim 1 is resolved, or if they were rewritten in independent form including all of the limitations of the base claim and any intervening claims, as well as resolving the informality objections to Claims 3, 13 and 15 noted above.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art, DRISCOLL (US-4447493-A), cited in the instant specification and included in the IDS dated 23 July 2025, teaches a broad class of (meth)acryloyl derivatives oligomers where the oligomer could be a polyoxyalkylene polyamine (Col 6:23) and the functionalization could be formed by reaction with an isocyanatoalkyl (meth)acrylate (II. in Col 4:60), but DRISCOLL does not exemplify this combination, does not teach that the polyoxyalkylene polyamine contains tetramethylene oxide groups, and does not teach using this crosslinking monomer in a composition containing the combination of carboxylic-functional, hydroxyl functional, and alkyl (meth)acrylate monomers that are recited by Claim 1. AKIYAMA (JP-2016155892-A), included in the IDS dated 23 July 2025 with a machine translation included in this office action, teaches two part adhesive compositions which include (meth)acrylic acid, alkyl (meth)acrylate, and hydroxy-functional (meth)acrylate and a polyfunctional (meth)acrylic acid adduct of a polyol which may include polyether groups, but AKIYAMA does not teach that polyfunctional (meth)acrylic acid which match the compound comprising divalent segments L and at least two X groups that is recited by Claim 1. MUELLER (EP-0493320-A2), included in the IDS dated 23 July 2025, teaches vinyl telechelic polyether which overlaps the definition of the recited compound containing L segments and two X groups (p. 4, formulas (A) and (PE), m=0, a=1, n=3, R1=H, VQ = Q3V (p. 5)). MUELLER teaches 0-40wt% of optional (meth)acrylic monomers including (meth)acrylic acid, hydroxyalkyl (meth)acrylates and alkyl (meth)acrylates (p. 6, lines 20-26) but MUELLER only exemplifies methyl methacrylate (p. 12, table) and not carboxylic functional or a hydroxy-functional acrylic monomers. There is not sufficient evidence that one would be motivated to modify the invention of MUELLER to include an alkyl (meth)acrylate, a hydroxy-functional (meth)acrylate and recited amounts of the acid-functional acrylic monomer in order to arrive at the claimed composition. Because MUELLER teaches compositions in the field of fluorine and/or silicone containing hydrogels for the creation of contact lenses, one would not be motivated to combine its teachings with those of the adhesive compositions taught by either DRISCOLL or AKIYAMA.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE L 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.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764