DETAILED ACTION
Summary
Applicant’s amendment dated 11 May 2026 is acknowledged.
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 double patenting issues have not been resolved and the rejections set forth in the previous office action are maintained. For this reason, this action is properly made final.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 11 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,600,885 has been reviewed and is NOT accepted. The decision dated 15 May 2026 states that the filing date for US Patent No. 12,600,885 provided in the terminal disclaimer does not match the records in the patent office.
Double Patenting
Claims 1, 9 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 8 and 11 of U.S. Patent No. 12,600,885. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims contain all of the limitations with overlapping ranges recited by the instant claims. The mappings between the instant claims and the issued claims are as follows:
Regarding Claim 1, Issued Claim 8, which depends upon, and therefore includes all the limitations of, Issued 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. Issued 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. Issued 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. Issued 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 issued claim to include amounts that are recited by the issued claim that are also recited by the instant claim. That is, the recited amount in the issued 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, Issued Claim 11 recites an adhesive comprising the composition of Issued 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, Issued Claim 11 recites an adhesive comprising the composition of Issued 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, Issued Claim 11 recites an adhesive comprising the composition of Issued 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 issued claim due to overlapping ranges.
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, 13-20 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.
The following is a statement of reasons for the indication of allowable subject matter:
The claims are allowable for the same reasons set forth in the non-final office action dated 9 February 2026.
Response to Arguments
Applicant's arguments filed 11 May 2026 have been fully considered but they are not persuasive.
The amendment to Claims 1, 3 and 15 have addressed the informalities noted in the previous office action. The objections to these claims have been withdrawn.
The amendment to Claim 19 addresses the issue where the range recited for the acrylic monomer comprising a carboxylic group was outside of the range recited in Claim 1 from which it depends. The rejection under 35 USC 112(d) for this claim has been withdrawn.
The terminal disclaimer filed on 11 May 2026 was disapproved in the terminal disclaimer review decision dated 15 May 2026. The double patenting rejections set forth in the previous rejection are maintained with modifications that the copending application 18/291,552 is now issued as US Patent No. 12,600,885.
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 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
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