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
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, 12, 14 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shafer et al (US 20180127625).
Shafer teaches a curable composition comprising
a. 15 to 50 parts of a tetrahydrofurfuryl (meth)acrylate copolymer;
b. 25 to 50 parts of an epoxy resin component;
c. 5-15 parts of a liquid polyether polyol;
d. 10 to 25 parts of a hydroxy-functional film-forming polymer;
wherein the sum of a) to d) is 100 parts by weight; and
e. 0.1 to 1 parts of a cationic photoinitiator (meeting the limitations of claim 12), relative to 100 parts of a) to d) (see claim 1),
where the tetrahydrofurfuryl (meth)acrylate copolymer comprises
a) 40 to 60 wt. % of tetrahydrofurfuryl (meth)acrylate monomer;
b) 40 to 60 wt. % of C1-C8 alkyl (meth)acrylate ester monomer;
c) 0-10 wt. % of cationically reactive functional (meth)acrylate ester monomer
wherein the sum of a)-c) is 100 wt. % (see claim 2).
Note that copolymers may be random or block (co)polymers (see 0054). It is clear that glass transition temperature of a block, based on tetrahydrofurfuryl (meth)acrylate monomer is higher than Tg of an oligomer based on alkyl (meth)acrylate ester monomer. Thus, tetrahydrofurfuryl (meth)acrylate block is considered as a hard one and alkyl (meth)acrylate ester block is considered as a soft block.
In reference to claim 13 and 14, Shafer teaches up to 10% of various additives, including expandable microspheres, where the total amount of all additives do not exceed 10% wt. (see 0052).
Regarding claims 17 and 18, Shafer teaches a partially cured adhesive article (see claim 20).
Claims 6-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shafer et al as evidenced by EPON MSDS, Eponex MSDS and Arcol MSDS.
Shafer teaches an adhesive composition, which meets the limitations of claim 1 (see rejection above).
Regarding claims 6-10, Shafer teaches he adhesive composition desirably contains one or more epoxy resins having an epoxy equivalent weight of from about 100 to about 1500 (see 0028)
Shafer teaches that the adhesive contains two or more epoxy resins, wherein at least one epoxy resin has an epoxy equivalent weight of from about 300 to about 500 (see 0028). The reference discloses a composition, where ratio between two epoxy resins is equal to 1:1 (see Examples 1- 6 at Tables 4 and 5, see 0114).
Regarding claims 8-9, note that both Applicant and Shafer use the same bisphenol A/epichlorohydrin derived epoxy resin, commercially available under the trade designation “EPON 1001F” from Dow Inc.,
Midland, Michigan (see Applicant’s printed publication at 0033). It has epoxide equivalent within the range of 525-550 g/eq (see EPON MSDS).
Shafer also uses epoxy resin Eponex 1510, which has epoxy equivalent of 205-215 e/eq (see EPONEX MSDS).
In reference to claims 10 and 11, Shafer teaches such polyether polyol as ARCOL® POLYOL LHT 240, having molecular weight of 700 (see ARCOL MSDS).
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.
Claims 3-5 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shafer as applied to claims 1-2, 6-14 and 17-18 above, and further in view of Kim et al (US 20170283666).
Although Shafer teaches that the tetrahydrofurfuryl (meth)acrylate copolymer is a tetrahydrofurfuryl/butyl acrylate copolymer (see claim 10) or tetrahydrofurfuryl (meth)acrylate copolymer (see claim 11), the reference is silent about the distribution of (meth)acrylate and butyl acrylate between hard and soft blocks.
Kim teaches a pressure-sensitive adhesive composition comprising:
(A) a block copolymer comprising a first block having a glass transition temperature of 50° C or higher and a second block having a glass transition temperature of −10° C or less, wherein a hydroxyl group is present in the first or second block;
(B) a multifunctional isocyanate compound;
(C) a multifunctional epoxy compound; and
(D) at least one compound, which may contain an amine compound (see claim 1).
Kim teaches that the first block consist of methylmethacrylate (MMA) and second one contain predominantly (i.e., 95-99.5% wt.) butyl acrylate (BMA)
The ratio between hard (MMA) and soft (BMA) blocks can be for example 10:90 (see Table 1).
In the block copolymer, the first block may have a number average molecular weight (Mn) of 2,500 to 150,000 (see 0010).
Kim teaches that a pressure - sensitive adhesive composition above has excellent durability under high temperature or humidity conditions, exhibiting high close adhesion to optical films and it effectively inhibits bending when applied to a thin substrate (see 0007).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Kim’s block-copolymer in Shafer’s compositions, since it provides an excellent durability under high temperature or humidity conditions, exhibiting high close adhesion to optical films and effectively inhibiting bending when applied to a thin substrate.
Regarding claims 19 and 20, Shafer and Kim do not teach the claimed properties.
However, since Applicant’s and modified Shafer’s compositions are identical, their physical properties are expected to be equal.
"Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect the same properties from Applicant’s and modified Shafer’s compositions, since they have identical structures.
Claims 13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Shafer as applied to claims 1-2, 6-12 and 14 and 17-18 above, and further in view of Emslander et al (US 20180327638).
Shafer fails to teach such additives as styrenic polymer and epoxidized natural rubber.
Emslander discloses an adhesive tape comprising a primer layer containing a polymer, where comonomers include acrylic acid and n - butyl acrylate (see claims 1 and 8).
The reference teaches such additive as styrene - containing block copolymer is present in the primer in an amount of at least 5 wt. % (see 0072) and epoxidized natural rubber in an amount of at least 15 wt. % (see 00076 and 0077).
Emslander teaches that the formulation has an excellent elongation and elasticity along with high adhesiveness (see 0001 and 0050).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use such additives as styrenic polymer and epoxidized natural rubber in Shafer’s adhesive, since it enhances such mechanical properties as elongation and elasticity.
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.
6. Claims 1-5 and 17-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 17-18 of U.S. Patent No. 11370944 in view of Kim et al (US 20170283666).
U.S. Patent No. 11370944 claims a curable composition comprising
the following:
a. 15 to 50 parts of a tetrahydrofurfuryl (meth)acrylate copolymer;
b. 25 to 50 parts of an epoxy resin component;
c. 5-15 parts of a liquid polyether polyol;
d. 10 to 25 parts of a hydroxy-functional film-forming polymer;
wherein the sum of a) to d) is 100 parts by weight; and
e. 0.1 to 1 parts of a cationic photoinitiator (meeting the limitations of claim 12), relative to 100 parts of a) to d) (see claim 1),
where the tetrahydrofurfuryl (meth)acrylate copolymer comprises
a) 40 to 60 wt. % of tetrahydrofurfuryl (meth)acrylate monomer;
b) 40 to 60 wt. % of C1-C8 alkyl (meth)acrylate ester monomer;
c) 0-10 wt. % of cationically reactive functional (meth)acrylate ester monomer
wherein the sum of a)-c) is 100 wt. % (see claim 2).
Note that copolymers may be random or block (co)polymers (see 0054). It is clear that glass transition temperature of a block, based on tetrahydrofurfuryl (meth)acrylate monomer is higher than Tg of a an oligomer based on alkyl (meth)acrylate ester monomer. Thus, tetrahydrofurfuryl (meth)acrylate block is considered as a hard one and alkyl (meth)acrylate ester block is considered as a soft block.
U.S. Patent No. 11370944 further claims an adhesive article comprising a substrate and a layer of the curable composition, wherein the composition has been partially cured (see claims 17 and 18).
U.S. Patent No. 11370944 fails to claim a block-copolymer.
Kim teaches a pressure-sensitive adhesive composition comprising:
(A) a block copolymer comprising a first block having a glass transition temperature of 50° C or higher and a second block having a glass transition temperature of −10° C or less, wherein a hydroxyl group is present in the first or second block;
(B) a multifunctional isocyanate compound;
(C) a multifunctional epoxy compound; and
(D) at least one compound, which may contain an amine compound (see claim 1).
Kim teaches that the first block consist of methylmethacrylate (MMA) and second one contain predominantly (i.e., 95-99.5% wt.) butyl acrylate (BMA).
The ratio between hard (MMA) and soft (BMA) blocks can be for example 10:90 (see Table 1).
In the block copolymer, the first block may have a number average molecular weight (Mn) of 2,500 to 150,000 (see 0010).
Kim teaches that a pressure - sensitive adhesive composition above has excellent durability under high temperature or humidity conditions, exhibiting high close adhesion to optical films and it effectively inhibits bending when applied to a thin substrate (see 0007).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Kim’s block-copolymer in U.S. Patent No. 11370944’s compositions, since it provides an excellent durability under high temperature or humidity conditions, exhibiting high close adhesion to optical films and effectively inhibiting bending when applied to a thin substrate.
Regarding claims 19 and 20, Shafer and Kim do not teach the claimed properties.
However, since Applicant’s and modified U.S. Patent No. 11370944 ’s compositions are identical, their physical properties are expected to be equal.
"Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect the same properties from Applicant’s and modified U.S. Patent No. 11370944 ’s compositions, since they have identical structures
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765