DETAILED ACTION
This Office Action is in response to the Amendment filed on 1/9/2026.
Claim(s) 7 were cancelled.
Claim(s) 26 have been added.
Claim(s) 16-25 are withdrawn due to a previous restriction requirement.
Claim(s) 1, 3, 5, and 8-26, are now pending in the application.
The previous 35 USC 112 rejections of claim(s) 7 and 10 are withdrawn in light of Applicant’s amendment and remarks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "NCO groups per compound P molecule" in line 5. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “NCO groups per the at least one compound P”.
Claim Rejections - 35 USC § 103
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 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 1, 3, 5, and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0084138 to Henke et al. (as found on the IDS dated 7/19/2024 and corresponding to Document D1 of the Written Opinion of the International Searching Authority dated May, 11, 2022) in view of US2015/0072080 to Prieto.
Regarding Claims 1, 7, and 10 - 14, Henke teaches an adhesive composition [title]. The adhesive composition comprises at least one compound (B) [abstract] which are particularly suitably acrylates [0091] in an amount as much as 80% by weight [0099] (reading on an acrylic compound A in an amount of at least 60 wt%). The adhesive composition further comprises the reaction product of a hardener (D) [0121] (corresponding to hardener H) and a component (A) [0121] (corresponding to compound P). The adhesive composition further comprises a photoinitiator (C) [0101] (reading on free radical initiator I).
Henke teaches component (A) is preferably a polyurethane prepolymer that is NCO-terminated [0073] reading on component (A) having isocyanate as the first type of functional group as cited in instant specification [instant specification, 0053]. Henke also teaches hardener (D) preferably contains two OH groups [0118] reading on hardener (D) having a second type of functional hydroxyl group and a diol hardener. The ratio of functional groups of isocyanate terminated component (A) and hydroxyl group terminated hardener (D) provided is about 2:1 to about 1:1 (corresponding to 1-2) [0121], thereby reading on the claimed ratio of 0.95-1.5.
Furthermore, Henke discloses component (A) is prepared from a) [0024] b) [0025] and c) [0026] wherein a) is MDI (Mw of 250 g/mol) [0041], b) has a Mw of 100-3000 g/mol [0048] c) has a Mw of 10,000 – 15,000 g/mol [0077] therefore it is reasonably calculated that the reaction product of these components have a minimum Mw range of from 10,350 – 18,250 g/mol, reading on component P has a Mw of not more than 30000 g/mol of claim 10. It is noted this is considered the minimum range of (A) as multiple of each units of a), b), c), are able to be used as noted in [0035], [0042]. Moreover, the hardener (D) is 50-10,000 g/mol [0116] reading on at least one hardener H has a Mw of not more than 7500 g/mol of claim 12.
Though the amount of acrylic compound A of at most about 80 weight percent is not identical to the claimed range of at least about 60 weight percent, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Henke is silent regarding the reaction product RP has a Mw of at least 50000 g/mol.
However, Prieto teaches urethane particles obtained from polyisocyanate and polyol groups [Prieto, 0031] with a preferred molecular weight of about 100,000 g/mol to 800,000 g/mol [Prieto 0041]. Henke and Prieto are analogous art as they are from the same field of endeavor, namely adhesives comprising urethane prepolymers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to select the molecular weight range taught by Prieto for Henke’s reaction product.
The motivation would have been that a molecular weight range of 100,000 to 800,000 is advantageous for the chemical stability, and have better improved adhesive strength, bonding capacity, tensile strength, and tear resistance, and also have excellent stretchability [Prieto 0041].
Regarding Claim 3, Henke teaches the adhesive composition of claim 1 as set forth and incorporated herein by reference.
Henke does not teach melting temperature of the adhesive composition. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Henke, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. an adhesive composition having a melting temperature in the instantly claimed range - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 5, Henke teaches the adhesive composition of claim 1, wherein the acrylic compound can contain exactly one (meth)acryl group, such as 2-ethylhexyl acrylate [0098].
Regarding Claim 8, Henke teaches the adhesive composition of claim 1, wherein polyurethane prepolymer is provided in an amount of 10-98 wt% and the hardener is provided in an amount of 0-60 wt% [claim 12]. The composition also requires a minimum of 0.5 wt% acrylate (B) [claim 12]. Therefore the reaction product in Henke can be calculated to correspond to greater than 10-99.5 wt% of the composition.
Though the prior art reaction product range is not identical to the claimed range, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 9, Henke teaches the adhesive composition of claim 1, wherein the ratio prepolymer to hardener is about 2:1 to about 1:1 [0121]. When the hardener comprising hydroxyl groups is used in stochiometric excess relative the prepolymer comprising isocyanate groups, it would be reasonably expected that roughly zero weight percent isocyanate groups would remain in their reaction product.
Regarding Claim 15, Henke teaches the adhesive composition of claim 1, wherein the photo initiator functions as a crosslinker during polymerization with UV light [0143].
Claim 26 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0084138 to Henke and Prieto, as applied to claim 1 above, and further in view of US2005/0176842 to Graichen et al. (as found on the IDS dated 7/19/2024).
Regarding Claim 26, Henke teaches the adhesive composition of claim 1, as set forth above and incorporated herein by reference.
Henke is silent regarding a tackifying resin TR.
However, Graichen teaches a pressure sensitive adhesive comprising tackifiers such as rosin esters and terpene resins [Graichen, 0146]. Graichen and Henke are analogous art as they are from the same field of endeavor, namely radiation curable pressure sensitive adhesives comprising acrylates and urethanes.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to add Graichen’s tackifier to Henke’s adhesive, thereby arriving at the instantly claimed invention.
The motivation would have been that the viscosity of the precursor can be further adjusted by including a tackifier [Graichen, 0146] which is of interest to Henke, as altering viscosity is commonly mentioned [Henke, 0017, 0019]. Moreover, one of ordinary skill in the art would have used a tackifier in order to increase tack, which is commonly desired in adhesives.
Response to Arguments
Applicant's arguments filed 1/9/2026 have been fully considered but they are not persuasive.
Applicant states Henke expresses a preference for a lower percentage of compound (B) and a person of ordinary skill in the art would not be motivated to produce the claimed composition “wherein the at least one acrylic compound A comprises at least 60 wt% of the total weight of the adhesive composition”.
In response, attention is drawn to the case law as set forth above, wherein it is obvious to one of ordinary skill in the art to select any portion of the disclosed ranges (i.e. the weight ratio of polyester resin to glass fibers) including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Applicant states that Henke’s polyurethane prepolymer (A) is used as a reactive component that is subsequently cured through reactions of the isocyanate groups of the pre-polymer and therefore submits a person of ordinary skill in the art would not have derived the composition of in instant claims from Henke.
In response, attention is drawn to claim 1 wherein all instantly claimed limitations of the adhesive composition are met by Henke.
Applicant states that Henke does not suggest or imply such a high molecular weight reaction product RP.
In response, attention is drawn to the updated rejection of claim 1 as set forth above wherein Henke in view of Prieto teaches a reaction product with a molecular weight of about 100,000 g/mol to 800,000 g/mol [Prieto, 0041] because the molecular weight range of 100,000 to 800,000 g/mol is advantageous for the chemical stability, and have better improved adhesive strength, bonding capacity, tensile strength, and tear resistance, and also have excellent stretchability [Prieto 0041].
Applicant states that Henke does not disclose or imply any such tackifying resin.
In response, attention is drawn to the updated rejection of claim 26, wherein a tackifier is taught by Henke in view of Graichen.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/
Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764