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 Objections
Claim 15 is objected to because of the following informalities: the second recited compound recites “cycloheyl” which appears to be a typographical error. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: in line 4 “divinylether” should instead be –divinyl ether--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 14 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.
Regarding claim 14, the parentheses present in the claim (see aromatic group (e.g., phenyl) and halide (F, Br, Cl, I)) and render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-9, 11-18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kropp et al. (WO 2018/109617 A1) in view of Townsend et al. (US PGPub 2019/0256751).
Regarding claim 1, Kropp teaches curable, one-part epoxy/thiol resin compositions comprising an epoxy resin component having at least two epoxide groups per molecule, a thiol component comprising a polythiol compound having at least two primary thiol groups, a nitrogen-containing catalyst for the epoxy resin, and a substituted barbituric acid soluble in the epoxy/thiol composition (abstract; pg2; pg6). Kropp further teaches the nitrogen-containing catalyst is solid at room temperature and is not soluble in the other components of the epoxy/thiol composition (pg14). Kropp teaches that additional additives can be present in the composition (pg11-20) including reactive diluents, flexibilizers, particles, etc. and other conventional additives (pg20).
Kropp does not specifically teach a non-(meth)acrylate ethylenically unsaturated compound and a photoinitiator. However, Townsend teaches similar curable polythiol compositions and teaches it is advantageous to utilize both base-catalyzed thiol-epoxy cure and thiol-ene cure mechanisms in order to effect a composition capable of both a moderate-speed background cure and a faster cure on-demand functionality ([0001]; [0004]), wherein the compositions comprise a polythiol component ([0034]), ethylenically-unsaturated compounds ([0039]) and photoinitiators ([0047]), amines that function to affect open time of the composition ([0052]; [0061]), polyepoxides ([0063]), and an amine or base catalyst that functions to catalyze the reaction between the polythiol and the polyepoxide and which is phase-separated within the composition ([0074]). Townsend further teaches the ethylenically-unsaturated compounds are specifically not (meth)acrylate compounds as they are less chemically stable and teaches instead selecting from dienes, divinyl ethers, diallyl ethers, etc. which are more chemically stable ([0041]). Townsend and Kropp are analogous art and are combinable because they are concerned with the same field of endeavor, namely curable epoxy/thiol resin compositions suitable for use in aerospace. At the time of filing a person having ordinary skill in the art would have found it obvious to include the ethylenically-unsaturated compounds and photoinitiator combination of Townsend in the curable epoxy/thiol composition of Kropp and would have been motivated to do so as Kropp invites the inclusion of further additives and further as Townsend teaches it is known to combine thiol-ene cure mechanisms and thiol-epoxy cure mechanisms in such compositions in order to obtain a curable composition capable of both background cure and on-demand cure, resulting in sufficient depth of cure for on-demand applications.
Regarding claims 3-5, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches the epoxy resin component is selected from epoxidized (poly)olefinic resins, epoxidized phenolic novolac resins, epoxidized cresol novolac resins, cycloaliphatic epoxy resins, glycidyl ether esters, polyglycidyl esters, etc. (pg9)(claim 3). Kropp further teaches both that the epoxy resin may include reactive diluents (pg12-13) and that additives including reactive diluents may be present (pg20)(claim 4). Kropp teaches the epoxy resin component is present from at least 20 up to 80 wt% (pg13)(claim 5).
Regarding claims 6-7, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches the polythiol is selected from trimethylolpropane tris(beta-mercaptopropionate), trimethylolpropane tris(thioglycolate), pentaerythritol tetrakis(thioglycolate), (C1-C12) alkyl polythiols, (C6-C12) aromatic polythiols, etc. (pg13)(claim 6). Kropp teaches the polythiol is present from at least 25 up to 70 wt% (pg13-14)(claim 7).
Regarding claim 8, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches the ratio of epoxy to thiol is from 0.5:1 to 1.5:1 (epoxy:thiol equivalents)(pg14). Townsend teaches the ethylenically-unsaturated compound and the polythiols are selected in amounts such that there is a stoichiometric equivalence of thiol group to carbon-carbon double/triple bonds ([0044]), wherein polythiols are generally present in suitable amounts from 40 to 70 wt% ([0038]).
Regarding claims 11-12, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches the nitrogen-containing catalyst is solid at room temperature, is not soluble in the other components of the epoxy/thiol composition, is an amine-containing catalyst (pg14)(claim 11), and is present in amounts of at least 1 and up to 45 parts, per 100 parts of the epoxy component (pg16)(claim 12).
Regarding claims 13-16, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches the barbituric acid derivative includes barbituric acid compounds substituted at the 1, 3 and/or 5 N positions with an aliphatic, cycloaliphatic or aromatic group (pg17)(claim 13), teaches the instantly claimed structure (see Formula (II)) as recited (pg17)(claim 14), and teaches the compounds are present in an amount of at least 0.01 up to 1 wt% (pg17)(claim 16). Kropp further teaches exemplary compounds include 1-benzyl-5-phenylbarbituric acid, 1-cycloheyl-5-ethylbarbituric acid, and 1,3-dimethylbarbituric acid (pg18)(claim 15).
Regarding claims 17-18, Kropp in view of Townsend renders obvious the composition as set forth above. Townsend teaches the non-(meth)acrylate ethylenically unsaturated compounds include divinyl ether, ethylene glycol divinyl ether, cyclohexanedimethanol divinyl ether, Bisphenol A diallyl ether, etc. ([0042]-[0043])(claim 17) and teaches it is suitable to include the ethylenically unsaturated compounds in amounts up to 75wt% of the composition ([0031] 1 to 75 wt% second component in composition overall; [0046] 10 to 100 wt% of the second component is the ethylenically-unsaturated compound)(claim 18).
Regarding claim 23, Kropp in view of Townsend renders obvious the composition as set forth above. Kropp further teaches such adhesives are deposited on a surface (pg1-2) and are cured via application of heat (pg2). Townsend further teaches the dual cure system allows for class B sealants ([0125]). Townsend teaches curing of the composition by one or both of i) exposing the photoinitiator to visible light to initiate cure and/or ii) curing over time under ambient conditions ([0128]); and exemplifies a two step curing comprising a first cure via irradiation (intermediate B-stage) followed by a second ambient cure (full cure) ([0271]).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kropp et al. (WO 2018/109617 A1) in view of Townsend et al. (US PGPub 2019/0256751) and further in view of Kropp (US PGPub 2008/0152921; hereafter Kropp-2).
Regarding claims 28-29, Kropp in view of Townsend render obvious the composition as set forth in claim 1 above, incorporated here by reference. Kropp further teaches the adhesives are deposited on a surface (pg1-2) and are cured via application of heat (pg2). Townsend further teaches curing of the composition by one or both of i) exposing the photoinitiator to visible light to initiate cure and/or ii) curing over time under ambient conditions ([0128]); and exemplifies a two step curing comprising a first cure via irradiation (intermediate B-stage) followed by a second ambient cure (full cure) ([0271]).
Kropp does not specifically teach printing to form an image (claim 28) via stencil- or screen-printing (claim 29). However, Kropp-2 teaches it is a known method of use to apply epoxy adhesives to a substrate via a printing method, including screen, stencil or roll printing, in a predetermined pattern (instant image) and partially curing to a B-stage followed by fully curing ([0012]; [0014]). Kropp-2 and Kropp are analogous art and are combinable because they are concerned with the same field of endeavor, namely curable epoxy based adhesives. At the time of filing a person having ordinary skill in the art would have found it obvious to apply via printing as taught by Kropp-2 using the adhesive of Kropp and would have been motivated to do so as Kropp-2 teaches such is known method of applying adhesives in a predetermined pattern while avoiding slumping.
Regarding claim 30, Kropp in view of Townsend and Kropp-2 render obvious the method as set forth in claim 28 above. Kropp teaches thermal curing in a range of up to 80 ºC (pg2).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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