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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 07 January 2026. Claims 1-14 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 28 September 2023 and 26 March 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 09 March 2026 is acknowledged. The traversal is on the ground(s) that the previous Office Action did not establish an undue search burden of the claims as specified by MPEP 803. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I-II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraph 3 of the previous Office Action. The requirement is still deemed proper and is therefore made FINAL.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 09 March 2026.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The invention relates to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Drawings
No drawings are present in the application.
Claim Objections
Claims 3 and 5 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 3, the phrase “either of claim 1” is not grammatically correct and should be amended to recite “…according to ”.
Claim 5 is awkwardly written as it includes an extraneous phrase. The Examiner suggests reciting “…cationic photoinitiators each have a counterion [[is]] selected from the group consisting of…”.
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.
Claims 5, 6, and 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 5 and 6, line 1 of each claim refers to “the one or the two or more cationic photoinitiators”. However, claim 1 refers to “one or more cationic photoinitiators”. Thus, the reference to “the two or more” cationic photoinitiators lacks sufficient antecedent basis as the parent claim does not require two or more cationic photoinitiators. See MPEP § 2173.05(e).
The Examiner suggests amending claims 5 and 6 to refer to “…wherein the one ”.
Regarding claim 9, line 1 of the claim refers to “the one or the two or more dyes”. However, claim 8 refers to “one or more dyes”. Thus, the reference to “the two or more” dyes lacks sufficient antecedent basis as the parent claim does not require two or more dyes. See MPEP § 2173.05(e).
The Examiner suggests amending claim 9 to refer to “…wherein the one ”.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Schuh (U.S. Pub. 2016/0326413).
Regarding claim 1, Schuh discloses a pressure-sensitive adhesive tape having an adhesive composition formed from a polymer, a reactive resin, and an initiator and/or curing agent, see p. 1, [0001]. The composition specifically includes 100 parts by weight of a matrix polymer and at least 120 parts by weight of a reactive resin, see p. 2, [0024]. The matrix polymer is described at p. 3, [0026-0027] and reads on the claimed film forming (co)polymer, suitable such materials include elastomers or thermoplastics, see p. 3, [0028-0030].
The reactive resin is an epoxy resin, see p. 3, [0025]. This reads on the polymerizable epoxy component. Epoxidized nitrile rubber is also a suitable reactive resin, see id. Suitable epoxy-containing materials or epoxy resins are described at p. 4, [0048]. The molecular weight of this material may be as low as 58 to over 100,000 g/mol, see id. This is inclusive of monomeric and oligomeric epoxide compounds. Specific materials include 3,4-epoxycyclohexylmethyl 3,4-epoxycyclohexanecarboxyliate or bis(3,4-epoxy-6-methylcyclohexylmethyl)adipate. This reads on component (b).
A suitable initiator is a cationic UV-induced curing initiator, see p. 5, [0056]. This reads on component (c). A cationic photoinitiator is used in the examples, see last entry in the table of materials on p. 9. Example K7 uses 0.8 wt. % of this cationic photoinitiator which is within the claimed range.
Suitable nitrile rubber modified epoxy resins include PolyDis PD3611 and PolyDis PD3691 described in the table of materials on p. 9. Example K5 uses these materials in 30 and 10 weight. % of the composition, respectively. This reads on component (d).
Note that the reactive resins may be used in combination, see p. 4, [0047] and claim 3 which teach using at least one such resin.
Although there is not a single example of Schuh which employs each of the claimed materials in the claimed quantities, the use of the polymer materials and reactive epoxy-containing materials and cationic photoinitiator used in the Examples at p. 9-10 and the quantities described at p. 2, [0024] allow for blends of the components to be formulated which are within the claimed ranges. Thus it would have been obvious to have formulated the claimed curable adhesive.
Regarding claim 2, Schuh teaches using 20 wt. % of Desmomelt 530 in the examples, see p. 9-10, which is a largely linear hydroxyl polyurethane reading on component (a) as claimed. This is within the claimed range.
Regarding claim 3, Schuh teaches using at least 120 parts by weight of the epoxy-containing component based on 100 parts of the polymer component, see p. 2, [0024], which allows for 30-60 wt. % of the epoxy-containing component as claimed.
Regarding claim 4, The total amount of epoxy-containing component is at least 120 parts by weight based on 100 parts of the polymer component, see p. 2, [0024], and a combination of such epoxy-containing components may be used, see p. 4, [0047]. Thus the amount of the epoxy-modified nitrile rubber may be within the claimed range. See also Example K5 which uses 10 wt. % of PolyDis PD3691 which is one of the nitrile rubber-modified epoxy resins.
Regarding claim 5, Schuh teaches that the cationic photoinitiator has an anionic counterion of hexafluorophosphate or hexafluoroantimonate or tetrakispentafluorophenylborate, see p. 5, [0057].
Regarding claim 6, The cationic photoinitiator used in the examples of Schuh has an absorption maximum in the 320-360 nm range which exceeds 290 nm as claimed. See the bottom entry in the materials table on p. 9.
Regarding claim 7, Example K7 uses 0.8 wt. % of the cationic photoinitiator, see table on p. 9-10. Another example K5 uses 10 wt. % of PolyDis PD3691 which is a nitrile rubber-modified epoxy resin as well as 30 wt. % of PolyDis PD3611 which is also a nitrile rubber-modified epoxy resin, see materials table on p. 9. This ratio (0.80/40) 0.02 which is outside of the claimed range. However, Schuh teaches more generally that the total amount of reactive resin components is at least 120 parts by weight based on 100 parts of the polymer component, see p. 2, [0024]. This allows for a blend of components reading on (b) and (d) that are within the disclosed amount of reactive resin components and also provide a suitable amount of epoxy-modified nitrile rubber as claimed. For example, using 20 parts by weight of the polymer reading on component (a) and 20 parts of an epoxy-containing component reading on component (b) along with 10 parts by weight of a nitrile rubber-modified epoxy resin reading on component (d) and other components such as a tackifying resin making up the balance of the composition allows for a weight ratio of cationic photoinitiator to epoxy-modified nitrile rubber of 0.8/10 which is 0.08 which is within the claimed range. It would have been obvious to have adjusted the blends of the disclosed components as desired to arrive at amounts within the claimed ratio.
Regarding claim 10, Schuh discloses a pressure-sensitive adhesive tape comprising the curable adhesive, see p. 1, [0001].
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Schuh (U.S. Pub. 2016/0326413) as applied above, and further in view of Forster (U.S. Pub. 2010/0294427).
Regarding claims 8 and 9, Schuh is relied upon as described above to disclose the adhesive of claim 1. Schuh further teaches that additives such as light stabilizers may be included in the adhesive composition (see p. 6, [0065-0077]), but does not specify the use of a dye or pigment.
Forster discloses an assembly bonded with a structural adhesive which is a cross-linkable polymer, see abstract. The adhesive includes a cationic photoinitiator, see p. 6, [0072]. An epoxy resin may be included in the cross-linkable polymer, see claim 20 as well as Table 1 on p. 10. A blue pigment may be included as well, see list of fillers in Table 1, Part A (bottom component). Forster teaches including a UV fluorescent additive optical brightener which absorbs light in the UV spectrum and emits light in the blue region of the visible spectrum, see p. 4, [0047] which also reads on a blue dye. It would have been obvious to have included such dyes or colorants in the adhesive to provide a desired color or to brighten the adhesive.
Schuh and Forster are analogous because they are similar in composition and function, as they each disclose adhesives which include epoxy-containing components and cationic photoinitiators.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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