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 .
Election/Restrictions
Applicant’s election of a component “a” that has an epoxy functional group attached to a polymeric backbone is silicone and a component “b” of structure (i) in the reply filed on 9/02/2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 6-10 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed 1/11/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. A copy of non-patent literature document number 3 (Koelewijn) has not been provided.
Claim Objections
Claims 1, 4, and 11 are objected to because of the following informalities:
In lines 6-7 of claim 1, the examiner suggests consistent use of either a comma or a semicolon in the list of alternatives.
In line 3 of claim 4, “fumaric acid derivative phthalic acid, or trimellitic” should read “fumaric acid derivative, phthalic acid derivative, and trimellitic.” The examiner suggests this change in order to use the Markush grouping language exemplified in MPEP 2173.05(h) and for the utmost clarity of the included alternatives.
In line 2 of claim 11, “a) oxirane” should read “a) an oxirane.”
In line 3 of claim 11, “b) di-” should read “b) a di-.”
In line 3 of claim 11, “pKa 1” should read “pKa1.”
Appropriate correction is required.
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 15, 11, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Schoenfeld (US 2012/0128987 A1) in view of Blackburn (US 4,764,430).
Regarding claims 1, 3-5, 11, 14-15, Schoenfeld teaches one- and two-component adhesives (claim 11) comprising an epoxy resin and an oligomeric or polymeric urethane-group-free polyether compound (Schoenfeld, [0011]). The adhesives can be cured (Schoenfeld, [0146]) and are therefore curable. Both the two-component adhesive and the one-component adhesive read on the claimed two-component curable composition because both have multiple components. Schoenfeld’s epoxy resin may be a silicone resin comprising epoxide functionality (Schoenfeld, [0013]). A silicone resin comprising epoxide functionality reads on an oxirane functionalized component that has an epoxy functional group attached to a silicone polymeric backbone (claim 3). The oligomeric or polymeric urethane-group-free polyether compound reads on the instant additive (claims 5 and 14). Schoenfeld further teaches that the compositions may include a hardener and teaches a broad variety of hardeners such as amine, thiols, diols, anhydrides, carboxylic acids, and diester-dicarboxylic acids (Schoenfeld, [0126-0132]). The closest hardener to instant structure (i) is Schoenfeld’s diester-dicarboxylic acid. Schoenfeld teaches that diester-dicarboxylic acids are obtainable by reacting glycols with two equivalents of dicarboxylic acid anhydrides and gives the reaction product of propylene glycol and tetrahydrophthalic acid dianhydride as an example (Schoenfeld, [0132]).
Schoenfeld does not exemplify a composition comprising a silicone resin comprising epoxide functionality and a hardener of structure (i).
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared a composition comprising a silicone resin comprising epoxide functionality and a diester-dicarboxylic acid hardener in the composition of Schoenfeld teaches these components. Schoenfeld’s diester-dicarboxylic acid derived from propylene glycol and tetrahydrophthalic acid differs from structure (i) in that the R’ and R’’ do not form an aromatic ring.
Schoenfeld does not teach structure (i).
However, prior to the effective filing date, diester-dicarboxylic acids derived from phthalic acid were known as an alternative to those derived from tetrahydrophthalic acid, as taught by Blackburn. Blackburn teaches curable compositions based on polyepoxides and polyacid curing agents (Blackburn, abstract). Blackburn’s preferred polyacid curing agents are half-esters formed from reacting polyols and 1,2-acid anhydrides (Blackburn, col. 4, lines 26-28). The half-esters are preferred because they are of relatively low molecular weight and are quite reactive with epoxy functionality enabling the formulation of high solids fluid compositions while maintaining outstanding properties such as gloss (Blackburn, col. 4, lines 29-33). The half-esters have the formula shown below (Blackburn, col. 4, lines 49-59):
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where X is the residue of the polyol, R is an organic moiety associated with the anhydride, and A is at least 2. Like Schoenfeld, Blackburn teaches that the anhydride component can be tetrahydrophthalic acid anhydride (Blackburn, col. 5, line 49) and the polyol component can be propylene glycol (1,3- propane diol, Blackburn, col. 5, line 61). Blackburn further teaches that the anhydride component can be phthalic anhydride (Blackburn, col. 4, lines 48-49). Given the disclosure of Blackburn, one of ordinary skill in the art would have understood that phthalic anhydride could be used as an alternative to tetrahydrophthalic acid anhydride when preparing a diester-dicarboxylic acid hardener.
Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). MPEP § 2143, rationale (B). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the diester-dicarboxylic acid hardener of Schoenfeld with the half-ester derived from propylene glycol and phthalic anhydride of Blackburn. One would have had a reasonable expectation of producing a composition with the desired hardening because Schoenfeld teaches a broad range of hardeners and does not limit the diester-dicarboxylic acid hardeners to those derived from tetrahydrophthalic acid anhydride. In addition, Blackburn teaches that half-esters derived from either phthalic anhydride or tetrahydrophthalic acid anhydride can be used to cure epoxy resins.
A half-ester derived from phthalic anhydride and propylene glycol reads on a multifunctional acid derivative having a structure of (i) where m is 1, R’-=-R’’ is an aromatic ring, n is 2, and X is a multifunctional radical backboned (propylene glycol residue). This half-ester is a di-carboxylic acid and has the same structure as a half-ester prepared from phthalic acid (claims 1, 4, and 11). Phthalic acid has a pKa1 of 2.9 (see instant Example 1). It is noted that while claims 1, 4, and 11 claim multifunctional acid derivatives derived from a phthalic acid, case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Regarding claims 2 and 13, modified Schoenfeld teaches the two-component curable compositions of claim 1 and claim 11 where the epoxy resin is a silicone resin comprising epoxide functionality.
Schoenfeld does not specify how the epoxide functionalities are incorporated into the silicone resin.
However, Schoenfeld teaches numerous epoxy resins where the epoxy groups are glycidyl groups (e.g. Schoenfeld, [0015], [0017], [0018]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected a silicone resin comprising epoxide functionality where the epoxide functionalities are glycidyl because Schoenfeld teaches that glycidyl epoxide groups are suitable in the composition.
Regarding claims 16-17, modified Schoenfeld teaches the two-component curable composition of claim 11. Schoenfeld further teaches using the composition as a structural adhesive for joining parts (Schoenfeld, [0136]). The parts read on a substrate and the combination of parts and adhesive prior to curing read on the claimed article.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Schoenfeld (US 2012/0128987 A1) in view of Blackburn (US 4,764,430) as applied to claim 17 above, and further in view of Schumacher (US 2020/0339846 A1).
Modified Schoenfeld teaches the article of claim 17 comprising the two-component curable composition of claim 11. Schoenfeld teaches using the two-component adhesive for joining parts in vehicle construction.
Modified Schoenfeld does not teach an article that is a laminate.
However, Schumacher teaches two component adhesives (Schumacher, title) and teaches their use in the lamination of automotive interior components (Schumacher, [0082]). It would therefore have been obvious to one of ordinary skill to have applied the two-part adhesive composition of Schoenfeld in making a laminate for automotive components as taught by Schumacher in order to achieve Schoenfeld’s intended use as an adhesive for joining parts in vehicle construction.
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.
Claims 11 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,234,391 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 6 anticipates the instant claims.
Reference claim 6 (col. 15, lines 24-28) depends from reference claim 1 (col. 14, lines 59-67). Reference claim 1 is drawn to a two-part adhesive composition (col. 14, line 59) comprising at least one ethylenically unsaturated monomer (col. 14, line 61) and an epoxy resin (col. 14, lines 64-65). The at least one ethylenically unsaturated monomer can be maleic acid or fumaric acid (col. 15, lines 27-28). The composition further comprises a curing promoter (col. 14, line 63).
Reference claim 6 reads on a two-component curable composition (two-part adhesive composition) comprising an oxirane functionalized component (epoxy resin) and a di-carboxylic acid selected from maleic acid or fumaric acid (claim 11). Maleic acid has a pKa1 of 1.9 and fumaric acid has a pKa1 of 3.0 (see [0035] of the instant specification). Reference claim 6’s curing promoter reads on a curing agent (claim 14). The composition is an adhesive (claim 15) (col. 14, line 59).
Claims 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,234,391 B2 (reference patent) as applied to claim 11 above, and further in of Manser (US 4,920,182). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over reference claim 6 in view of Blackburn.
Reference claim 6 teaches the two-component curable composition of claim 11.
Reference claim 6 does not teach an article comprising the composition and the un-cured composition would be expected to function as an article.
However, prior the effective filing date of the claimed invention, epoxy resin-based adhesive compositions were known to be useful in preparing articles. Manser teaches epoxy resin compositions that are used as adhesives (Manser, col. 1, lines 5-9) and that suitable substrates include materials such as paper (Manser, col. 9, lines 1-2). It would therefore have been obvious to one of ordinary skill to have applied the two-part adhesive composition of reference claim 6 to a paper substrate in order to achieve reference claim 6’s intended use as an adhesive. Applying the two-part adhesive composition to paper would result in an article comprising the two-component curable composition of claim 11 and a substrate (paper) (claims 16-17) where the article is a film (paper + two-component curable composition) (claim 18) prior to curing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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