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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
3. Claim(s) 1, 3-9, 11, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes (US 2014/0329959, of record) and further in view of Curatolo (US 5,804,301, of record), Zhang (WO 2020/073149, of record), and Ganapathiappan (US 2020/0070302, of record).
Barnes is directed to two part curable composition comprising (a) a first part comprising a cyanoacrylate component and a peroxide component and (b) a second part comprising a free radical component and a transition metal (Paragraphs 18-20).
With specific respect to the free radical curable component, Barnes teaches the use of at least one of (meth)acrylate monomers, including methacrylate functional urethanes, maleimide-containing compounds, itaconamide-containing compounds, and nadimide-containing compounds (Paragraphs 42 and 43). Additionally, Barnes teaches a plurality of exemplary compositions in which a plurality of methacrylate monomers are used as the free radical component in said second part (see Tables 1, 3, 9, 11, 13, 15, 17, 19, 21, 24, and 26). Among the disclosed methacrylate monomers used in these exemplary compositions is EBACRYl 1259, which has a Tg of 43°C (corresponds with claimed aliphatic urethane diacrylate). Thus, Barnes expressly teaches compositions in which the free radical curable component includes a mixture of methacrylate monomers, wherein one of the monomers is an aliphatic urethane diacrylate having Tg of greater than about 30°C. In such an in instance, though, Barnes fails to specifically teach the combination of such a diacrylate and a polyester urethane methacrylate having a Tg greater than about 50°C.
A fair reading of Barnes suggests the use of any number of well-known and conventional methacrylate monomers, including that required by the claimed invention. Curatolo (Column 6, Lines 9-25), Zhang (Page 7, Lines 1-25), and Ganapathiappan (Paragraph 61) specifically evidence the known use of polyester urethane acrylates, with Ganapathiappan specifically suggesting the use of BOMAR® BR-742S (inventive acrylate listed by Applicant in Table 1 and having a Tg of 66°C). It is emphasized that there are any number of commercially available methacrylate monomers that are conventionally used in a wide variety of industries, including curable compositions. This is consistent with the general disclosure of Barnes (Paragraph 43). Absent a conclusive showing of unexpected results, one of ordinary skill in the art would have found it obvious to include a polyester urethane acrylate having a Tg of at least 50°C in combination with the disclosed diacrylate to form a composition in Barnes.
Lastly, Barnes is not limiting in terms of the amounts of individual methacrylate monomers and the claims require loadings of “about” 10 percent by weight to “about” 60 percent by weight- one of ordinary skill in the art would have found it obvious to use any number of loadings for respective urethanes, including that required by the claimed invention (exemplary compositions of Barnes including a mixture of methacrylate monomers satisfy the claimed invention- see Tables). It is further noted that the claims as currently drafted require a ratio of “about” 2:1. It is well recognized that individual components are conventionally disclosed as having a range of loadings in almost every composition and Applicant has not provided a conclusive showing of unexpected results for the claimed loading relationship (lack of comparative examples including both materials and having loadings outside that required by the claimed invention). Also, the exemplary compositions include a ratio of 1:1 and such can be broadly viewed as “about” 2:1.
Furthermore, when looking at Table 1 in Applicant’s original disclosure, Sample 7 is the lone composition that corresponds with the claimed combination of methacrylate monomers in the second part. It is further emphasized that Sample 7 is also the lone composition that includes an aliphatic urethane diacrylate. As detailed above, Barnes teaches exemplary compositions including a mixture of methacrylate monomers, wherein at least one of said methacrylate monomers is an aliphatic diacrylate urethane. It is unclear, though, if any realized benefits associated with Sample 7 are simply a function of including an aliphatic urethane diacrylate (given that Sample 7 is the lone composition including said diacrylate).
Regarding claims 3 and 9, given that BOMAR® BR-742S corresponds with an inventive polyester urethane acrylate, it reasons that the claimed molecular weight would be satisfied.
With respect to claim 4, the exemplary diacrylate component of Barnes has a molecular weight of “about” 2,000 and such is seen to fall within the claimed range requiring a molecular weight less than “about” 1,900.
As to claim 5, Paragraph 20 describes the interaction between said first and second parts.
With respect to claims 6 and 11, given that the two part composition of Barnes, as modified by Curatolo and Ganapathiappan, is substantially the same as that required by the claimed invention, it reasons that the claimed lap shear strength and hot strength would be satisfied.
Regarding claims 7 and 8, a Tg of 66°C is seen to be greater than about 60°C, and more specifically greater than “about” 70°C. The term “about” is seen to include a lower end of temperatures that includes 66°C.
With respect to claim 14, Barnes teaches a 1:1 volume ratio as required by the claimed invention (Paragraph 17).
4. Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnes, Curatolo, Zhang, and Ganapathiappan as applied in claim 1 above and further in view of Stoetzel (US 5,700,3032, newly cited) and/or Dones (US 6,316,517, newly cited).
As detailed above, Barnes teaches exemplary compositions in which the free radical component includes a mixture of methacrylate monomers, such as aliphatic urethane diacrylates. While Barnes fails to expressly teach a diacrylate having a molecular weight of about 1,400, it is well recognized that a wide variety of commercially available diacrylates having a molecular weight of “about” 1,400, as shown for example by Stoetzel (Column 8, Lines 54+) and/or Dones (Column 4, Lines 50-65). It is emphasized that that there are any number of commercially available methacrylate monomers that are conventionally used in a wide variety of industries, including curable compositions. It is further noted that Stoetzel and Dones even include the class of methacrylate monomers under the designated class of PHOTOMER®, which appears to be consistent with the claimed molecular weight. One of ordinary skill in the art would have found it obvious to use any number of commercially available diacrylates in the composition of Barnes absent a conclusive showing of unexpected results (lack of comparative examples including diacrylates falling outside the scope of the claimed invention).
Response to Arguments
5. Applicant's arguments filed July 29, 2026 have been fully considered but they are not persuasive.
Applicant argues that the fact that polyester urethane acrylates were known does not establish that a person of ordinary skill would have selected such a material for Barnes’s two-part adhesive system, combined it with a specific aliphatic urethane diacrylate, and used respective urethane components at a ratio of about 2:1.
As detailed above, Barnes expressly teaches exemplary compositions in which the free radical curable component includes a mixture of methacrylate monomers, wherein one of the monomers is an aliphatic urethane diacrylate having Tg of greater than about 30°C. One of ordinary skill in the art would have found it obvious to use any number of commercially available methacrylate monomers in combination with said diacrylate given the general recognition that a wide variety of methacrylate monomers are conventionally disclosed in curable compositions having applicability in any number of industries. In such an instance, the claimed methacrylate monomer does in fact correspond with commercially available methacrylate monomers, is consistent with the general disclosure of Barnes, and would reasonably be expected to form a composition having the desired properties (that being reduced odor and flammability with high adhesive performance- Paragraph 17). A fair reading of Barnes does not limit the methacrylate monomer that is combined with the disclosed diacrylate and thus, a reasonable expectation of success does in fact exist. Thus, consistent with MPEP 2143, the claimed combination of methacrylate monomers would have been “obvious to try”. The preponderance of evidence recognizes the extremely well known and conventional use of polyester urethane methacrylates as methacrylate monomers in curable compositions (see Curatolo, Zhang, and Ganapathiappan). Again, Barnes expressly teaches a composition including a mixture of methacrylate monomers, wherein one of said methacrylate monomers is a diacrylate having a Tg greater than about 30°C- the specific selection of the claimed methacrylate monomer to be used in combination with said diacrylate would have been obvious in view of the state of the art and the lack of unexpected results for the claimed combination of methacrylate monomers. Any realized benefits might simply be a function of including the claimed diacrylate and thus, said benefits would be present in the composition of Barnes given the express disclosure of compositions including a diacrylate that satisfies the claimed invention.
Applicant argues that Sample 7 exhibits hot strength of 703 psi, while Samples 1-6 have hot strengths between 279 psi and 464 psi. As detailed above, though, it is unclear if the realized hot strength is simply a function of including the claimed diacrylate since Samples 1-6 are devoid of the claimed diacrylate. More particularly, the claimed diacrylate is in fact present in the exemplary compositions of Barnes and thus, any realized benefits would be expected to be present in the compositions of Barnes. It is suggested that Applicant provide comparative examples including the claimed diacrylate to evidence a correlation between properties and the claimed combination of methacrylate monomers.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 August 13, 2026
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