CTNF 18/553,853 CTNF 64082 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restriction 18-05 REQUIREMENT FOR UNITY OF INVENTION As provided in 37 CFR 1.475(a), an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e). When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses: Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process, or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a), 37 CFR 1.475(d), 37 CFR 1.476(c) and 37 CFR 1.488(b)(3). As provided in 37 CFR 1.475(b), an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories: (1) A product and a process specially adapted for the manufacture of said product; or (2) A product and a process of use of said product; or (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or (4) A process and an apparatus or means specifically designed for carrying out the said process; or (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process. Otherwise, unity of invention might not be present. See 37 CFR 1.475(c). This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. 18-06 AIA Group I , claim(s) 1 and 4-12 , drawn to a curable precursor . Group II , claim(s) 13-14 , drawn to a process for making a cured composition from the curable precursor . Group III , claim(s) 15 , drawn to a use of a curable precursor . 18-07 AIA The groups of inventions listed above 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 for the following reasons: 18-07-02 AIA Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a curable precursor of an adhesive composition as set forth below , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Skoultchi (US 5310835). Thus, Skoutchi teaches a curable precursor comprising a two-part adhesive composition (Abstract), wherein the first part comprises (a) a radically (co)polymerizable (meth)acrylate-based component comprising (i) C1-C32 acrylic acid ester monomers (Col. 1, lines 65-66 and Col. 3, line 62 et seq .: phenyl-containing acrylic monomers); and wherein the second part comprises (b) an initiator that is an organic peroxide (Example I: Part B contains 1 part cumene hydroperoxide); and (c) a vinyl aromatic compound (Example I: Part B further contains 50 parts 2-phenoxyethyl methacrylate (wherein the methacrylate comprises a vinyl group indirectly attached to an aromatic (phenyl) ring)) . Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply: (a) the inventions have acquired a separate status in the art due to theirrecognized divergent subject matter;(b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);(c) the prior art applicable to one invention would not likely be applicable toanother invention;(d) the inventions are likely to raise different non-prior art issues under 35 U.S.C.101 and/or 35 U.S.C. 112, first paragraph . 08-23 AIA During a telephone conversation with Adrian Pishko (Agent of record) on 04/14/2025 , a provisional election was made with traverse to prosecute the invention of Group I , claim s 1 and 4-12 . Affirmation of this election must be made by applicant in replying to this Office action. Claim s 13-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Potential Rejoinder 08-21-04 AIA The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. Notice Re: Inventorship 08-23-02 AIA Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). Claim Rejections – 35 U.S.C. 112 07-30-02 AIA 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. 07-34-01 Claims 6-8 are 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 6, the claim is internally inconsistent in use of the term “organic group” to introduce a Markush group delimiting R 34 where the final listed member, “halogen,” is in fact inorganic (i.e., it lacks carbon and hydrogen atoms) and encompasses only individual atoms (e.g., -Cl, -Br, -I), as opposed to any recognized chemical group. Where applicant acts as his/her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp. , 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Here, the term “organic group” in claim 6 is used by the claim to encompass “halogen,” while the accepted meaning denotes a collection or arrangement of atoms that contains carbon. The term is indefinite because the specification does not clearly redefine the term. Claims 7/8 depend on claim 6 such that the reasoning used to reject claim 6 above will be used to reject the depend portions of said claims. Common Ownership Notice 07-20-02-aia AIA 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. Claim Rejections – 35 U.S.C. 103 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-21-aia AIA Claim s 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Skoultchi et al (US 5310835) (hereinafter, ‘Skoultchi’) . Regarding Claims 1 and 4, Skoultchi broadly discloses a curable precursor comprising a two-part adhesive composition, wherein one-part comprises a polymerizable acrylic monomer and an organoboron amine complex and the second-part contains an organic acid destabilizer and optional acrylic polymer (Abstract). Skoultchi in Example I describes a curable precursor wherein the first part (Part A) comprises benzyl methacrylate (a species of C1-C32 methacrylic acid ester monomer) and a second part (Part B) comprises (b) an initiator that is an organic peroxide (cumene hydroperoxide) and (c) 2-phenoxyethyl methacrylate (considered a species of claimed “vinyl aromatic compound” inasmuch as the methacrylate comprises a vinyl group that is indirectly attached to an aromatic (phenyl) ring). Skoultchi differs from the claimed invention only in failing to specifically disclose a two-part adhesive composition wherein the first part comprises a radically (co)polymerizable (meth)acrylate-based component comprising (i) C 1 -C 32 acrylic acid ester monomers. However, Skoultchi clearly teaches benzyl acrylate as a viable alternative to benzyl methacrylate as the polymerizable acrylic monomer component of the disclosed adhesive composition (col. 3, lines 59-65). In light of this teaching, it would have been obvious to one of ordinary skill in the art at the time of effective filing to modify Skoultchi by substituting benzyl acrylate for benzyl methacrylate in Part A of the embodiment of Example 1, with a reasonable expectation of success in producing an equivalent adhesive composition. Indeed, simple substitution of one known material for another to obtain predictable results, provides the rationale for a prima facie case of obviousness. See MPEP § 2143. Further, the resulting composition will meet all the requirements of claims 1 and 4 . 07-22-aia AIA Claim s 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Skoultchi as applied to claim 1 above, and further in view of Shaaban et al (EP 3736300 A1) (hereinafter, ‘Shaaban’) . Regarding Claims 9 and 10, Skoultchi renders obvious the curable precursor of claim 1 as discussed above. Skoultchi does not disclose wherein the first part of the curable precursor further comprises (d) a crosslinker for the (meth)acrylate-based component, which comprises at least one acid-functional group derived from phosphoric acid and at least one radically (co)polymerizable reactive group (claim 9); or the curable precursor of claim 1 further comprising (e) a polyether oligomer having a number average molecular weight of at least 2000 g/mol and which comprises at least one radically (co)polymerizable reactive group (claim 10). However, Skoultchi generally teaches cross-linking agents and adhesion promoters among additives that may also be used in the adhesive compositions of the Skoultchi invention (Col. 5, lines 42-47). Further, in the same technical field, Shaaban is directed to a curable precursor of an adhesive composition, comprising: a) a (meth)acrylate-based (co)polymer base component comprising the free-radical (co)polymerization reaction product of a (co)polymerizable material comprising: i. C 1 -C 32 acrylic acid ester monomer units; ii. optionally, C 1 -C 18 methacrylic acid ester monomer units; and iii. optionally, ethylenically unsaturated monomer units having a functional group and which are copolymerizable with monomer units (i) and/or (ii); b) a crosslinker for the (meth)acrylate-based (co)polymer base component, which comprises at least one acid-functional group derived from phosphoric acid and at least one free-radical (co)polymerizable reactive group; c) a polyether oligomer having a number average molecular weight of at least 2000 g/mol and which comprises at least one free-radical (co)polymerizable reactive group; and d) a thermally conductive particulate material. (Shaaban, para [0006]). As to component b), Saaban teaches (para [0047]) that the described crosslinker not only provides excellent curing characteristics to the curable precursor (in particular curing efficiency, advantageous curing kinetics and curing profile, and ability to efficiently cure without the need for any substantial energy input such as elevated temperature or actinic radiation), but also beneficially impacts its adhesion properties, due in particular to its excellent surface wetting properties provided in particular by the acid-functional group derived from phosphoric acid. Shaaban further mentions benzyl methacrylate among exemplary species of C 1 -C 18 methacrylic acid ester monomers (para [0030]). As such, those of ordinary skill would have expected the crosslinker of Shaaban to be a viable crosslinking agent for the phenyl-containing acrylic monomers included in Part A of the Skoultchi curable precursor. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of effective filing to further modify Skoultchi by including in Part A of the adhesive formulation of Example 1, the crosslinker b) of Shaaban, motivated by a reasonable expectation of achieving comparable improvements in curing characteristics and adhesion properties. Further as to claim 10, Shaaban additionally teaches (para [0066]) that the polyether oligomer described therein is believed to beneficially impact the adhesion properties of the curable precursor, due in particular to the beneficial surface wetting properties provided in particular by the oligomeric polyether moiety. In light of this teaching, those of ordinary skill would have expected Shaaban’s polyether oligomer to function as a viable adhesion promoter for the purposes of Skoultchi. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of effective filing to further modify Skoultchi by including in the adhesive formulation of Example 1, the polyether oligomer c) of Shaaban, motivated by a reasonable expectation of achieving comparable benefits in the adhesion properties of the curable precursor . 07-21-aia AIA Claim s 1, 4-8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Irie (US 2016/0347975 A1) in view of Skoultchi . Regarding Claims 1, 4 and 6-8; Irie has already disclosed (paras [0076]-[0077] (Table 2), Examples 1-5) a two-pack adhesive composition, wherein a first part (primary agent (A)) comprises (meth)acrylate monomers (IBXMA, PhEMA, HEMA, THFMA ...) and wherein a second part (initiator (B)) comprises an initiator (triethylborane/1,6 hexanediamine ) and a vinyl aromatic compound (AMSPU 2400) which corresponds to claimed formula (1) [for claims 6-8] as being obtained by reaction between TMI and Jeffamine D2000 as detailed in paragraph [0075]. Irie differs from the claimed invention in failing to specifically disclose a two-part adhesive composition wherein (I) the first part comprises a radically (co)polymerizable (meth)acrylate-based component comprising (i) C 1 -C 32 acrylic acid ester monomers and (II) the second part comprises an initiator that is an organic peroxide. However, as to feature (I), Irie explicitly teaches that the primary agent (A) may contain other (meth)acrylic monomers or oligomers as optional ingredients, and mentions methyl (meth)acrylate, ethyl (meth)acrylate, butyl (meth)acrylate, n-hexyl (meth)acrylate, 2-ethylhexyl (meth)acylate, isooctyl (meth)acrylate, and isodecyl (meth)acrylate among specific examples of such (meth)acrylic monomers (para [0023]). Irie further defines “(meth)acrylate” to mean “acrylate” or “methacrylate” (para [0016]). In light of such teaching, it would have been obvious to one of ordinary skill in the art at the time of effective filing to modify Irie by including in the primary agent (A) of any of the aforementioned examples, C 1 -C 32 acrylic acid ester monomers, as claimed. Further as to feature (II), Skoultchi teaches an alternative two-part adhesive composition (Abstract) wherein the second part of the initiator comprises an organic peroxide (Col. 5, lines 25-26) in order to aid the initiation of polymerization (Col. 5, lines 27-28), and wherein the first part comprises a stabilized organoborane amine complex (Col. 6, lines 15-20), which is the same type of organoborane initiator used in Irie ( cf. , paras [0026]-[0033]). It would have been obvious to one of ordinary skill in the art at the time of effective filing to further modify the adhesive precursor of Irie to include an organic peroxide in the second part as taught by Skoutchi with reasonable expectation of success to aid the initiation of polymerization. Regarding Claim 5, Irie in view of Skoultchi renders obvious the curable precursor of claim 1 as discussed above. Irie further teaches that if the organoborane complex is included in the initiator, the primary agent (A) will further contain a decomplexing agent (para [0043]); and if the organoborane forms a complex with an amine complexing agent, a preferred decomplexing agent is an amine-reactive compound, exemplified by acids, acid anhydrides, aldehydes, and beta-ketone compounds (para [0044]). Irie then lists acrylic acid and methacrylic acid among examples of useful acids (para [0045]). Thus, it would have been obvious to one of ordinary skill in the art at the time of effective filing to further modify the adhesive precursor of Irie to include in the primary agent (A) an ethylenically unsaturated acidic compound such as acrylic acid or methacrylic acid as decomplexing agent as per Irie. Regarding Claim 11, Irie in view of Skoultchi renders obvious the curable precursor of claim 1 as discussed above. In addition, Irie’s inventive Examples 1-5 each comprise CuBr, which is considered a species of claimed accelerator (f) based on Irie’s teaching of metal salts including copper (II) bromide affecting the curing kinetics of the adhesive (paras [0050]-[0054]). Regarding Claim 12, Irie in view of Skoultchi renders obvious the curable precursor of claim 1 as discussed above. In addition, Irie’s inventive Examples 1-5 each comprise TiO 2 CR60 and Irie’s Initiator (B) comprises carbon black (para [0076]). Both titanium oxide and carbon black are disclosed herein as species of thermally conductive particles ( cf. , Spec ., page 22, lines 5-9). As such, Irie is seen to implicitly teach a thermally conductive particles (g), as claimed, as a component of the disclosed curable precursor composition. Conclusion Claims 1 and 4-12 are rejected. Claims 13-15 are withdrawn from further consideration pursuant to the Applicant’s provisional election, discussed above. Hence, no claims are in condition for allowance at this time. Correspondence Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. /FRED M TESKIN/Primary Examiner, Art Unit 1762 /FMTeskin/06-10-26 Application/Control Number: 18/553,853 Page 2 Art Unit: 1762 Application/Control Number: 18/553,853 Page 3 Art Unit: 1762 Application/Control Number: 18/553,853 Page 4 Art Unit: 1762 Application/Control Number: 18/553,853 Page 5 Art Unit: 1762 Application/Control Number: 18/553,853 Page 6 Art Unit: 1762 Application/Control Number: 18/553,853 Page 7 Art Unit: 1762 Application/Control Number: 18/553,853 Page 8 Art Unit: 1762 Application/Control Number: 18/553,853 Page 9 Art Unit: 1762 Application/Control Number: 18/553,853 Page 10 Art Unit: 1762 Application/Control Number: 18/553,853 Page 11 Art Unit: 1762 Application/Control Number: 18/553,853 Page 12 Art Unit: 1762 Application/Control Number: 18/553,853 Page 13 Art Unit: 1762 Application/Control Number: 18/553,853 Page 14 Art Unit: 1762
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