DETAILED ACTION
Summary
This is a non-final office action for application 18/556,107 filed on 19 October 2023. The preliminary amendment filed on the same date is acknowledged.
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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage 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 a national stage 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 Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage 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).
Restriction is required under 35 U.S.C. 121 and 372.
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.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, Claims 1-7, drawn to a process to form a composition comprising a crosslinked olefin-based polymer.
Group II, Claims 8, 18 and 20, drawn to crosslinked compositions and an article.
Group III, Claims 9-17, drawn to a first composition of an anhydride functionalized polyolefin and at least one epoxy-silane.
Group IV, Claim 19, drawn to a crosslinked composition having the recited structure.
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:
Groups (III and I), (III and II), and (III and IV) each lack unity of invention because even though the inventions of these groups require the technical feature of the first composition of Claim 9, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of SUGIKI (US-20210087438-A1) as evidenced by KOSATO (JP-2013203949-A). See the Claim 9 rejection under 35 USC 102 below.
Groups (I and II), (I and IV) and (II and IV) each lack unity of invention because even though the inventions of these groups require the technical feature of the first composition of Claim 9 which is crosslinked and/or moisture cured, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of SUGIKI (US-20210087438-A1) as evidenced by KOSATO (JP-2013203949-A). For the first composition of Claim 9, see the Claim 9 rejection under 35 USC 102 below. SUGIKI further teaches that the alkoxysilyl group in its composition is moisture cured to cause crosslinking ([0057]), teaches a catalyst to improve moisture curability ([0100]) and teaches application of its composition as a film which is then allowed to stand under heat and humidity to undergo crosslinking ([0169]).
During a telephone conversation with Cheney Huang on 30 June 2026 a provisional election was made without traverse to prosecute the invention of Group III, Claims 9-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 and 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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).
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.
Claim Objections
Claims 9 and 11-14 are objected to for informalities, blurry images and duplicate structures as is detailed below.
Claims 9 and 12-14 are objected to for the following informalities:
In Claim 9, please remove the quotation marks.
In Claims 9 and 12-14, please remove the use of italics.
In Claim 9, please replace “components a and b:” with “a) and b):” as reference characters should be enclosed in parentheses (see MPEP 608.01(m)). It is noted that the pattern used in the rest of the claims for this type of reference character is a single-closed parenthesis character.
In Claims 12-13, please replace “component a” with “a)” in each claim.
In Claim 14, please replace “(component c)” with “c)”.
Claim 11 is objected to for reciting structural images for e26), e27) and e28) which are not clear. In particular, the repeat count on the methylene group (CH2) between the glycidoxy group and the silicon atom is hard to read in each image. Please replace these three structures with images that are more clear.
Claim 11 is objected to for reciting multiple sets of duplicates in the list of recited structures.
e24) and e27) are both glycidoxypropylmethyldiethoxysilane (CAS 2897-60-1),
e25) and e28) are both glycidoxypropylmethyldimethoxysilane (CAS 65799-47-5),
Also if the repeat count on the methylene group in e26) is 3, then e23) and e26) are both glycidoxypropyltrimethoxysilane (CAS 2530-83-8). If the repeat count in e26 is 8, then e22) and e26) are both glycidoxyoctyltrimethoxysilane (CAS 1239602-38-0).
Please recite each compound only once in the list.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9-11 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHEN (WO-2018035712-A1).
The CHEN (WO-2018035712-A1) reference is in the IDS dated 25 April 2025
Regarding Claim 9, CHEN teaches a polar olefin polymer and an epoxy or amine-functionalized silane (Abstract, [0005]). CHEN teaches that its polar olefin polymer is an olefin polymer comprising one or more polar groups and includes teachings for carboxylic anhydride groups ([0015]) including maleic anhydride (Claim 3). CHEN exemplifies AMPLIFY GR 216 ([0035], Table 1) which is a maleic anhydride-grafted polyolefin elastomer ([0035]). CHEN teaches several specific epoxy-silanes ([0024]) and exemplifies SILQUEST A-187 silane ([0037], Table 1) which is γ-glycidyloxypropyltrimethoxysilane ([0037]) which is an epoxy-silane compound.
Regarding Claim 10, CHEN teaches the invention of Claim 9. CHEN teaches epoxy silanes that satisfy e1) including SILQUEST A-186 (Beta-(3,4-epoxycyclohexyl)-ethyltrimethoxysilane) ([0024]) where R is ethyl and X1=X2=X3=methoxy, and also teaches silanes which satisfy e2) including SILQUEST A-187 (gamma-glycidoxypropyltrimethoxysilane) ([0024]), where R’ is -CH2-O-propyl and X4-X5=X6=methoxy, and SILQUEST A-1871 (gamma-glycidoxypropyltriethoxysilane) ([0024]), where R’ is -CH2-O-propyl and X4=X5=X6=ethoxy, and COATOSIL 2287 ( diethoxy(3-glycidyloxypropyl)methylsilane ) ([0024]), where R’ is -CH2-O-propyl and X4=X5=ethoxy and X6=methyl. CHEN exemplifies SILQUEST A-187 silane ([0037], Table 1).
Regarding Claim 11, CHEN teaches the invention of Claim 9. CHEN teaches epoxy silanes including SILQUEST A-186 (Beta-(3,4-epoxycyclohexyl)-ethyltrimethoxysilane) ([0024]) which is structure e12), SILQUEST A-187 (gamma-glycidoxypropyltrimethoxysilane) ([0024]) which is structure e23), SILQUEST A-1871 (gamma-glycidoxypropyltriethoxysilane) ([0024]) which is structure is structure e21), and COATOSIL 2287 ( diethoxy(3-glycidyloxypropyl)methylsilane ) ([0024]) which is structures e24 and e27.
Regarding Claims 15-16, CHEN teaches the invention of Claim 9. CHEN does not perform the melt viscosity tests recited by Claims 15-16, but because CHEN teaches maleic anhydride-grafted polyolefin elastomer ([0035]) and γ-glycidyloxypropyltrimethoxysilane ([0037]) components which anticipate all of the limitations of Claim 9 then one would inherently expect it to have melt viscosity behavior that is within the scope of the current invention and would satisfy the requirements of Claim 15 and Claim 16.
Claims 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHEN (WO-2018035712-A1) as evidenced by SILVIS (US-20130338316-A1).
Regarding Claims 12-13, CHEN teaches the invention of Claim 9. CHEN generally teaches that its olefin-based polymer may be an ethylene-based polymer or a propylene-based polymer ([0010]). CHEN exemplifies the maleic-anhydride-grafted polyolefin elastomer AMPLIFY GR 216 ([0035], Table 1) but CHEN does not teach the specific olefin which is the basis of AMPLIFY GR 216. Here, SILVIS is used as an evidentiary reference to disclose the inherent polymeric structure of the AMPLIFY GR 216 polyolefin taught by CHEN. See MPEP 2131.01-III for this use of a secondary evidentiary reference in 102 rejections. SILVIS discloses that AMPLIFY GR-216 is a random ethylene/octene-1 copolymer grafted with maleic anhydride ([0459]) which is an ethylene-based polymer. That AMPLIFY GR 216 is an ethylene-based polymer satisfies both Claim 12 and Claim 13.
Claims 9-12 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SUGIKI (US-20210087438-A1) as evidenced by KOSATO (JP-2013203949-A).
Regarding Claim 9, SUGIKI teaches an adhesive containing an acid-modified polyolefin (A) having an acidic group and or an anhydride group and an alkoxysilyl group-containing compound (B) (Abstract). SUGIKI teaches that its alkoxysilyl group-containing compound can be an epoxyalkyoxysilane ([0087], [0090]). In Example 9 (Table 1), SUGIKI exemplifies MODIC P553A acid-modified polypropylene ([0164]) for its modified polyolefin and Z6043 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane ([0167]) for its silane compound, which is an epoxy silane. SUGIKI does not teach the specific acid modification of its P553A component. Here, KOSATO is used as an evidentiary reference to disclose the inherent molecular structure of the P553A component taught by SUGIKI. See MPEP 2131.01-III for this use of a secondary evidentiary reference in 102 rejections. KOSATO discloses that P553A is a maleic anhydride-modified polypropylene (p.8, par. (2-1)). This satisfies the requirement of an anhydride-functionalized olefin-based polymer.
Regarding Claim 10, SUGIKI teaches the invention of Claim 9. SUGIKI generally teaches 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane ([0090]) which is an e1 compound and also generally teaches 3-glycidoxypropylmethyldimethoxysilane, 3-glycidoxypropyltrimethoxysilane, 3-glycidoxypropylmethyldiethoxysilane, and 3-glycidoxypropyltriethoxysilane ([0090]) which are e2 compounds. SUGIKI exemplifies Z6043 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane ([0167]) which is an e1 compound where R=-CH2CH2- and X1=X2=X3=methoxy.
Regarding Claim 11, SUGIKI teaches the invention of Claim 9. SUGUKI teaches and exemplifies Z6043 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane ([0167]) which is structure e12. SUGIKI generally also teaches ([0090]) 3-glycidoxypropylmethyldimethoxysilane (which is e25 and e28), 3-glycidoxypropyltrimethoxysilane (which is e23 and possibly e26 (see 112(b) rejection above), 3-glycidoxypropylmethyldiethoxysilane (which is e24 and e27), and 3-glycidoxypropyltriethoxysilane (which is e21).
Regarding Claim 12, SUGIKI teaches the invention of Claim 9. SUGIKI generally teaches that its acidic or acid-anhydride polyolefin can be based on polyethylene or copolymers of ethylene and other monomers ([0038]) or based on polypropylene or copolymers of propylene and other monomers ([0038], [0039]). SUGIKI teaches and exemplifies P553A ([0164]) which the evidence of KOSATO discloses in a maleic anhydride-modified polypropylene.
Regarding Claims 15-16, SUGIKI teaches the invention of Claim 9. SUGIKI does not perform the melt viscosity tests recited by Claims 15-16, but because SUGIKI teaches a maleic anhydride-modified polypropylene ([0164], as evidenced by KOSATO p.8, par. (2-1)) and Z6043 2-(3,4-epoxycyclohexyl)ethyltrimethoxysilane ([0167]) components which anticipate all of the limitations of Claim 9 then one would inherently expect it to have melt viscosity behavior that is within the scope of the current invention and would satisfy the requirements of Claim 15 and Claim 16.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
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 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over SUGIKI (US-20210087438-A1) as evidenced by KOSATO (JP-2013203949-A).
Regarding Claim 13, SUGIKI, as evidenced by KOSATO, teaches the invention of Claim 9 above. SUGIKI generally teaches that its acidic or acid-anhydride polyolefin can be based on polyethylene or copolymers of ethylene and other monomers ([0038]). SUGIKI does not exemplify an anhydride-functionalized ethylene-based polymer, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of SUGIKI and use an anhydride-functionalized ethylene-based polymer based on the teachings of the specification.
Regarding Claim 14, SUGIKI, as evidenced by KOSATO, teaches the invention of Claim 9 above. SUGIKI generally teaches that its composition may contain a tackifier ([0096]) and teaches several different tackifiers that can be added for the purpose of improving adhesive strength ([0119]-[0127]). SUGIKI does not exemplify a tackifier, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of SUGIKI and include a tackifier for the purpose of improving adhesive strength.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over SUGIKI (US-20210087438-A1) as evidenced by KOSATO (JP-2013203949-A), in view of CASE (WO-9516005-A1)
Regarding Claim 17, SUGIKI, as evidenced by KOSATO, teaches the invention of Claim 9 above. SUGIKI teaches that its adhesive composition provides excellent adhesive strength under moist heat conditions ([0009]) has excellent acid and solvent (including water) resistance at high temperatures ([0180]) testing its adhesives at 95°C ([0178]), but does not test its composition for SAFT. CASE, in an invention of a moisture-curable, ethylene copolymer grafted with an alkoxysilane (Abstract), tests its adhesives for SAFT and teaches that the criterion for judging that an adhesive bond provides adhesion at elevated temperatures is that its SAFT should be a 100°C or more (p. 12, lines 26-28). This overlaps the limitation of 70-135°C that is recited by the claim. It would be obvious to one of ordinary skill in the art to modify high temperature adhesive invention of SUGIKI with the teachings of CASE and form an adhesive composition with a SAFT value which is above 100°C that is also within the range recited by the claim for the purpose of providing adhesion at elevated temperatures.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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