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
Claims 1-30 are pending.
Claims 12-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/21/2026.
Claims 1-11 are examined on their merits.
Claim Objections
Claims 9 and 10 are objected to because of the following informalities:
Claims 9 and 10 recite, “characterized in that monomer type A/B in an amount of…”,
It appears applicants intended to recite, “characterized in that monomer type A/B is present in an amount of…”.
Appropriate correction is required.
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.
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.
Claims 2-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation “polyoxyalkylene polyol”, and the claim also recites “wherein the polyol is preferably a diol, a polyethylene oxide, or a polypropylene oxide” which is the narrower statement of the range/limitation.
Claim 3 recites the broad recitation “monomer type A is selected from the group consisting of C1 to C12 esters of acrylic acid or methacrylic acid such as methyl acrylate, ethyl acrylate, n-butyl acrylate, methyl methacrylate, ethyl methacrylate or n-butyl methacrylate, vinyl esters such as vinyl acetate or vinyl propionate, vinyl ethers, fumarates, maleates, styrenes, acrylonitriles, ethylenes, or mixtures thereof”, and the claim also recites “wherein monomer type A is preferably n-butyl methacrylate (n- BMA) or methyl methacrylate (MMA) or a mixture thereof” which is the narrower statement of the range/limitation.
Furthermore, regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the broad recitation “monomer type B is selected from the group consisting of vinyltrichlorosilane, methylvinyldichlorosilane,vinyltriethoxysilane, vinyltrimethoxysilane, vinyltris(2-methoxyethoxy)silane, vinyltriacetoxysilane, vinylmethyldiethoxysilane, vinyldimethylethoxysilane, vinylmethyldimethoxysilane, vinyldimethylmethoxysilane, vinylmethyldiacetoxysilane, vinyltriisopropoxysilane, vinyltriisopropenoxysilane, vinyltris(methylethylketoximino)silane, divinyltetramethyldisiloxane, tetravinyltetramethylcyclotetrasiloxane, 3-acryloxypropyldimethylmethoxysilane, 3-acryloxypropyldimethylethoxysilane, 3-acryloxypropyltrimethoxysilane, 3-acryloxypropyltriethoxysilane, 3-methacryloxypropyltrimethoxysilane, 3-methacryloxypropyltriethoxysilane, 3-methyacryloxypropylmethyldiethoxysilane, 3-methyacryloxypropylmethyldimethoxysilane, 3-methacryloxypropyltris(2-methoxyethoxy)silane, 4-(3-trimethoxysilylpropyl)benzylstyrenesulfonate, allyltriethoxysilane, allyltrimethoxysilane and oligomers of these silanes”, and the claim also recites “monomer type A being preferably methacryloxypropyltrimethoxysilane” which is the narrower statement of the range/limitation.
Claim 6 recites the broad recitation “the initiator used in the radical polymerization process is a peroxide initiator or an azo initiator”, and the claim also recites “which is preferably selected from the group consisting of dilauroyl peroxide, dibenzoyl peroxide, and azobis (isobutyronitrile)” which is the narrower statement of the range/limitation.
Claim 7 recites the broad recitation “the chain transfer agent is an organohalogen compound, an unsaturated aromatic compound or a thiol”, and the claim also recites “which is preferably selected from the group consisting of tetrachloromethane, 2,4-diphenyl-4-methyl-1- pentene, dodecyl mercaptan (DDM), thioglycolic acid, octylthioglycolate, and thioglycerol” which is the narrower statement of the range/limitation, and the claim also recites “and particularly preferably dodecyl mercaptan”, which is the narrowest statement of the range/limitation.
Claim 8 recites the broad recitation “the polyol or the prepolymer with terminal NCO groups is obtained in an amount of 20 percent by weight to 90 percent by weight”, and the claim also recites “preferably from 40 percent by weight to 80 percent by weight” which is the narrower statement of the range/limitation, and the claim also recites “and particularly preferably from 50 percent by weight to 60 percent by weight”, which is the narrowest statement of the range/limitation.
Claim 9 recites the broad recitation “monomer type A in an amount of 30 percent by weight to 95 percent by weight”, and the claim also recites “preferably from 50 percent by weight to 90 percent by weight” which is the narrower statement of the range/limitation, and the claim also recites “and particularly preferably from 70 percent by weight to 85 percent by weight”, which is the narrowest statement of the range/limitation.
Claim 10 recites the broad recitation “monomer type B in an amount of 5 percent by weight to 70 percent by weight”, and the claim also recites “preferably from 10 percent by weight to 50 percent by weight” which is the narrower statement of the range/limitation, and the claim also recites “and particularly preferably from 15 percent by weight to 30 percent by weight”, which is the narrowest statement of the range/limitation.
Claim 11 recites the broad recitation “the low-molecular-weight polymer has a number-average molecular weight of 3,000-200,000 g/mol”, and the claim also recites “preferably of 5,000-100,000 g/mol” which is the narrower statement of the range/limitation, and the claim also recites “and particularly preferably of 10,000-60,000 g/mol”, which is the narrowest statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For the purpose of examination, the examiner has interpreted the claims according to the broad range/limitation.
Claims 3 and 4 are rejected because they do not use the proper Markush language
A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. The closed group of alternatives may be set forth as "a material selected from the group consisting of A, B, and C". Claims 3 and 4 set forth a group of alternatives as “monomer selected from group consisting of A, B, or C”. The use of “or” makes it unclear if applicants intend for the selection to be made from a closed or open list of alternatives. For the purpose of examination, the examiner has interpreted claims 3 and 4 as a closed group of alternatives.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stanley (US 5021507 A; cited on the IDS filed 10/20/2023).
Stanley is directed towards acrylic modified reactive curing urethane hot melt adhesive compositions. Stanley teaches an embodiment wherein a mixture of ethylenically unsaturated monomers, which do not contain active hydrogens, are polymerized in the presence of an already formed isocyanate terminated urethane prepolymer to form a low molecular weight polymer [c. 2, ll. 60-70; c. 6, ll. 22-27]. Furthermore, Stanley teaches this method of in-situ vinyl polymerization in the presence of the prepolymer is preferable in embodiments wherein the ethylenically unsaturated monomer mixture comprises monomers with moisture reactive functional groups [c. 2, ll. 60-70]. Stanley teaches the reactive curing hot melt adhesive contains about 5-90 wt. % of the isocyanate terminated urethane prepolymer and 95 to 10 wt. % of the low molecular weight polymer [c. 5 ll. 55-60; c. 6, ll. 15-20; Stanley claim 1]. See claims 1 and 8.
Stanley teaches the isocyanate terminated urethane prepolymer is prepared by the condensation of a polyisocyanate and a polyol, wherein suitable polyols include polyethylene oxide and polypropylene oxide [c. 4, ll. 30-40]. See claim 2.
Stanley teaches suitable ethylenically unsaturated monomers which do not contain active hydrogens include butyl methacrylate and methyl methacrylate [c. 3, ll. 10-15]. Stanley teaches embodiments wherein the ethylenically unsaturated monomer mixture further comprises monomers with moisture reactive functional groups have been shown to provide potentially commercially significant results [c. 3, ll. 25-50]. Stanley teaches 3-methacryloxypropyltrimethoxysilane as a suitable monomer of this class, as it participates directly in the reaction by free radical polymerization and does not contain an active hydrogen [c. 3, ll. 50-60]. Stanley teaches the silane with moisture reactive functional groups preferably comprises 5-30 wt. % of the ethylenically unsaturated monomer mixture and low molecular weight copolymer thereof [c. 3, ll. 40-50]. See claims 3-5, 9, and 10.
Stanley teaches the low molecular weight copolymer is formed from the radical polymerization of the ethylenically unsaturated monomer mixture, wherein the molecular weight is controlled by a dodecyl mercaptan chain transfer agent [c. 5, ll. 30-40]. Stanley exemplifies the use of benzoyl peroxide and azobisisobutyronitrile as free radical initiators [example 1; c. 17, table 1 caption]. See claims 6 and 7.
In light of the teachings of Stanley, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to produce a polymer composition from an isocyanate terminated polyether polyol and an ethylenically unsaturated monomer mixture comprising butyl methacrylate, methyl methacrylate, and 3-methacryloxypropyltrimethoxysilane, wherein the ethylenically unsaturated monomer mixture is radically polymerized with a chain transfer agent to produce a low molecular weight copolymer, as Stanley teaches a process comprising these steps, components, and amounts thereof. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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