DETAILED ACTION
Applicant's election with traverse of Group I, claims 1 to 11, in the reply filed on 10/1/25 is acknowledged. The traversal is on the grounds that claim 1 is non-obvious and not anticipated and thus makes a contribution over the prior art. This is not found persuasive because, as evidenced from the rejections below, the Examiner finds claim 1 to be both anticipated and obvious. Note that, as a result of the election, the applica-tion has been transferred and it is a different Examiner making this determination.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
Claims 3 to 5 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.
In claim 3, it is unclear what is meant by “average molecular weight” as there are
various standards by which average molecular weight is determined (for instance Mw, Mn, Mz).
In claim 4, reference to “the diol D” lacks antecedent basis.
In claim 5, note that there is a comma “,” after “metal (meth)acrylate” such that this indicates the end of a phrase. With this in mind it is unclear what “having a hydroxyl group…” modifies.
Claim Interpretation
Note that the component c) is optional in claim 1 such that the limitations in claims 3 and 4 need not be found in the prior art for these claims to be anticipated and/or rendered obvious.
Also note that while the two-component composition uses the closed phrase “consisting of”, each component K1 and K2 use the open phrase “comprising” such that K1 and K2 can contain additional components not specifically recited in the claims.
Claim Rejections - 35 USC § 102/103
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.
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 1 to 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uehara et al. 2016/0137765.
Uehara et al. teach a surface treatment composition that contains an acrylic
copolymer. See paragraphs 16 to 22, noting that the monomer (b) is a cyclic acrylate ester which corresponds to claimed component a) and the monomer (c) is a long chain acrylate ester corresponding to claimed component b). Fluorine monomer is embraced by the claims by virtue of the “comprising” term as noted supra.
The Examiner stresses that the entire teachings in Uehara et al. are relevant to the claims but for rejection explanation and specific exemplification the Examiner draws attention to Synthesis Example 1, paragraph 223.
In this example benzyl methacrylate (meeting a) and claim 2) is admixed with stearyl methacrylate (meeting b)) among other components. The ratio of these two components is around 1.9:1, falling within the claimed range of 1:1 to 9:1. Also, as a summation of the total monomer components, these monomers are present in a total amount of 34 wt% based on the corresponding K1 component in Uehara et al.
All of the monomers corresponding to those found in K1 are added to the vessel prior to the addition of tert-butyl perpivalate, a free radical initiator. See also paragraph 193 which teaches that the monomers are preferably mixed prior to reacting. With this in mind, it follows that the free radical initiator is kept separately from the monomeric reactants prior to admixing such that this corresponds to separate components. That is, component K1 in Uehara et al. will contain the reactive monomers in the reaction vessel prior to the addition of the initiator K2. In this manner claims 1 and 2 are anticipated.
For claims 3 and 4, as noted supra the elastomer C is not a required component such that requirements of these claims are anticipated by Uehara et al.
For claim 5, see paragraphs 143 to 147 which specifically teaches various alkoxy functional silanes that can be present in the acrylate polymer. Such silanes are well known adhesion promoters due their ability to be incorporated into the polymer as well as possessing alkoxy groups that interact with the surface of substrates, thus adding to their adhesion.
Claims 1 to 6, 9 to 11 are rejected under 35 U.S.C. 103 as being unpatentable over CN110183975, as interpreted by the English language translation (attached and cited in the PTO-892).
CN teaches an acrylic ester adhesive that contains various acrylic monomers, a
polyurethane dimethacrylate and a core/shell polymer. See for instance the fourth para. and on under “Summary of the Invention”. This composition is in two parts. Of particular importance to the instant claims the Examiner draws specific attention to Embodiments 3 and 8.
In Embodiment 3 benzyl acrylate (meeting a) and claim 2), lauryl methacrylate and other components are present in component A. The monomers are present in a total amount falling within the 25 wt% to 75 wt% range and meet the claimed monomer A and monomer B ratio.
In addition to component A, Embodiment 3 has component B which contains benzoyl peroxide, a free radical initiator.
This composition differs from that claimed only in that lauryl methacrylate has 12 carbon atoms and claimed monomer B requires a linear alkyl radical having more than 12. It has been held that compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 I., among other sections of 2144.09. One having ordinary skill in the art would not have expected the difference of one CH2 group to have a dissimilar and unexpected difference such that the skilled artisan would have found it obvious to use a C13 methacrylate (or higher) rather than the C12 found in the CN reference.
In this manner claims 1 and 2 are rendered obvious.
For claims 3 and 4, note that the elastomer C is not required to be present in the claims such that the CN reference meets this requirement.
For claim 5, see the third to the last paragraph under the page with “Description” at the top which teaches the addition of an acrylic coupling agent. Coupling agents are, by definition, adhesin promoters. As such this requirement in claim 5 is met.
For claim 6, note in Embodiment 3 that the core shell polymer is present in component A in an amount of around 14 wt%, meeting this claim limitation.
For claim 9, again see component A found in Embodiment 3 in which contains 1,4 benzoquinone as an inhibitor in an amount as claimed.
For claims 10 and 11, see the component B in Embodiment 3 which contains the initiator in an amount of about 19 wt%.
Claims 1 to 4 and 7 to 9 are rejected under 35 U.S.C. 103 as being unpatentable over Grant et al. 4,731,982.
Grant et al. teach a sealant formed from a catalyzed acrylate monomer composi-
tion. Preferred monomers are found on the bottom of column 1. 2 of the 4 “long chain” acrylic esters meet the requirement of claimed B such that, given this limited selection the skilled artisan would have anticipated the claimed monomer B. Both of the hydroxy functional acrylic esters disclosed meet claimed monomer A.
This teaching differs from that claimed in that it does not show amounts of each monomer that meet the provisos of the total amount of A and B and the ratio of A to B.
Suitable ranges for each monomer are found in column 2, lines 15 to 20. For instance when 20% of the long chain acrylic ester meeting B is selected, approximately 86% of the range for the hydroxy functional acrylic ester will result in a ratio as claimed. On the other hand, when the amount of hydroxy functional acrylic ester is 50%, 50% of the range of long chain acrylic esters will result in a ratio as claimed. Clearly one having ordinary skill in the art would have found ratios within the claimed range to have been obvious and well within routine experimentation of the teachings of Grant et al.
A similar analysis can be performed on the amounts of the components disclosed by Grant et al. and those found in claim 1. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
In this manner the totality of claimed component K1 is rendered obvious.
In addition to the above, column 2, lines 50 to 60, teaches that the catalyst be added as a separate solution in a solvent or a portion can be removed and added separately. Both of these meet the claimed component K2.
This renders obvious the limitations in claim 1.
For claim 2 note that a hydroxyethyl group is taught as a preferred monomer.
For claims 3 and 4, note that this is not a required component in the claimed composition.
For claim 7 see column 2, lines 50 to 55, which teaches adding “a portion” of the catalyst separately, indicating that the remaining portion is present in the monomer mix-ture that is rendered obvious above. Note that column 3, lines 36 to 40, teach amounts of each initiator and, depending on the cure speed, the degree of curing, the type of curing and the intended utility of the final composition, adjusting the amount of initiator that is separated would have been within the skill of the ordinary artisan.
For clam 8, see column 5, lines 32 to 40, that teaches adding silica in an amount that does not result in impaired flexibility or increased viscosity. As such one having ordinary skill in the art would have found it obvious to adjust the amount of silica in the composition of Grant et al. in an effort to determine the operable and/or optimum amount for each desired end utility.
The Examiner acknowledges that some of the claimed limitations fall outside of the preferred range in Grant et al. but applicants are reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. See MPEP 2123.
For claim 9 note that Example 1 includes benzoquinone, an inhibitor, in am amount as claimed such that the skilled artisan would have found such an amount in the obvious composition described above to have been obvious. See also column 2, line 4, which teaches the addition of stabilizers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
12/27/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765