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 .
Election/Restrictions
Claims 15-17 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/22/2026.
Applicant’s election without traverse of Group I (claims 1-14 and 18) in the reply filed on 7/22/2026 is acknowledged.
Information Disclosure Statement
The IDS is objected to because of the following reasons:
The document provided as EP 2229930 A1 is illegible; and
The document Ye Qian et al., "Surface-Initiated Ring-Opening Metathesis Polymerization of Pentadecafluorooctyl-5 norbornene-2-carboxylate from Variable Substrates Modified with Sticky Biomimic Initiator" is not provided.
Specification
The abstract is objected to because it is greater than 150 words in length and contains the phrase “the present invention refers to…” which can be implied. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The specification is objected to for not complying with the arrangement of sections of the specification according to 37 CFR 1.77 as described in MPEP 608.01(a). Although some sections of the specification do comply, the applicant is encouraged to consider arranging the specification according to the structure set forth in the cited code above.
Claim Interpretation
Claim 1, lines 2-3 and 7-8 describe the claimed primer(s)/compounds used as primers as comprising at least one polymerizable C-C bond and further recites “wherein the primers comprise 5-norbornen-2-yl groups as polymerizable C-C double bonds”. This is taken to mean that the compound referred to as primer(s) or used as a primer must contain a 5-norbornen-2-yl group.
Claim 14, lines 2-3, recite “and the composition is photopolymerizable… appliable… and then curable…”. This is taken to mean that the composition is capable of being photopolymerized, capable of being applied to a substrate, and capable of being cured by irradiation. Additionally, claim 14 recites “the composition is appliable to the substrate to be coated in one step…”, this is taken to mean that the composition is capable of being applied in one step, and that the application of said composition is considered as one step, even if the application is applied in layers.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 9 of the claim, it recites “characterized in that compounds are used as primers in the polymerizable composition that…”. To correct for grammar, it could instead say “characterized in that compounds that are used as primers in the polymerizable composition unless the applicant considers the suggested alteration as posing an unwanted change in the scope or interpretation of the claim.
Claim 18 objected to because of the following informalities: lines 6 and 7 of the claim recite "or a 3,4-dihydroxyphenyl groups", this appears to be a disagreement about the claimed singularity (indicated by the article “a”) and the claimed plurality (indicated by the plural “groups”). 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 1-14 and 18 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 claims 1-14 and 18 recite “the use of compounds” in the claim preamble which indicates that a method or process is claimed. The claims fail to point out and distinctly claim the invention and is held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q). For examination purposes, the claim is taken to be drawn to the thiol-ene-based polymerizable composition.
Further regarding claims 3 and 4, the claims recite, respectively, “the spacer moiety of the primers has a chain length of at least 3 or at least 6 carbon atoms” and “the spacer moiety of the primers has a chain length of not more than 12 or not more than 10 carbon atoms”. It is unclear if spacer moieties with lengths between 3-6 carbon atoms (in the case of claim 3) or between 10-12 carbon atoms (in the case of claim 4) are being claimed. This renders the scope of the claims as indefinite. For examination purposes, the length of the spacer moieties according to claim 3 is taken to be at least 3 three carbon atoms and according to claim 4 to be at most 12 carbon atoms long.
Further regarding claims 11 and 12, both claims recite the word “approximately” before and amount of each claimed component. “Approximately” is a relative term which renders the claim indefinite since it is not defined by the claim and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, to give scope to the word “approximately” each numerical value that is modified by the term will be treated as meaning +/- 10% of that numerical value. For instance, the phrase “approximately 10 wt.%” is taken to be 9 wt.% to 11 wt.%.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 and 18 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to "a use of compounds". Further, MPEP 2173.05(q) says, “‘use’ claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. For examination purposes, the claims will be read as directed toward a composition of matter referred to as “a thiol-ene-based polymerizable composition” in the instant application.
Claim Rejections - 35 USC § 103
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.
Claims 1-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Malkoch (WO 2018077973 A1) in view of Clark (WO 8906666 A1).
Regarding claim 1, Malkoch discloses a thiol-ene-based composition for treating bone fractures (Abstract; Figure 7, Primer P7) comprising:
1) 1,3,3-triallyl-1,3,5-triazine-2,4,6-trione (TATATO) as a monomer with at least two polymerizable C-C double bonds per molecule;
2) tris[2-(3-mercaptopropionyloxy)ethyl]isocyanurate (TEMPIC) as a polyol with at least two SH groups per molecule;
3) Lithium phenyl(2,4,6- trimethylbenzoyl) phosphinate (LAP) as a radical photoinitiator;
4) Bis (allyloxymethyl)methylpropanamido) ethyl) azanediyl)bis(methylene))bis(phosphonic acid) (Phn)2 -EDA-G1-(ene)2 as a compound that can be used as a primer comprising phosphonic acid groups as adhesion-providing moieties.
However, Malkoch does not teach compounds that can be used as a primer comprising 5-norbornen-2-yl groups.
Clark teaches thiol-ene adhesive formulations containing norbornene containing adhesion promoters used as surface primers. Clark teaches the following structure for adhesion promoters:
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Where Q is CH2, R7 is a divalent organic residues having 2-40 carbon atoms, R6 is H or a methyl group, and a is 1 or 2 (abstract, structure (II); page 10).
Both Malkoch and Clark are analogous to the instant application in that they pertain to thiol-ene-based adhesive compositions.
The compounds that can be used as primers as taught by Malkoch and Clark and their functions were known in the art, so a person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to substitute the (Phn)2 -EDA-G1-(ene)2 of Malkoch with the adhesion promoter of Clark and the results would have been predictable.
Regarding claim 2, the composition of Malkoch in view of Clark applies as described above and the compound acting as a primer can have two 5-norbornen-2-yl groups when a is 2.
Regarding claims 3 and 4, the composition of Malkoch in view of Clark applies as described above and further, and Clark further teaches a primer as mono or bis 5-norbornenecarboxyhexylphosphate, which is a compound according to the structure pictured above with a spacer moiety (denoted as R7) comprising 6 carbons (as hexyl) (claim 10). The examiner notes that this is similar to the applicant’s “(Phn-6C-Norb) (E4)” shown on page 12, lines 3-4 of the instant specification. Further, Clark teaches that R7 is suitably a C2-C10 alkylene group (page 9, line 32).
Regarding claims 5-8, the composition of Malkoch in view of Clark applies as described above regarding the monomer used (TATATO) and the polythiol used (TEMPIC).
Regarding claims 9 and 14, the composition of Malkoch in view of Clark applies as described above. Further Malkoch discloses the composition of Primer P7 (described above) in Fig. 7 which is a one-component adhesive referred to as a “primer”. Malkoch further describes the primer as being applied to a substrate (of which the application step can be considered “one step” as claimed), dried, and cured via irradiation (Page 22, lines 10-32). Further, the Primer P7 is capable of being applied to a substrate, photopolymerizable, and curable by irradiation.
Regarding claim 10, Malkoch further teaches a two-component system in which the first component comprises the primer. Malkoch describes the combined use of the primer (the first component comprising the compound used as a primer) and an adhesive composite (described in Fig. 8) which do not comprise the primers or compounds useable as primers.
Regarding claims 11 and 12, the composition of Malkoch in view of Clark applies to the “Primer P7” (described above) as follows:
4 wt.% of LAP as the radical initiator;
31 wt.% of TATATO as a monomer;
53 wt.% of TEMPIC as a polythiol;
11.8 wt.% (Phn)2 -EDA-G1-(ene)2 as a primer (which is substituted for the primer of Clark).
Further, with respect to claim 12, the composition above is a one-component composition. The examiner notes that the above amounts of the components are with respect to each other without regard to the solvent present in the composition such that the sum of the components amounts to 100%. The examiner further notes that the applicant exemplifies the compositions without explicit reference to solvents used but implies the presence of a solvent by describing that the compositions were applied and then dried in page 48, line 8 of the instant specification.
Regarding claim 13, the composition of Malkoch in view of Clark comprises LAP, a photoinitiator, which makes the composition photopolymerizable (page 6, lines 23-25).
Regarding claim 18, the composition of Malkoch in view of Clark comprises a neobornene derivative primer according to the structure:
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As applied to the formula
(Norb)n – SP – (AM)m
Where Norb is a 5-norborn-2-yl radical; AM represents a phosphonic acid group; and SP (analogous to R7) is a divalent spacer group of 2-40 carbon atoms (abstract, structure (II); page 10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lequeux (WO 2013105049 A1) discloses compositions comprising phosphonic acid-containing monomers as primers in amounts of 17-20 wt%.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
