DETAILED ACTION
This communication responds to the application and amended claim set filed November 28, 2023, and the Response to Restriction Requirement filed September 2, 2025. Claims 1-20 are currently pending.
The Requirement for Restriction dated July 2, 2025 is WITHDRAWN.
Claims 1-20 are REJECTED for the reasons set forth below.
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
Upon further consideration, the July 2 Requirement for Restriction does not further compact prosecution and is WITHDRAWN. Claims 1-20 are under examination.
Priority
This application is the national stage entry of PCT/IB2022/055150, filed June 2, 2022, which claims priority to US 63/196,056, filed June 2, 2021.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Moren (US 6,252,023) in view of Imai (WO 02/055622).
Regarding claims 1 and 7, Moren teaches an adhesive composition comprising an organoborane amine complex that is part of a polymerization system further comprising acrylic monomers. (Abstract.) The acrylic monomers may be acrylic monomer blends. (col. 16, lines 27-28.)
The difference between Moren and the present claims is that Moren does not teach that the acrylic monomer blend includes a cyclic imide-containing (meth)acrylate. However, such acrylic blends are known in the art. For example, Imai teaches an adhesive composition comprising a first (meth)acrylate and a second (meth)acrylate having a cyclic imide group. (Abstract.) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the acrylate blend of monomers in Imai into the adhesive composition of Moren to form an adhesive that is resistant to acid rain and has a high humidity resistance. (See Imai, p. 3, lines 1-3.)
Regarding claims 2 and 18, Moren teaches that the composition may be packaged as a two-part adhesive, wherein the monomers are included in the first part, and the second part comprises the organoborane amine complex. (col. 20, lines 7-16.)
Regarding claims 3 and 4, Moren teaches that the first part of the two-part adhesive package also comprises an amine-reactive compound. (col. 20, lines 9-12.) This amine-reactive compound liberates the organoborane from the amine, such that, upon combining the two parts, polymerization is initiated. (col. 5, lines 35-37.)
Regarding claims 5 and 16, Moren teaches that the amine-reactive compound may be an acid, an aldehyde, an anhydride, an isocyanate, an acid chloride, or a sulfonyl chloride. (col. 5, lines 14-20.)
Regarding claims 6 and 17, as discussed above, Moren teaches the inclusion of an amine-reactive compound that liberates the organoborane compound. Claims 6 and 17 do not limit the additional compound to only metal salts. That is, because claims 6 and 17 also includes the limitations of claims 3 and 4 (from which claims 17 and 6 depend, respectively) claims 6 and 17 also contain the limitation that the additional compound may be a decomplexing agent for the organoborane complex. Because Moren teaches such a compound, claims 6 and 17 are rendered obvious over Moren in view of Imai.
Regarding claim 8, Moren teaches that organoborane complex preferably has the following structure:
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(col. 6, line 63 – col. 7, line 33.) An exemplar organoborane amine complex comprises triethyl borane and 1,6-hexanediamine.
Regarding claim 9 and 19, Moren teaches that the composition further includes additives such as elastomeric materials. (col. 18, lines 49-50, 57-58.)
Regarding claims 10 and 20, as discussed above, Moren teaches a blend of acrylic monomers, and Imai provides the teaching regarding the particular blend of monomers in the composition of Moren. Imai further teaches the inclusion of a bifunctional acrylate, such as 1,6-hexanediol diacrylate, to provide improved cohesive strength. (p. 7, lines 28-31.)
Regarding claim 11, Imai teaches that a preferred cyclic imideacrylate is Aronix TO 1429, which has the following structure:
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(Imai, Ex. 1, p. 10, line 17; CAS 106646-48-2 Data Sheet.)
Regarding claims 12-15, Moren teaches a process for forming an article in which the two-part adhesive package discussed above is combined prior to use, then is applied to at least one substrate, the substrates are joined together and are cured at room temperature. The substrates are preferably low surface energy substrates. (col. 5, lines 52-58; col. 20, lines 14-15; col. 21, lines 1-11.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763