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 .
DETAILED ACTION
The Applicant’s reply filed on 6/9/26 is acknowledged. Claims 2-4, 7, 8, 14, 17, 20, 21, 34, 35, 39, 41 and 47-49 are pending. Claims 47-49 are new. Claims 17, 34, 35, and 39 have been withdrawn. Claims 2-4, 7, 8, 21, and 41 have been amended. Claims 2-4, 7, 8, 14, 20, 21, 41 and 47-49 are under consideration.
Rejections Withdrawn
The rejection of Claims 3 and 21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the amended claims.
The rejection of Claims 7 and 8 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn in view of the amended claims.
Rejections Maintained and New Grounds of Rejections
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2, 7, 8, 14, 20, 21, 41, 47 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Chisholm (US 2017/0137554; cited in IDS)
Chisholm teaches a multi-part acrylic cold curing composition (e.g. abstract). Chisholm teaches the composition comprises:
(i) a polymer comprising a copolymer of ethyl or methyl methacrylate and ethylhexyl acrylate (i.e. component formed from a first (meth)acrylate ester with an alkyl side chain of 3 or less carbon atoms; and a second (meth)acrylate ester with a primary, secondary or tertiary alkyl side chain of at least 5 carbon atoms) (e.g. paragraph 0036); and
an initiator (e.g. paragraph 0027 and 0040); and
(ii) a monomer component comprising a mixture of monofunctional and polyfunctional monomers (e.g. paragraph 0031) comprising:
diethylene glycol dimethacrylate (i.e. a first (meth)acrylate ester, where the (meth)acrylate ester is di-, tri-, or multi-functional) (e.g. paragraph 0031; Claim 2); and
ethyl methacrylate (i.e. a second (meth)acrylate ester with an alkyl side chain of 3 or less carbon atoms) (e.g. paragraph 0033); and
an accelerator (e.g. paragraph 0061).
Chisholm teaches that the monofunctional monomer is present at 0-20 wt% and the polyfunctional monomers are present at 2-30 wt% (e.g. paragraphs 0023 and 0033). This results in compositions wherein either of the first or second monomers are present in a greater amount by weight.
Regarding Claims 2, 7, 8, and 14, while there is not a single example comprising each of the claimed components, the ingredients are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Regarding Claims 20 and 21, Chisholm is silent as to the vapor pressure and dynamic dilution olfactometry odor concentration of the monomer component. However, the compositions of Chisholm comprises the claimed monomers in the claimed amounts. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In addition, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant's vapor pressure and dynamic dilution olfactometry odor concentration differs, and if so to what extent, from the teachings of Chisholm. Therefore the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Regarding Claim 41, Chisholm does not explicitly teach a kit comprising instructions. However, where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (see MPEP 2112.01.III).
Regarding Claim 47, Chisolm teaches that a preferred polymer powder is a homopolymer of ethyl methacrylate (i.e. 100%, or not less than 60%, ethyl methacrylate relative to the total weight of the polymer component) (e.g. paragraph 0038). Chisholm also teaches that in the liquid the monofunctional monomer, which may be ethyl methacrylate, is present at 0-20 wt% (i.e. less than 50 wt%) (e.g. paragraph 0033). In addition, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to vary the monomer concentrations through routine experimentation to arrive at the claimed values in order to optimize the resulting product. 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 49, Chisolm teaches that the polymer component is a powder and the monomer component is a liquid (e.g. abstract, Claim 1).
Allowable Subject Matter
Claims 3, 4 and 48 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 4 and 48 depend from claim 3, and it would not have been obvious to one of ordinary skill in the art at the time of filing to include a fragrance in the composition of Chisolm.
Response to Arguments
Applicant's arguments filed 6/9/26 have been fully considered but they are not persuasive. Arguments relevant to the current ground of rejection will be addressed below.
Applicant argues that Chisolm does not teach that the second (meth)acrylate ester is present in a lower amount by weight compared to the first (meth)acrylate ester.
This is not found persuasive. Chisholm teaches that the monofunctional monomer is present at 0-20 wt% and the polyfunctional monomers are present at 2-30 wt% (e.g. paragraphs 0023 and 0033). This results in compositions wherein either of the first or second monomers are present in a greater amount by weight.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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