DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 12/13/2023. The concurrently filed preliminary amendment is acknowledged. Original claims 1-17 and 19-20 and amended claim 18 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 12/13/2023, 03/26/2025, 04/23/2025 and 08/24/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objection – Specification
The disclosure is objected to because of the following informalities: a typographical error is noted at page 19, line 19; viz., “perioxide” should read –peroxide--. Appropriate correction is required.
Objection – Claim(s)
Claim 10 is objected to because of the following informalities: referring to line 7, “L1” should read –L1-- to match the corresponding variable character in antecedent Formula 2. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: omission of a period at the end of the claim (i.e., after Formula 2-4 compound structure). Appropriate correction is required.
Claim Interpretation
With respect to claims 1-18, recitation of “adhesion-imparting” in the preamble of each claim is considered non-limiting for purposes of claim construction because the body of each claim fully sets forth all constitutive repeating units of the claimed resin, and the preamble merely states the purpose or intended use of that resin. See MPEP 2111.02(II).
Claim Rejection – 35 U.S.C. 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.
Claim 17 is 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 Claim 17, the limiting significance of the expression “for an acryl-based adhesive, or for an amine-based adhesive” is unclear. The claim is directed to “[t]he adhesion-imparting resin of claim 1,” and it is not apparent whether said expression is intended to imply additional structural or compositional limitation(s) beyond the positively recited features incorporated from claim 1, or is merely a non-limiting statement of intended use or application of said resin. For purposes of substantive examination, Examiner is adopting the latter interpretation of the expression. Should Applicant disagree, it is requested that Applicant point out on the record wherein the expression further substantively limits the scope of claim 1.
Common Ownership Notice
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 Rejections – 35 U.S.C. 102
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.
Claims 1, 7-11 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al (US 6489396 B2) (‘Nakamura’).
Regarding Claims 1, 7 and 17, Nakamura is directed to (meth)acrylate ester-based resin composition suitable for use in, inter alia, adhesives and pressure-sensitive adhesives (see Abs. and Col. 1, lines 10-20). In at least Examples 26 and 28-31 (see Col. 41, line 55 to Col. 43, line 35 and Col. 45, Table 9), Nakamura describes epoxy-group containing acrylic polymer having a weight-average molecular weight of 5,000 g/mol or less (viz., 5000 or 4800) and comprising a repeating unit (a) derived from styrene (St, a styrene-based species of petroleum resin monomer, per claim 7) and a repeating unit (b) derived from an ethylenically unsaturated monomer containing an epoxy group (viz., glycidyl methacrylate (GMA)). As such, Nakamura is found to describe specific embodiments of Applicant’s adhesion-imparting resin as claimed.
Regarding Claim 8, Nakamura discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the styrene-based monomer (St) corresponds to recited Formula 1, when R1 and R2 are each hydrogen and a1 is an integer of 5.
Regarding Claims 9-11, Nakamura discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the ethylenically unsaturated monomer containing an epoxy group (GMA) includes an acryloyl group [for claim 9], and is a compound represented by recited Formula 2 (when L1 is -C(=O)-O-, n1 and n2 are each an integer of 0, R3 is a methyl group and R4 – R6 are each hydrogen) [for claim 10] and recited Formula 2-3 [for claim 11].
Regarding Claim 18, Nakamura discloses the adhesion-imparting resin of claim 1 as discussed above. Nakamura further discloses a method of preparing the adhesion-imparting resin according to claim 1, the method comprising (a) obtaining a polymer by carrying out a polymerization reaction of a reaction composition comprising a petroleum resin monomer (i.e., St) and an ethylenically unsaturated monomer containing an epoxy group (i.e., GMA) (see Col. 41, line 63 to Col. 42, line 55); and (b) obtaining an adhesion-imparting resin by carrying out a degassing reaction of the polymer (see Col. 42, lines 55-59; resultant acrylic resin solution heated under reduced pressure to distill off the solvent components).
Claims 1-2, 7-11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blasius, Jr. et al (US 6984694 B2) (‘Blasius’).
Regarding Claims 1-2, and 7, Blasius is drawn to chain extenders made from epoxy-functional (meth)acrylic monomers and styrenic and/or (meth)acrylic monomers (see Abs. and Col. 3, lines 50-54). Blasius in Table 1 (Col. 16) describes a Chain Extender D having a weight-average molecular weight of 5,000 g/mol or less (viz., 2535) [for claim 2/1] and comprising a repeating unit (a) derived from styrene (STY, a styrene-based species of petroleum resin monomer, per claim 7) and a repeating unit (b) derived from an ethylenically unsaturated monomer containing an epoxy group (viz., glycidyl methacrylate (GMA)). As such, Blasius is found to describe a specific embodiment of Applicant’s adhesion-imparting resin as claimed.
Regarding Claim 8, Blasius discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the styrene-based monomer (St) corresponds to recited Formula 1, when R1 and R2 are each hydrogen and a1 is an integer of 5.
Regarding Claims 9-11, Blasius discloses the adhesion-imparting resin of claim 7 as discussed above, wherein the ethylenically unsaturated monomer containing an epoxy group (GMA) includes an acryloyl group [for claim 9], and is a compound represented by recited Formula 2 (when L1 is -C(=O)-O-, n1 and n2 are each an integer of 0, R3 is a methyl group and R4 – R6 are each hydrogen) [for claim 10] and recited Formula 2-3 [for claim 11].
Regarding Claim 17, Blasius discloses the adhesion-imparting resin of claim 1, as discussed above. Further as to added recitation “for an acryl-based adhesive, or for an amine-based adhesive,” Examiner notes that such intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. See MPEP 2111.02. Only if such structural difference exists does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the position is taken that the intended use recited in claim 17 does not result in a structural difference between the presently claimed invention and the prior art and, further, that the Chain Extender D of Blasius is intrinsically capable of performing the intended use, based on its identity in constitutive repeating units and weight-average molecular weight to the resin of the present invention.
Allowable Subject Matter
Claims 3-6, 12-16, and 19-20 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
The closest prior art to Nakamura et al and Blasius, Jr., et al, discussed above, does not describe the inventions of instant claims 3-6, 12-16, and 19-20, or provide proper rationale to modify either of their respective inventions into the invention of any of said claims.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/06-24-26
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