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
Applicant’s election without traverse of Group I claims 1, 3-8,10-11, 16-20 and 23 in the reply filed on 8/4/2025 is acknowledged.
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 3 and 10 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.
Claim 10 recites the limitation "the curable materials" in line 2. There is insufficient antecedent basis for this limitation in the claim. Because it depends from claim 1, examiner presumes “the curable materials” refers to all of the curable materials of claim 1 in total, and not just one type in particular.
Claim 3 states each curable material is a (meth)acrylic material, but it is unclear how (meth)acrylic acid can function as described for all of the curable materials; the metes and bounds of the claim are indefinite. Based on applicant’s specification, it appears the claim should read “derived from (meth)acrylic acid.”
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, 3-8, 10-11, 16-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Matzner et al, US20190224914A1.
Regarding claim 1, 3, 8, 17-18, Matzner teaches a curable formulation comprising curable elastomeric materials and silica, abstract. The curable elastomeric materials comprise a mono-functional elastomeric material in a concentration of 20-70 wt.% ¶[0278], and a multi-functional elastomeric material in a concentration of 10-30 wt.% ¶[0279], which read on the first two claimed elastomeric materials of claim 1, also known as components B and C in the instant specification. The weight percent ranges overlap with the claimed ranges for each material.
The formulation further comprises silica nanoparticles that are functionalized with curable groups so that they form bonds with moieties on their surface, ¶¶[0215, 0222], and is in a concentration of 1-20 wt.% of the formulation, ¶[0227]. The functionalized silica reads on the claimed curable multi-functional non-elastomeric material, also known as component D in the instant specification; the weight percent range encompasses the claimed range of no more than 5 wt.%.
Matzner teaches that the formulation further comprises additional curable materials, which can be either mono-functional, multi-functional or a combination thereof, ¶[0234]. The additional material can be non-elastomeric, ¶0241], and further lists examples of additional monofunctional (meth)acrylates such as isobornyl(meth)acrylate, which applicant also specifies (page 28 of the instant specification) as an example of the additional mono-functional non-elastomeric material of claim 17, which is known as component A in the instant specification. The total additional curable mono-functional material ranges from 10-30 wt.% ¶[0073], which encompasses the range of claim 18.
Regarding the claimed curable material that comprises at least two hydrogen bond forming groups, known as component E in the instant specification, applicant does not state if this material is to be elastomeric or non-elastomeric, therefore this additional material can be any additional curable material. Matzner teaches the elastomeric curable materials can comprise combinations of mono and multi-functional materials ¶[0062] and can comprise more than one of each, ¶[0072], and further teaches that the additional curable (non-elastomeric) material can comprise more than one ¶¶[0037-0038]. The total percent ranges Matzner teaches for each curable material, overlaps with the claimed ranges in claims 1 and 8 for the curable material forming hydrogen bonds (component E).
Matzner further teaches the functional groups for all of the curable materials are (meth)acrylates, ¶¶[0030, 0163, 0190, 0242-0243], which also reads on claim 3 and is one type of hydrogen bond forming group. For other hydrogen bond forming groups, Matzner also teaches amide groups in the elastomeric curable materials, ¶¶[0165, 0166, 0198]. The additional curable materials also have multiple hydrogen bond forming groups, Matzner lists examples of urethane acrylate oligomer, and polyethylene glycol diacrylate, to name two, ¶¶[0242-0243]. Therefore any of the additional curable materials that fall within the elastomeric or non-elastomeric groups taught by Matzner satisfy the curable material comprising at least two hydrogen bond forming groups (component E).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 4-7, Matzner teaches any of the elastomeric curable materials can be (meth)acrylamide functional ¶¶[0165, 0166, 0198], which has at least one hydrogen bond donor and at least one acceptor group, which reads on claims 4 and 7. The (meth)acrylamide hydrogen bond forming groups are separated from one another by no more than 2 atoms, which reads on claim 5. Matzner specifically mentions the (meth)acrylamide monomer ¶[0165] as a curable material, which has 2 hydrogen bond forming groups, and a molecular weight of 85.106 g/mol, therefore the ratio is 2/85.106 or 0.0235, which is greater than the claimed ratio of claim 6.
Regarding claims 10-11, Matzner teaches that all the curable materials include (meth)acrylate functional groups, ¶¶[0030, 0163, 0190, 0242-0243], which are hydrogen bonding, and satisfies the at least 50% limitation. Matzner further teaches the elastomeric materials can comprise urethane moieties for elasticity ¶¶[0158, 0191], which comprise carbamate groups.
Regarding claim 16, Matzner teaches the curable mono-functional elastomeric material comprises a total of 20-70 wt.% ¶[0278]. Any additional elastomeric or non-elastomeric curable material can be added in an amount of 1 wt.%, as long as the totals are within each range Matzner teaches for the mono and multi-functional elastomeric and non-elastomeric curable materials, therefore the range of 20:1 to 70:1 encompasses the claimed range.
Alternatively, the functionalized silica is added to the formulation in an amount of 1-20 wt.% ¶[0227], the functional groups can be (meth)acrylic which are hydrogen bonding, and can also be functionalized with multiple polymerizable groups ¶[0223], which means it can have functionalities of at least two hydrogen bond forming groups. Therefore the ratio of the curable mono-functional elastomeric material to the silica with at least two hydrogen bond forming groups can also be 20:1-70:1.
Regarding claim 19, Matzner teaches the silica particles can feature surface groups of amine groups ¶[0217], and then also states that the term “amine” as used in the disclosure can refer to primary, secondary, or tertiary amines, ¶¶[0444-0445].
Regarding claim 20, Matzner teaches the silica particles can be (meth)acrylate functional, which means there would be multiple (meth)acrylate groups on the silica surface, giving it a functionality of greater than 2.
Regarding claim 23, Matzner teaches in some of the embodiments a material formed by the formulation when hardened has a tear resistance of at least 4,000 N/m ¶[0048], which converts to 4.08 Kg/cm, and further teaches that in some of the embodiments the formulation when hardened has a tensile strength of at least 2 MPa, ¶[0050], both of which satisfy the claim.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766