DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 01/03/2024. Following entry of the concurrently filed preliminary amendment, new claims 17-32 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 .
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 01/03/2024 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 – Claims
Claims 18-20 and 22-30 are objected to because of the following informalities: replacement of “characterized in that” in each of said claims with –wherein-- is recommended.
Claims 18-31 are objected to because of the following informalities: insertion of –crosslinkable two-component-- before “composition” in each of said claims is recommended to secure consistency in terminology throughout the claims.
Claim 22 is objected to because of the following informalities: omission of a period at the end of the claim (after monomer structure “(III-F)”) and insertion of –and-- between the final two monomer structures (III-E) and (III-F).
Claim 26 is objected to because of the following informalities: omission of a period at the end of the claim and insertion of –and-- between the final two compound structures.
Claim 29 is objected to because of the following informalities: “pka” and “pka1” should read –pKa-- and –pKa1--, respectively, to secure consistency in terminology throughout the claims (cf., claim 17).
Appropriate correction of the above-noted claims is required.
Claim Rejections – 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 32 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 32, the claim provides the limitation to “the coating” in line 2. There is no proper and sufficient antecedent basis for this limitation in the claim nor in any claim upon which claim 32 depends (currently, base claim 17). This ground of rejection may be obviated by deleting “the” before “coating” in line 2.
Claim Rejections – Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-20, 24-25 and 29-34 of copending Application No. 18/576,224 (reference application; published as US 2024/0309130 A1), alone, or in view of Chiao (US 4656229).
Although the claims at issue are not identical, they are not patentably distinct from each other because they differ merely in matters of scope and/or semantics.
In particular, pending claim 17 and copending claim 18 are both drawn to a crosslinkable, two-component composition comprising: an iodonium salt having one of identically defined formulae (I-A), (I-B) or (I-C); an organic or mineral acid having a pKa or pKa1 ranging from 0.3 to 5 measured in water at 25oC; at least one (meth)acrylate monomer M1; and a component B comprising at least one dihydropyridine compound having one of five identically defined formulae ((VI) to (X) in claim 17 and (III) to (VII) in claim 18). While pending claim 17 further defines (meth)acrylate monomer M1 as having one of the formulae (II), (III) or (IV), copending claim 24 recites that the composition is characterized in that the monomer M1 is chosen from compounds designated as (VIII-A) to (VIII-C) and (IX-A) to (IX-F), each of which is a species under instant formulae (II) or (III), as well as corresponding to the monomers (II-A) – (IIC) and (III-A) – (III-F), respectively, in pending claim 22. And while copending claim 18 further recites a component which is not positively recited in any of the pending claims, viz., “at least one photoinitiator P1,” pending claim 17 is couched in open (comprising) language and therefore does not exclude the same component from the claimed composition. As such, the pending claims read on the composition defined by the copending claims when the optional copper salt of formula (V-1) or copper complex of formula (V-2) of component A is omitted from the composition of the present invention.
Regarding pending claims 18-19, the claims are coextensive in scope with copending claims 19 and 20, respectively.
Regarding pending claim 20, the named iodonium salt is identical to the final salt listed in copending claim 20.
Regarding pending claim 21, recited range for total content of iodonium salt is not mentioned in the copending claims. Nevertheless, selection of an amount within that range would have been obvious to one of ordinary skill in the art in view of Chiao, wherein a similar two-part anaerobic curing adhesive composition, utilizing a first part comprising a mixture of free radical polymerizable, optionally substituted acrylic monomers and a diaryliodonium salt initiator and a second part comprising an aldehyde-amine condensation product as an activator, is disclosed (see, e.g., col. 2, ll. 20-24). Chiao generally teaches to use the salt in a preferred range from about 0.2 to 2%, based on weight of monomer (col. 6, ll. 50-55) and illustrates an adhesive composition wherein the first part has an iodonium salt concentration of 0.6% by weight (col. 10, Ex. #8). Given Chiao’s teachings, it would have been obvious to one of ordinary skill in the art to modify the composition of the copending claims by adjusting the total content of the iodonium salt to an amount within the claimed range.
Regarding pending claim 23, recited range for total content of (meth)acrylate monomer(s) M1 fully encompasses the range recited in copending claim 25 for the corresponding parameter.
Regarding pending claim 24, despite the naming of specific species of the copper salt of formula (V-1) and the copper complex of formula (V-2), both species remain optional selections as per base claim 17; therefore, the claim still reads on the composition defined by the copending claims as discussed above.
Regarding pending claim 25-26, the claims are coextensive in scope with copending claims 29 and 30, respectively.
Regarding pending claim 27, recited range of mole ratio of dihydropyridine compound(s) of formulae (VI) to (X)/iodonium salt (s) of formula (I-A) or (I-B) or (I-C)) fully encompasses the range recited in copending claim 31 for the corresponding parameter.
Regarding pending claim 28, recited organic acid chosen from carboxylic acids corresponds to the subject matter of copending claim 32.
Regarding pending claim 29, recited range for pKa or pKa1 is fully encompassed by the range recited in copending claim 18 for the corresponding parameter.
Regarding pending claim 30, the composition of copending claim 24/18 comprises a monomer M1 chosen from compounds that do not comprise any hydroxyalkyl (meth)acrylate.
Regarding pending claim 31, it is noted that copending claim 33 similarly recites an adhesive, mastic or coating comprising the composition defined in copending claim 18 and given the monomer M1 compounds recited in copending claim 24, it would have been obvious to one of ordinary skill in the art to include in said composition at least one (meth)acrylate monomer M1 having one of instant formulae (II) or (III), and thereby arrive at the present invention.
Regarding pending claim 32, it is noted that copending claim 34 similarly recites a process for assembling two substrates by adhesive bonding, the process comprising corresponding manipulative steps, wherein the first (coating) step employs a composition obtained by mixing components A and B as defined in copending claim 18. In view of the monomer M1 compounds recited in copending claim 24, it would have been obvious to one of ordinary skill in the art to include in said composition at least one (meth)acrylate monomer M1 having one of instant formulae (II) or (III) and thereby arrive at the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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 17-19, 21-26 and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Chiao (US 4656229) in view of Fang (US 2967173).
Regarding Claims 17, 18-19, 22, 25-26 and 28-29: reference to Chiao is directed to a two-part anaerobic curing adhesive composition, utilizing a first part (monomer base component) comprising a mixture of free radical polymerizable, optionally substituted acrylic monomers and a diaryliodonium salt initiator and a second part comprising an aldehyde-amine condensation product as an activator, is disclosed (see, e.g., col. 2, ll. 20-24). As suitable acrylic monomers, Chiao generally teaches monofunctional acrylate and methacrylate esters as useful monomers, in addition to several classes of polyfunctional (meth)acrylates and isocyanatohydroxyacrylate or isocyanato-aminoacrylate reaction products earlier described in columns 3-5 (see col. 5, lines 19-20). Chiao further teaches that, in preparing the described curable compositions, the required acrylic monomer may be a mixture of acrylic monomer rather than a single acrylic monomer (see col. 5, l. 47-50). Chiao then provides specific disclosure in Examples 1, 4 and 8 to a two-part (i.e., component) adhesive composition comprising a component A comprising at least one (meth)acrylate monomer (HEMA), an organic acid having, implicitly, a pKa or pKa1 ranging from 0.3 to 5 measured in water at 25oC (acrylic acid: pKa = 4.65 to 4.66 at 25oC) [for claims 17, 28-29] and diphenyl iodonium chloride or diphenyl iodonium hexafluorophosphate initiator [for claims 18-19]; and a component B comprising Vanax 808, which is the same compound used in the instant specification (cf., page 20, ll. 35-36). Vanax 808 is the tradename for 3,5-diethyl-1,2-dihydro-1-phenyl-2-propylpyridine, a dihydropyridine compound under instant formula (X) [for claims 17, 25] and which corresponds to the second-recited compound in claim 26.
Chiao differs from the claimed subject matter only in failing to disclose a component A comprising at least one (meth)acrylate monomer M1 having one of formula (II), (III) or (IV) as recited in independent claim 17 (and with omission of the optional copper salt or copper complex).
However, in analogous art relating to polymerizable esters of (meth)acrylic acid, Fang describes synthesis of the methacrylate ester of glyceryl carbonate and preparation of the homopolymer and copolymers thereof (see Examples 1-6). Fang’s synthesized methacrylate ester is a species under instant formulae (II) and (II-A) [for claims 17, 22]. Fang further teaches that polymers derived from such methacrylate esters are suitable for use in coating compositions and adhesives, and that they are crosslinkable by treating, e.g., by heating, with polyfunctional compounds capable of reacting with the cyclic carbonate residue of the methacrylate ester monomer (see col. 4, lines 59-70). In light of such teachings, an artisan of ordinary skill would have reasonably expected Fang’s methacrylate ester of glyceryl carbonate to be a viable candidate as an acrylic monomer of the monomer base component (component A) of Chiao’s adhesive composition. Accordingly, at the time of effective filing, it would have been obvious to one of ordinary skill in the art to modify the adhesive composition of Chiao by including in the monomer base component, a (meth)acrylate monomer M1 having the instant formula (II) or (II-A), namely the methacrylate ester of glyceryl carbonate as taught by Fang, with a reasonable expectation of success in obtaining an equivalent adhesive composition.
Regarding Claim 21, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above. Chiao further teaches to use the iodonium salt in a preferred range from about 0.2 to 2%, based on weight of monomer (col. 6, ll. 50-55) and illustrates an adhesive composition wherein the first part has an iodonium salt concentration of 0.63 and 0.6% by weight (cols. 9-10, Examples 1, 4 and #8). Given such teachings, it would have been obvious to one of ordinary skill in the art to adjust the total content of the iodonium salt in the modified composition of Chiao to an amount within the claimed range.
Regarding Claim 23, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above. Chiao further describes, as in Examples 8-9, a monomer base component comprising 36.7 parts by wt. of a 40% solution of PUO in HEMA, or 22.02 parts by wt. HEMA (36.7 · 0.60 = 22.02 HEMA) and 55.0 parts by wt. hydroxyethyl methacrylate, for a total content of 77.02 parts by wt. of the acrylate monomer composition, which falls well within the claimed weight percent range. It would have been obvious to one of ordinary skill in the art to include Fang’s methacrylate ester of glyceryl carbonate in the modified composition of Chiao at a total content comparable to that of the acrylate monomer composition used in these examples, with an expectation of obtaining equivalent results.
Regarding Claim 24, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above. While neither reference discloses the recited species of the copper salt of formula (V-1) and the copper complex of formula (V-2), both species remain optional selections as per base claim 17; therefore, claim 24 still reads on the composition defined by the base claim and which, as noted, is rendered obvious by the combination of Chiao and Fang.
Regarding Claim 30, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above. Chiao further teaches to use non-hydroxyl acrylic monomers, specifically diacetone acrylamide, 2-cyanoethyl acrylate, 3-cyanopropyl acrylate and 2-chloroethyl acrylate, which Chiao cites in a finite list of alternative examples along with hydroxyethyl acrylate, hydroxypropyl acrylate and 2-hydroxy-3-chloropropyl methacrylate (col. 8, lines 29-35). All acrylic monomers enumerated in this list are considered equivalents for the purposes of Chiao. It would have been obvious to one of ordinary skill in the art to further modify the adhesive composition of Chiao by substituting a hydroxyalkyl (meth)acrylate like HEMA by any of the cited non-hydroxyl acrylic monomers, as they are all considered equivalents known for the same purpose. Simple substitution of one known element/material for another to obtain predictable results, provides the rationale for a prima facie case of obviousness. See MPEP § 2143. Further, the resulting composition will meet all the requirements of claim 30.
Regarding Claim 31, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above, and one would expect the resulting modified composition of Chiao to function as an adhesive in accordance with Chiao’s stated aim to provide a two-part anaerobic adhesive (col. 1, lines 6-7; col. 2, lines 13-17).
Regarding Claim 32, Chiao in view of Fang renders obvious the composition as claimed in claim 17, as discussed above. Chiao further teaches a process for assembling two substrates by adhesive bonding comprising claimed process steps. See, e.g., column 7, line 67 to column 8, line 4 (“monomer component can be applied either to the surface which has been treated with the activator or to the appropriate mating surface to be bonded. The bonding operation is then carried out in a conventional manner by placing the two mating surfaces in abutting relationship and applying a moderate compressive force, if desired, to produce a relatively thin layer of adhesive between the two surfaces”) and column 8, lines 46-48 (“[t]he compositions of this invention cure (polymerize or set) at ambient temperatures but heat may be used to accelerate the rate of curing”). As one would expect the modified composition of Chiao to function as an adhesive in accordance with Chiao’s stated aim to provide a two-part anaerobic adhesive, it would have been obvious to one of ordinary skill in the art to utilize such composition when performing the disclosed adhesive bonding process.
Potentially Allowable Subject Matter
Claims 20 and 27 are deemed free of the prior art. However, in view of the claim objections and non-statutory double patenting rejection supra, no claims are in condition for allowance at this time.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to Chiao and Fang, discussed above, does not describe the inventions of claims 20 and 27, or provide proper rationale for modifying either of their respective inventions into the invention of claim 20 or 27. Furthermore, the other references of record, whether considered singularly or in any proper combination, cannot be seen to describe or adequately suggest the subject matters of said claims to one of ordinary skill in the art.
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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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-24-26
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Prosecution Insights