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 .
Response to Amendment
An amendment responsive to the non-final Office Action dated November 20, 2025 was submitted on February 18, 2026. Claim 1 was amended. Claim 16 was added. Claim 3 was canceled. Claims 8-8 and 12 were previously canceled. Claims 1, 2, 4, 5, 9-11 and 13-16 are currently pending.
The amendments to claim 1 have overcome the prior art rejections of claims 1, 2, 4, 5, 9-11 and 13-15 (¶¶ 8-23 of the Office Action). These rejections have therefore been withdrawn. However, upon further consideration, new grounds of rejection of these claims have been made as detailed below. New claim 16 has also been addressed below.
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, 2, 4, 5, 9-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Schuft et al. (U.S. Patent Application Publication No. 2010/0101724 A1, cited in previous Office Action) in view of Osae et al. (U.S. Patent Application Publication No. 2012//0302695 A1, cited in previous Office Action), Wang et al. (U.S. Patent Application Publication No. 2006/0252866 A1, cited in previous Office Action) and Dohi et al. (U.S. Patent No. 4,554,301).
Regarding claim 1, Schuft discloses a (meth)acrylate-based two-part adhesive composition (Abstract of Schuft, two-part methacrylic adhesive), comprising: a first part, based on the total weight of the first part, comprising: at least one (meth)acrvlate monomer containing at least one hydroxyl group per molecule ([0071] of Schuft, (meth)acrylate component added to second part; [0046] of Schuft, methacrylate can be 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl(meth)acrylate), at least one (meth)acrvlic resin ([0045] of Schuft, methacrylate component may be present as a combination of a monomer and a polymer), and at least one amine-aldehyde condensation compound ([0014] of Schuft, second part includes an oxygen scavenger; [0067] of Schuft, oxygen scavenger can be an aldehyde/amine condensation product), and a second part, based on the total weight of the second part, comprising: at least one (meth)acrylate monomer containing at least one hydroxyl group per molecule ([0037] of Schuft, (meth)acrylate component added to first part; [0046] of Schuft, methacrylate can be 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl(meth)acrylate), at least one (meth)acrvlic resin ([0045] of Schuft, methacrylate component may be present as a combination of a monomer and a polymer), from 5 to 30.0 wt% of at least one toughening agent ([0048] of Schuft, acrylic adhesive composition can contain a chlorosulfonated polyethylene synthetic rubber as a toughener; [0050] of Schuft, rubber component can be used in about 5 to 30 wt.% of the first part), from 0.05 to 0.5 wt% of at least one inhibitor ([0052] of Schuft, first part may contain a free radical polymerization inhibitor; [0055] of Schuft, inhibitor is used in about 0.5 wt.% of first part), at least one organic transitional metal compound ([0013] of Schuft, first part includes a cure system; [0081] of Schuft, cure system can include a transition metal catalyst such as a vanadium compound) and at least one phosphorus-containing compound ([0033] of Schuft, one part of the adhesive may contain a phosphate ester).
Schuft does not specifically disclose that the first part and the second part each comprise from 30.0 to 90.0 wt% of the at least one (meth)acrvlate monomer containing at least one hydroxyl group per molecule and from 5 to 40.0 wt% of the at least one (meth)acrvlic resin. Schuft, however, discloses that the first part and the second part of the composition each contain about 20 to about 80 wt% of a combination of monomer and polymer (i.e., resin) in the second part ([0044]-[0045], [0071] of Schuft). Schuft also discloses that the (meth)acrylic polymer component can be a polyurethan e ([0045] of Schuft). Osae discloses a methacrylate based two-part adhesive composition (Abstract of Osae) which comprises from 20-70 wt% of a (meth)acrylate monomer ([0197] of Osae) and from 1-40 wt% of a urethane (meth)acrylate oligomer ([0200] of Osae). According to Osae, the urethane (meth)acrylate oligomer provides enhanced adhesion to selected substrates, including thermoplastics ([0060] of Osae). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to provide the modified compositions with 20-70 wt% of a (meth)acrylate monomer and from 1-40 wt% of a urethane (meth)acrylate oligomer. One of ordinary skill in the art would have been motivated to do so in order to formulate adhesives with enhanced adhesion to selected substrates, including thermoplastics as taught by Osae ([0060] of Osae). Osae clearly teaches (meth)acrvlate monomer and (meth)acrvlic resin (i.e., urethane (meth)acrylate oligomer) content ranges (i.e., 20-70 wt% and 1-40 wt%, respectively) that overlap with those recited in claim 1 (i.e., 30-90 wt% and 5-40 wt%, respectively) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Schuft also does not specifically disclose that the first part comprises from 0.3 to 3.5 wt% of the at least one amine-aldehyde condensation compound. Schuft, however, discloses that the amine-aldehyde condensation compound is present from 1 to 5% by weight of the second part ([0070] of Schuft). Schuft therefore clearly teaches an amine-aldehyde condensation compound range (i.e., 1-5 wt%) that overlaps with that recited in claim 1 (i.e., 0.3 to 3.5 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Schuft also does not specifically disclose that the phosphorus-containing compound is present in an amount of 0.2 to 4 wt.% based on the total weight of the second part. Schuft, however, discloses that the phosphate ester is present from 0.1 to 3% by weight of the first part ([0058] of Schuft). Schuft therefore clearly teaches a phosphate ester range (i.e., 0.1 to 3 wt%) that overlaps with that recited in claim 1 (i.e., 0.2 to 4 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that 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) (See MPEP 2144.05(I)).
Schuft also does not disclose that the first part comprises from 5 to 30.0 wt% of at least one toughening agent and from 0.05 to 0.5 wt% of at least one inhibitor. Moreover, Schuft discloses that the first part of the composition (i.e., the part including the transition metal compound) may include a toughener ([0048] of Schuft) and a free radical inhibitor ([0033] of Schuft) in the recited amounts ([0050], [0055] of Schuft) but does not disclose incorporating those components into the part including the amine-aldehyde condensation compound (i.e., the second part of the Schuft composition). Wang, however, discloses a two -part acrylic adhesive (Abstract, [0012] of Wang) wherein additives such as toughening agents and inhibitors can be incorporated into the activator and adhesive side of the formulation ([0061] of Wang). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate the toughening agent and inhibitors into both components of the adhesive formulation of Schuft since Wang establishes that it was known to incorporate such additives into both parts of two-part acrylic adhesive formulations ([0061] of Wang). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Schuft also does not disclose that the composition includes from 0.03 to 0.4 wt% of the organic transitional metal compound and that the organic transition metal compound is a vanadium complex compound that contains at least one organic ligand represented by the general formula (2) which is coordinatively bounded to a vanadium atom in the vanadium complex compound,
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(2)
wherein * represents a coordinating position of the vanadium atom in the vanadium complex compound, and wherein R3 and R4 are identical or different, and independently represent optionally substituted univalent hydrocarbon groups. Moreover, Schuft discloses the use of vanadium compounds to accelerate the curing reaction ([0081] of Schuft), but does not disclose the specific vanadium compounds being used. Dohi discloses a two-part acrylic adhesive comprising a peroxide cure system and a curing accelerator for decomposing the peroxide (Abstract, 4:26-34 of Dohi). According to Dohi, the compound can be vanadyl acetylacetonate which is used in an amount of 0.2 to 5 wt% (4:26-37 of Dohi). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use 0.2 to 5 wt% vanadyl acetylacetonate as the curing accelerators in the modified composition since Dohi establishes the use of such compounds as curing accelerators in two-part acrylic adhesive compositions. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 2, Schuft discloses that the amine-aldehyde condensation compound is a butyraldehyde- aniline condensation compound ([0066] of Schuft).
Regarding claim 4, Schuft discloses that the phosphorus-containing compound is selected from the group consisting of an organic phosphorus-containing compound and an inorganic phosphorus-containing compound ([0033] of Schuft, one part of the adhesive may contain a phosphate ester).
Regarding claim 5, Schuft discloses that the (meth)acrylate monomer containing at least one hydroxyl group per molecule is a monofunctional (meth)acrylate monomer selected from the group consisting of hydroxyethyl methacrylate and hydroxypropyl methacrylate ([0046] of Schuft, methacrylate can be 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl(meth)acrylate).
Regarding claim 9, Schuft discloses that the first part and/or the second part further comprise at least one (meth)acrylic resin, at least one toughening agent and/or at least one inhibitor ([0048] of Schuft, compositions may include a toughener; [0033] of Schuft, compositions may include a free radical inhibitor).
Regarding claim 10, Schuft discloses that the composition is free from peroxide and/or amine ([0034] of Schuft, peroxide component may be employed; peroxide is therefore optional).
Regarding claim 11, Schuft discloses that the ratio by weight of the first part: the second part is 5:1 to 1:5 ([0084] of Schuft, ratio of components may be 1:1 or 5:1).
Regarding claim 13, Schuft discloses a method for bonding a first substrate to a second substrate (Abstract of Schuft, methods of bonding substrates together with the adhesive compositions), comprising: mixing the two parts of the (meth)acrylate-based two-part adhesive composition according to claim 1 ([0019] of Schuft, mixing first and second parts; see rejection of claim 1 above); applying the mixed adhesive composition to at least one of the substrate surfaces to be bonded ([0020] of Schuft); joining the substrates to be bonded in a way that the adhesive composition is between the substrates ([0021] of Schuft); and curing the adhesive composition ([0021] of Schuft).
Regarding claim 14, Schuft discloses that the first substrate and the second substrate are identical or different materials selected from the group consisting of metals, plastics, ceramic, glass and cellulosic materials ([0047] of Schuft, adhesive used for bonding metals; [0086] of Schuft, adhesive used for bonding glass; claim only requires one of the recited types of substrates).
Regarding claim 15, Schuft discloses article bonded by the (meth)acrylate-based two-part adhesive composition according to claim 1 ([0016]-[0021] of Schuft, bonded article formed).
Regarding claim 16, Dohi discloses that the vanadium complex compound is vanadyl acetylacetonate (4:26-37 of Dohi).
Response to Arguments
Applicant's arguments have been fully considered to the extent that they apply to the new grounds of rejection but they are not persuasive.
The applicant asserts that the references cited in the previous Office Action do not teach or reasonably suggest an adhesive composition wherein the organic transitional metal compound is a vanadium complex compound as recited in claim 1. The Office Action, however, is relying upon the newly cited Dohi reference to address this limitation.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746