Claims 1-20 are pending in the application. Claims 1-20 are rejected.
All of the rejections have been maintained.
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 1-20 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.
The “ethylenic” refers to a material that is related to or derived from ethylene, characterized by the presence of a double bond, as defined by Meriam-Webster dictionary. Due to this double bond, ethylenic compounds cannot be saturated. Does Applicant want to convey aliphatically saturated? Appropriate correction is required.
Claim Rejections - 35 USC § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed 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 1-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 5,945,461 to Gosiewski et al. (hereinafter “Gosiewski”).
Gosiewski discloses a composition for a foamed polymer adhesive comprising: a reactive mixture having an uncured density, the reactive mixture undergoing a polymerization reaction comprising:
40 to 90% by weight of a methacrylate ester monomer wherein an ester group is an alkyl, cycloalkyl or alkoxy group which contains 1 to 12 carbon atoms (column 2, lines 55-65); and 10 to 60% by weight of a thermoplastic polymer soluble in the monomer (column 4, lines 20-30);
a free radical polymerization catalyst (column 5, lines 20-35); and
a foaming agent that causes expansion of the reactive mixture, said foaming agent present in an amount sufficient to overcome the shrinkage that occurs during the polymerization reaction (column 6, lines 25-35). The foamed polymer adhesive is a closed cell foam (column 6, lines 40-45). The foaming agent is a combination of a calcium carbonate and a citric acid (column 6, lines 5-10). The calcium carbonate reads on the claimed acid-neutralizing base while the citric acid reads on the claimed aliphatically saturated acid.
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It appears that Gosiewski uses the same foaming agent as disclosed in the Applicant’s specification; therefore, the examiner takes the position that the calcium carbonate plus citric acid would inherently function as a self-primer for metal and plastic substrate even when the substrates have an oil or oxide coating thereon.
As to claim 2, Gosiewski discloses that the monomer comprises at least about 50% by weight of methyl methacrylate (column 3, lines 5-10).
As to claims 3 and 4, Gosiewski discloses that the monomer further comprises up to 10% by weight of ethylenically unsaturated polymerizable carboxylic acid such as methacrylic acid (column 3, lines 30-40).
As to claims 5 and 6, Gosiewski discloses that the monomer further comprises a polyfunctional monomer including 2 to 6 polymerizable ethylenically unsaturated groups per molecule wherein the polyfunctional monomer is present up to about 10% by weight of the monomer (column 3, lines 15-30).
As to claim 7, Gosiewski discloses that the thermoplastic polymer comprises an elastomer (column 3, lines 45-50).
As to claim 8, Gosiewski discloses that the polymerization reaction occurs at a temperature of 72oF or 22oC (example 1).
As to claim 9, Gosiewski discloses that the thermoplastic polymer is soluble in the monomer to form a polymer-in-monomer solution comprising 10 to 60% of the polymer based on the weight of the solution (column 4, lines 20-30).
As to claim 10, Gosiewski discloses that the thermoplastic polymer further comprises a core-shell graft copolymer in an amount up to about 25% by weight of the polymer (column 5, lines 15-20). The core-shell graft copolymer swells in the monomer but does not dissolve therein (claim 22).
As to claim 11, Gosiewski discloses that the core-shell polymer is present at about 10-20% by weight of the thermoplastic polymer (claim 23, column 5, lines 15-20).
As to claim 12, Gosiewski discloses that the composition contains sufficient foaming agent to obtain a polymerized foamed composition having a density of 0.25 g/cc to the uncured density (claim 12; column 6, lines 35-40).
As to claims 13 and 14, Gosiewski discloses that the foaming agent comprises calcium carbonate plus citric acid (column 6, lines 5-10). Both the calcium carbonate and the citric acid are solid particulates. The calcium carbonate reads on the claimed acid-neutralizing base while the citric acid reads on the claimed C2-C20 organic carboxylic acid devoid of ethylenic unsaturations.
As to claims 15 and 16, Gosiewski discloses that a structure comprising a first substrate, a second substrate, and an acrylic foam adhesive adhered to the first and the second substrate without a primer (example 1). The first substrate and the second substrate comprise a Xenoy 1102 sample (column 11, lines 45-60).
As to claims 18 and 19, it appears that the structure of Gosiewski meets all structural limitations and chemistry required by the claims. The structure comprises a first substrate, a second substrate, and an acrylic foam adhesive adhered to the first and the second substrate without a primer (example 1). The first substrate and the second substrate comprise a Xenoy 1102 sample (column 11, lines 45-60). Therefore, the Examiner takes the position that upon modifying the temperature more than 10oC from the temperature of the cure, no print through would be present on the opposing surface of the first and second substrates as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claim 20, Gosiewski discloses that the foamed polymer adhesive is a closed cell foam that is free of a solvent (column 6, lines 40-45; example 1 and table 2).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Gosiewski as applied to claim 1 above, and further in view of US 2013/0309508 to Abbey (hereinafter “Abbey”).
Gosiewski discloses that the foamed acrylic composition is useful as an adhesive for a metal substrate (column 6, lines 65-67).
Gosiewski does not explicitly disclose the foamed acrylic composition is useful as an adhesive for an oily metal substrate.
Abbey, however, discloses that a laminate comprises a metal substrate bonded to a non-metallic substrate by an acrylic adhesive composition comprising a carboxylic acid containing phosphoric acid adhesion promoter (claim 17). The adhesion promoter has good cohesive failure properties and can bond to oily metal surface (abstract, and paragraph 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a carboxylic acid containing phosphoric acid adhesion promoter disclosed in Abbey in the foamed acrylic composition disclosed in Gosiewski motivated by the desire to improve the adhesion of the foamed acrylic adhesive to a metal substrate including an oily metal material.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Gosiewski as applied to claim 1 above, and further in view of US 2002/0174940 to Nitowski (hereinafter “Nitowski”).
Gosiewski discloses that the foamed acrylic composition is useful as an adhesive for a metal substrate (column 6, lines 65-67).
Gosiewski does not explicitly disclose the foamed acrylic composition is useful as an adhesive for a metal substrate which is anodized to form an anodic oxide coating thereon.
Nitowksi, however, discloses that a vehicle assembly comprising an aluminum alloy body secured to an adjacent metal structure using an acrylic adhesive (abstract, and paragraph 16). The aluminum alloy is anodized in an aqueous solution of hypophosphorous acid to form an anodic oxide coating on the surface of the aluminum alloy (abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the foamed acrylic adhesive material disclosed in Gosiewski for securing an anodized aluminum alloy body to an adjacent metal structure disclosed in Nitowski motivated by the desire to improve the adhesion strength between the anodized aluminum alloy body and the adjacent metal structure.
Response to Arguments
Applicant alleges that Gosiewski only teaches acids that contain unsaturated carbon-carbon double bonds and is silent as to acids that are aliphatically saturated or aromatic. The examiner respectfully disagrees.
As previously discussed, Gosiewski’s foaming agent is a combination of a calcium carbonate and a citric acid (column 6, lines 5-10). The calcium carbonate reads on the claimed acid-neutralizing base while the citric acid reads on the claimed aliphatically saturated acid.
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It appears that Gosiewski uses the same foaming agent as disclosed in the Applicant’s specification; therefore, the examiner takes the position that the calcium carbonate plus citric acid would inherently function as a self-primer for metal and plastic substrate even when the substrates have an oil or oxide coating thereon. Accordingly, the rejection over Gosiewski has been maintained.
Applicant has reiterated positions taken with respect to the rejections over Gosiewski in view of Abbey; and Gosiewski in view of Nitowski, the examiner’s comments set forth above are equally pertinent in support of these rejections as well.
Conclusion
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788