Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/15/2026 has been entered.
Claims 1-20 are pending in the application. Claims 1-20 are rejected.
The 112 rejection has been withdrawn in view of the present amendment and response.
The rejections over Gosiewski and further in view of other references have been withdrawn in view of the present amendment and response. None of the cited references disclose of suggest a composition where a foaming agent comprises an acid-neutralizing base and an organic acid that is aliphatically saturated or an aromatic acid wherein the aliphatically saturated or the aromatic acid is selected from the group consisting of a monocarboxylic acid, a dicarboxylic acid and a combination thereof.
New ground of rejection is made in view of newly discovered reference to Howie, Jr. et al. (US 2007/0249742).
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. 103 as being unpatentable over US 5,945,461 to Gosiewski et al. (hereinafter “Gosiewski”) in view of US 2007/0249742 to Howie, JR. et al. (hereinafter “Howie”).
As to claims 1, 13 and 14, 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 an acid-neutralizing base and an organic acid. The acid-neutralizing base is calcium carbonate while the organic acid is a citric acid (column 6, lines 5-10).
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Gosiewski fails to teach the organic acid that is an aliphatically saturated acid of a monocarboxylic or a dicarboxylic acid.
Howie, however, discloses a resin composition comprising at least one thermoplastic resin, at least one special visual effect additive, and at least one chemical foaming agent (paragraph 6). The at least one chemical foaming agent comprising an acid-neutralizing base and an organic acid (paragraph 15). The acid-neutralizing base includes calcium carbonate, calcium bicarbonate, sodium bicarbonate, lithium carbonate or zinc carbonate (paragraph 15). The organic acid includes malic acid, glutaric acid, oxalic acid, succinic acid, and/or stearic acid, and each of which corresponding to the claimed aliphatically saturated acid of a monocarboxylic or a dicarboxylic acid devoid of ethylenic unsaturations. The acid-neutralizing base and the organic acid are both present as solid particulates (paragraph 15).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the aliphatically saturated acid of a monocarboxylic or a dicarboxylic acid disclosed in Howie for the citric acid of Gosiewski for the organic acid for the foaming agent because the aliphatically saturated acid of a monocarboxylic or a dicarboxylic acid and citric acid have been shown in the art to be recognized equivalent organic acids for the foaming agents and the selection of these known equivalents to be organic acids for the foaming agents will be within the level of the ordinary skill in the art.
The combined disclosures of Gosiewski and Howie result in 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;
a free radical polymerization catalyst; 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 an acid-neutralizing base and an organic acid. The acid-neutralizing base is calcium carbonate while the organic acid is an aliphatically saturated acid of a monocarboxylic or a dicarboxylic acid.
Therefore, the examiner takes the position that the composition would inherently function as a self-primer for metal and plastic substrate even when the substrates have an oil or oxide coating thereon. 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 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 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 in view of Howie 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 in view of Howie 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/Howie, 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 in view of Howie 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 in view of Howie 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
Gosiewski’s foaming agent is a combination of a calcium carbonate and a citric acid that is an aliphatically saturated acid of tricarboxylic acid (column 6, lines 5-10). Gosiewski fails to disclose the foaming agent comprising an organic acid that is aliphatically saturated or the aromatic acid selected from the group consisting of a monocarboxylic acid, a dicarboxylic acid and a combination thereof. However, new combination of Gosiewski and Howie suggests the claimed invention.
Conclusion
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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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights