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 .
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 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.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 16 May 2024 amending claims 1-5 and 8-18. Claims 1-18 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 May 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 16 May 2024 are acceptable.
Claim Objections
Claims 5 and 12 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, the claim is missing a semicolon in the line “k is an integer of from 1 to 10;” to be consistent with the other lines of the claim.
Claim 5 also has an extraneous word in the following line, “l is [[in]] an integer of from 0 to 25;”.
Claim 12 at line 4 has an extraneous comma in the phrase “… and[[,]] polycarbonatediol based glycidyl ethers.”
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.
Claims 5 and 9-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 5, the claim requires that R2-R6 be independently selected from H, OH, SH, halide, CN, C1-C4 alkyl, C1-C4 alkoxy, SR8, COOH, COOR8, N(R8)2, or N(R8)3Q. However, Claim 5 also requires the proviso that from 1 to 3 of the R2-R6 entities are a radical having one of these 5 structures:
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Each these structures is outside of the listed moieties listed for R2-R6 . The Examiner suggests noting that R2-R6 also may be selected from one of these five structures.
For the purposes of examination, the Examiner is interpreting the claim as requiring the proviso that from 1 to 3 of the R2-R6 entities are one of the five noted structures while the remaining entities are limited to be one of the specified moieties. That is, the remaining 2 to 4 of the R2-R6 entities which are not one of the proviso structures are limited to be H, OH, SH, halide, CN, C1-C4 alkyl, C1-C4 alkoxy, SR8, COOH, COOR8, N(R8)2, or N(R8)3Q.
Regarding claim 9, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation of an equivalent weight of “from 100 to 700 g/eq”, and the claim also recites “preferably 120 to 320 g/eq” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Furthermore, the phrase "preferably” renders the claim indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP § 2173.05(d).
Claims 10-12 depend on or refer to one or more of the above claims and thus incorporate the above-described indefinite subject matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) Reference in Dependent Forms. — Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 7 are rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claims, or amend the claims to place the claim in proper dependent form, or rewrite the claims in independent form.
Claims 6 and 7 each require that R2-R6 be independently selected from a group of moieties, namely H, OH, C1-C4 alkyl and C1-C4 alkoxy in claim 6 and either H or C1-C4 alkyl in claim 7. However, Claim 5, upon which claims 6 and 7 depend, also requires the proviso that from 1 to 3 of the R2-R6 entities are a radical having one of these 5 structures:
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Each these structures is outside of the listed moieties listed for R2-R6 in claims 6 and 7. For the purposes of examination, the Examiner is interpreting the claims as including the proviso of claim 5 that from 1 to 3 of the R2-R6 entities are one of the five noted structures while the remaining entities are limited to be one of the specified moieties. That is, the remaining 2 to 4 of the R2-R6 entities which are not one of the proviso structures are limited to be H, OH, C1-C4 alkyl and C1-C4 alkoxy in claim 6 and either H or C1-C4 alkyl in claim 7.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Breiner (U.S. Pat. 8,669,328).
Regarding claims 1 and 2, Breiner discloses a composition with a dispersion of (meth)acrylate polymers A and B, in which each polymer A and B is obtained by emulsion polymerization of a mixture comprising:
0.1 to 99.9% of at least one benzophenone derivative compound of formula (I) as shown:
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99.1% to 0.1% of at least one ethylenically unsaturated monomer different from but copolymerizable with component (a). See claim 1.
The R1-R6 groups of formula (I) are defined at col. 8, lines 20-47.
Breiner notes that benzophenone and its derivatives are widely used photoinitiators which form free radicals to bring about polymerization or crosslinking of ethylenically unsaturated monomers, see col. 2, lines 6-9. This reads on component (a) as claimed.
The (b) component of Breiner is a (meth)acrylate monomer preferably having from 1 to 12 carbon atoms in the alkyl group such as methyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, lauryl (meth)acrylate, or others, see col. 4, lines 26-65. Methyl methacrylate, butyl acrylate, and methacrylic acid are particularly preferable such monomers, see col. 6, lines 3-13. This preferably comprises from 70 to 97.5 wt. % of the acrylate monomers. See col. 4, lines 36-38. This reads on component (c) as claimed.
Inventive Example 1 of Breiner uses 468.3 g of butyl acrylate, 490.0 g of methyl methacrylate, 32.75 g of methacryloyloxybenzophenone, 10 g of methacrylic acid, and 8.47 g of other components, see col. 19, lines 20-25. This is (468.3 + 490.0 + 10) / (1009.52) = 95.9 wt. % of monomers reading on component (c) as claimed and (32.75 / 1009.52) = 3.2 wt. % of monomers reading on component (a) as claimed.
The polymers may also comprise a monomer such as glycidyl (meth)acrylate in the amount of up to 20 wt. %, see col. 5, line 59 through col. 6, line 2. This reads on component (b) as glycidyl (meth)acrylate includes both an epoxy functionality and a (meth)acrylate functionality. While Example 1 of Breiner does not include this monomer, it would have been obvious to have included glycidyl (meth)acrylate monomer in the disclosed amount as this is expressly described as a suitable comonomer in the reference.
The amounts of the monomers used in Inventive Example 1 and the glycidyl (meth)acrylate disclosed at col. 5, line 59 through col. 6, line 2 are within the disclosed ranges in claims 1 and 2.
Regarding claims 3-7, Inventive Example 1 of Breiner uses methacryloyloxybenzophenone as a comonomer. This material has the following structure:
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This reads on the general formula (A)-(B)b of claim 3 in which A is the benzophenone group, and B is the methacrylic functional group, and b is 1.
This also reads on claim 4 as A is the benzophenone group, B is the methacrylic functional group, and b is 1.
This also reads on claims 5, 6, and 7 in which R0 is a C6 aryl group, R00 is the structure shown on the left side of the claim, R2 through R5 are each H, and R6 has the structure of:
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as required by the proviso of claim 5 in which R” is C1 alkyl.
Regarding claim 8, the methacryloyloxybenzophenone used in Inventive Example 1 of the reference is a benzophenone methacrylate as claimed.
Regarding claim 9, glycidyl methacrylate described in the reference at col. 5, line 59 through col. 6, line 2 has the following structure:
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This compound has a molecular weight of about 142 g/mol and 1 epoxy equivalent, thus having an equivalent weight of 142 g/eq which is within the disclosed range.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Breiner (U.S. Pat. 8,669,328) in view of Dones (U.S. Pat. 6,316,517).
Regarding claims 10 and 11, Breiner is relied upon as described above to disclose a composition with a dispersion of (meth)acrylate polymers A and B, each of which includes the monomers of claim 1 as described above. Although Breiner teaches the use of glycidyl (meth)acrylate in col. 5, line 59 through col. 6, line 2, the reference does not teach or suggest using an adduct of (meth)acrylic acid and a polyepoxide compound as claimed.
However, Dones also discloses radiation-polymerizable compositions that include a radiation-curable acrylated resin component, see col. 1, lines 6-10. Suitable components include acrylated epoxies, see col. 4, lines 5-8, which are the reaction product of an epoxy resin with two epoxy groups per molecular and acrylic acid or methacrylic acid, see col. 4, lines 9-14. Suitable acrylated epoxies are acrylated epoxy soya oil which is a polyglycidyl ether of a polyhydric alcohol, see structure in col. 4. This reads on the materials of claims 10 and 11.
Breiner and Dones are analogous because they each disclose radiation-polymerizable compositions with an acrylated resin component, thus they are similar in composition. Breiner’s composition can be used as an adhesive (see col. 10, lines 12-28) as can those of Dones (see col. 11, lines 4-12).
It would have been obvious to one of ordinary skill in the art at the time of the invention to use an acrylated polyepoxide compound as in Dones as the glycidyl acrylate of Breiner to arrive at the claimed invention, as Dones teaches that such components are sourced from naturally occurring fatty acids and thus are easily sourced, see col. 8, lines 13-25 of Dones.
Regarding claim 12, Dones also teaches using a bisphenol A epoxy diacrylate, see col. 4, lines 24-27 which is commercially available.
Claims 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Breiner (U.S. Pat. 8,669,328) as applied above, and further in view of WO 2017/190911 A1. Dollase (U.S. Pub. 2021/0222037) was relied upon as the translation of WO ‘911.
Regarding claim 13, Breiner discloses a composition with a dispersion of (meth)acrylate polymers A and B, in which each polymer A and B is obtained by emulsion polymerization of a mixture comprising:
0.1 to 99.9% of at least one benzophenone derivative compound of formula (I) as shown:
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99.1% to 0.1% of at least one ethylenically unsaturated monomer different from but copolymerizable with component (a). See claim 1.
The R1-R6 groups of formula (I) are defined at col. 8, lines 20-47.
Breiner notes that benzophenone and its derivatives are widely used photoinitiators which form free radicals to bring about polymerization or crosslinking of ethylenically unsaturated monomers, see col. 2, lines 6-9. This reads on component (a) as claimed.
The (b) component of Breiner is a (meth)acrylate monomer preferably having from 1 to 12 carbon atoms in the alkyl group such as methyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, lauryl (meth)acrylate, or others, see col. 4, lines 26-65. Methyl methacrylate, butyl acrylate, and methacrylic acid are particularly preferable such monomers, see col. 6, lines 3-13. This preferably comprises from 70 to 97.5 wt. % of the acrylate monomers. See col. 4, lines 36-38. This reads on component (c) as claimed.
Inventive Example 1 of Breiner uses 468.3 g of butyl acrylate, 490.0 g of methyl methacrylate, 32.75 g of methacryloyloxybenzophenone, 10 g of methacrylic acid, and 8.47 g of other components, see col. 19, lines 20-25. This is (468.3 + 490.0 + 10) / (1009.52) = 95.9 wt. % of monomers reading on component (c) as claimed and (32.75 / 1009.52) = 3.2 wt. % of monomers reading on component (a) as claimed.
The polymers may also comprise a monomer such as glycidyl (meth)acrylate in the amount of up to 20 wt. %, see col. 5, line 59 through col. 6, line 2. This reads on component (b) as glycidyl (meth)acrylate includes both an epoxy functionality and a (meth)acrylate functionality. While Example 1 of Breiner does not include this monomer, it would have been obvious to have included glycidyl (meth)acrylate monomer in the disclosed amount as this is expressly described as a suitable comonomer in the reference.
The amounts of the monomers used in Inventive Example 1 and the glycidyl (meth)acrylate disclosed at col. 5, line 59 through col. 6, line 2 are within the disclosed ranges in claim 1.
Breiner does not teach or suggest the use of a photoacid generator (PAG) in the composition.
However, Dollase describes a polymer obtainable by radical polymerization for adhesive systems, see abstract. The copolymer includes epoxy-functionalized methacrylic co-monomers as well as acrylic monomers which are not functionalized with epoxy, see p. 3, [0031-0032] and p. 4, [0045-0049] and [0055]. The composition is cured using UV radiation, see p. 1, [0006-0007] and p. 6, [0078]. The composition includes from 0.1 to 5 wt. % of photochemically activatable initiators, see p. 7, [0090] and p. 9, [0101], and suitable such commercialized photoinitiators are Cyracure UVI-6990, Cyracure UVI-6974, Optomer SP-55, SP-150, or SP-170, SarCat CD-1010, CD-1011, and CD-1012, and others listed at p. 8, [0098]. These are among the PAG materials described in the present specification at p. 22, [0128] and thus read on the claimed PAG.
Dollase and Breiner are analogous because they each disclose photocurable compositions for adhesives which include epoxy-functionalized acrylic comonomers. Thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include one of the photoacid generator photoinitiators of Dollase as a photoinitiator for the composition of Breiner in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to use a PAG as these can bring about cationic curing reaction of the epoxy groups via UV radiation, see Dollase at p. 7, [0090].
Regarding claim 14, Breiner teaches the copolymer of claim 1 as described above in regards to claims 1 and 13. Dollase teaches using from 0.1 to 5 wt. % of the PAG in the composition, see p. 9, [0101]. The claimed tackifier resin and wax may be 0% and thus are considered optional and not required by the claim. However, Breiner also teaches that a tackifying resin may be added, see col. 17, lines 52-60, and the paragraph describes using up to 10 wt. % of such additives, see col. 18, lines 5-11.
Regarding claim 15, Breiner teaches that the polymer dispersion is UV-curable, see abstract, and teaches crosslinking with UV light, see col. 18, lines 29-46. The composition is useful as a coating, covering, pressure-sensitive adhesive, or other uses as described at col. 18, lines 12-19.
Regarding claim 16, Breiner teaches that the composition is useful as a coating, covering, pressure-sensitive adhesive, or other uses as described at col. 18, lines 12-19. The composition is applied in a temperature range of 20-150°C and thus may be a hot melt pressure-sensitive adhesive as claimed.
Regarding claim 17, Breiner teaches that the composition is useful as a coating, covering, pressure-sensitive adhesive, or other uses as described at col. 18, lines 12-19. The composition is applied in a temperature range of 20-150°C and thus may be a hot melt pressure-sensitive adhesive as claimed. The composition is applied to a substrate such as metal or plastic foils, see col. 18, lines 20-28.
Regarding claim 18, Breiner teaches that the composition is useful as a label, see col. 18, lines 12-19.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759