DETAILED ACTION
This is an Office action based on application number 18/688,511 filed 1 March 2024, which is a national stage entry of PCT/IB2022/056956 filed 27 July 2022, which claims priority to US Provisional Application No. 63/240,251 filed 2 September 2021. Claims 1-6 and 10-23 are pending. Claims 7-9 are canceled.
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 .
Examiner’s Note
Applicant’s arguments regarding the prior art rejections of record are fully considered, and are persuasive. The claims are rejected below based on a reconsideration of the prior art. The instant Office action is a second non-final rejection.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-6 and 10-23 are rejected under 35 U.S.C. 103 as being unpatentable over Traser et al. (US Patent Application Publication No. US 2013/0273362 A1) (Traser) in view Sun et al. (WIPO International Publication No. WO 2021/051257 A1) (Sun).
Regarding instant claims 1-6, 10, and 21:
Traser discloses a UV-radiation curable pressure sensitive adhesive comprising a polymerization reaction product of (a) 0.5 to 25 wt % of a hydroxyl-containing (meth)acrylate monomer; (b) 0 to 3 wt % of polar crosslinkable monomer; and (c) 40 to 99.5 wt% of a C4 to C20 (meth)acylate ester monomer (paragraphs [0006-0010]).
The mixture of at least components (a)-(c) of Traser meet the claimed mixture, and the mixture of (a)-(c) prior to the polymerization reaction meets the claimed preadhesive composition.
Said components (a) and (c) of Traser meet the claimed (a) recited by the instant claim.
Traser further discloses that examples of the polar crosslinkable monomer include (meth)acrylic acid and N-vinyl-2-pyrrolidone (paragraph [0050]).
As Traser discloses that components (a)-(c) undergo a polymerization reaction, said components are construed copolymerizable as required by the claims.
Traser further discloses that an initiator is added to aid in the polymerization of the monomers or pre-polymerized syrup (paragraph [0074]). Any amount of initiator meets the claimed “effective amount”.
Traser does not disclose the claimed transition metal complex.
However, Sun discloses an acrylate adhesive comprising at least one initiator and at least one copper complex (page 1, first paragraph).
Sun further teaches that the open time and exothermic peak are critical for the application of acrylate adhesives because the two properties determine how convenient one can handle adhesives. A longer open time allows an operator to have more time to assemble substrates to be bonded; however, typically an adhesive acrylate with a long open time will also have late exothermic peak meaning that the cure rate of the acrylate adhesive is slow (page 1, second paragraph).
Sun teaches that their inventive adhesive has a long open time and early exothermic peak (page 2, second paragraph).
Sun teaches that the copper complex is inclusive of copper (II) acetylacetonate (page 5, second paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the system comprising at least the initiator and copper complex of Sun in the composition of Traser. The motivation for doing so would have been to produce an adhesive having a long open time and early exothermic peak.
As the prior art combination discloses the same components (a) and (b) and transition metal complexes recited by the claims, the transition metal complexes disclosed by the prior art are construed as soluble in the mixture of (a) and (b) as required by the claims.
Therefore, it would have been obvious to combine Sun with Traser to obtain the invention as specified by the instant claims.
Regarding instant claim 11:
Traser further discloses that in a synthesis procedure, the monomer mixture is copolymerized to a conversion of about 98-99% (paragraph [0149]). The disclosure of about 99% is construed to include those amounts above 99%; therefore, the range disclosed by Traser overlaps the range recited by the claims. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 12:
The scope of the prior art combination encompasses an embodiment that is substantially identical to that of Applicant’s invention, as mapped above. One or ordinary skill in the art would readily conclude that such an encompassed embodiment must have the same properties as Applicant’s invention (i.e., the solubility in ethyl acetate as required by the claims.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 13:
Traser further discloses that the copolymer has a weight average molecular weight of 400,000 to 3,000,000 grams per mole and an inherent viscosity of at least 0.4 to 2.3 (paragraph [0084]). It is noted that the inherent viscosity range of Traser overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
While there is no disclosure in Traser that the inherent viscosity is measured according to a Test Method 3, absent evidence of criticality regarding how the inherent viscosity is measured and given that the inherent viscosity of Traser obviates the range presently claimed, it is the Examiner's position that Traser meets the requirement of the instant claim.
It is noted that Traser does not measure the molecular weight in terms of “Mz” as recited by the range.
However, Traser broadly teaches that the molecular weight of the polymeric composition plays a key role in the bonding of low surface energy surfaces; specifically, Traser teaches that low molecular weights provide good peel values but poor adhesion, while high molecular weights provide poor peel values, but good cohesion (paragraph [0082]).
Since the instant specification is silent to unexpected results, the specific molecular weight of the copolymer is not considered to confer patentability to the claims. As the adhesive performance to substrates is a variable that can be modified, among others, by adjusting the molecular weight, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the molecular weight of the polymer in Traser to obtain the desired adhesive properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 14:
Traser further discloses that the composition further comprises a cross-linking agent (paragraph [0012]).
Traser further disclose that a chain transfer agent may be added to the monomers to control molecular weight (paragraph [0085]). Said “chain transfer agent” is construed optional by both the instant claim and Traser.
Traser further discloses that plasticizers may be added to the composition (paragraph [0069])
Traser further discloses that other additives can be included in the polymerizable mixture or added at the time of compounding or coating to change the properties of the pressure sensitive adhesive, wherein said additives are inclusive of polymeric bubbles or beads that are expanded (paragraph [0070]).
Regarding instant claims 15-16:
Traser further discloses that the cross-linking agents are activated by ultraviolet light (paragraph [0058]).
Traser further discloses that subsequent exposure of the adhesive to a second source of energy can be used to cross-link the adhesive, and such sources of energy include electron beam (paragraph [0078]); therefore there is a suggestion that the scope of Traser is inclusive of crosslinking agents that react under e-beam radiation.
Regarding instant claims 17:
Traser further discloses that the chain transfer agents are inclusive of carbon tetrabromide and alcohols (paragraph [0086]) (i.e., does not include a thiol functionality).
Regarding instant claims 18-19:
The prior art combination does not explicitly disclose a secondary alcohol or unsaturated hydrocarbon chain transfer agents.
However, both Traser and parent claim 17 stipulate that the chain transfer chain is optional. As the prior art meets requirements of claim 17, the prior art meets the optional limitations of the instant claim.
Regarding instant claim 20:
Traser further discloses that the plasticizers are inclusive of at least hydrocarbon oils, phthalates, phosphate esters, dibasic acid esters, fatty acid esters, polyethers, epoxy resins, sebacate, trimellitate, dibenzoate, and combinations thereof (paragraph [0065]), the scope of which includes those plasticizers that do not include an acrylate functionality.
Regarding instant claim 22:
Traser discloses a pressure-sensitive adhesive as set forth above. The recitation of a “structural adhesive” is an intended use of the pressure-sensitive adhesive. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding instant claim 23:
Traser further discloses that the cured adhesive composition is laminated onto a material such as a backing material conventionally used as a tape backing (paragraph [0088]). An adhesive-coated tape backing meets the claimed “tape”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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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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/TAM/Examiner, Art Unit 1788 08/31/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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