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 .
Election/Restrictions
Claims 1-3,5-6,8-13,16,21-22,25,27,29,31 and 35-36 are pending.
Applicants elected invention I, claims 1-3, 5-6, and 8-11.
Claims 12-13,16,21-22,25,27,29,31 and 35-36 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/11/2025.
Claim Rejections - 35 USC § 102
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 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 –
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 1-3, 5-6, 8, 9, and 11 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 Haddleton et al (WO 3030/016581 A1; all references are drawn to the US equivelant document US 2021/0283067 A1).
Haddleton et al discloses a composition for use as a pressure sensitive adhesive in transdermal drug delivery applications [p. 0001, 0011]. Haddleton exemplifies the preparation of silyl-terminated polyureas from Jeffamine D-4000, a polyoxypropylene diamine, IPDI, and 3-aminopropyl trimethoxysilane [p. 0152, JSAD005.3]. The Haddleton prepares JSAD005.3 by heating Jeffamine D-4000 (1 eq) to 60 °C, followed by the dropwise addition of IPDI (0.51 eq), the reaction is then monitored by complete reduction of the NCO peak [p. 0153]. Haddleton then ads 3-(isocyanatopropyl) trimethoxysilane (IPTMS) (0.51 eq) to the reaction mixture and stirs [p. 0155].
Applicant’s prepare S-PURE D5.0, by heating Jeffamine D-4000 (1 eq) to 85 °C, adding IPDI (0.47 eq) dropwise, followed by the addition of IPTMS (0.99 eq) [p. 31].
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Haddleton is silent with respect to the rheological properties of the adhesive compositions prepared from JSAS005.3, however, adhesive compositions from JSAS005.3 would have the same rheological properties as applicants S-PURE D5.0 if tested under the same conditions as it satisfies all of the material/chemical limitations of the claimed invention. Therefore, the claims are anticpated.
In the alternative, a skilled artisan would have expected the composition of Haddleton to obviously embrace embodiments capable of satisfying the claimed rheological properties because it satisfies all of the material/chemical limitations of the claimed invention. Furthermore, the primary difference in the method of Haddleton and that of applicants is applicants the applicants introduce a final amine after the reaction with IPTMS, wherein the final amine reacts with any excess isocyanate in the system [p. 23,31]. In the preparation of applicants and Haddleton, the IPDI is the limiting reagent in the preparation of the silyl-terminated polyurea. A skilled artisan would appreciate the use of final amine to react with excess isocyanate will have no impact on the structure of the silyl-terminated polyurea. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed that the composition of Haddleton to select the embodiments capable of satisfying the claimed rheological properties as Haddleton prepares a significantly similar silyl-terminated polyurea.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Haddleton is the closest prior art of record. Haddleton teaches the adhesive composition further includes a compatible tackifying resin [p. 0047]. Therefore, Haddleton teaches against claim 10.
Taton et al (US 2020/0405909 A1) teaches a crosslinking adhesive polymer obtained by polymerizing from polypropylene glycol diamine, IPDI, and mono function silicone isocyanate [abstract]. Taton teaches the polyurea copolymers are smooth and non-tacky, however the modulus is greater than the Dahlquist criteria used to define pressure sensitive adhesives [p. 0122]. Therefore, Taton fails to satisfy G’ of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766