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 .
DETAILED ACTION
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 –
(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.
Claims 1 and 3-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Birkett et al. (US Patent Application 2018/0072918 A1, published 15 Mar. 2018, hereinafter Birkett).
Regarding claims 1 and 3-4, Birkett teaches an anaerobically curable composition comprising polyurethane methacrylate resin (polymer having two or more methacrylate groups), PEG 200 dimethacrylate (polyfunctional ethylenically unsaturated compound), cumene hydroperoxide (polymerization initiator), and saccharin (anaerobic curable catalyst) (Abstract and paragraph 0100). Birkett teaches his anaerobically curable composition contains 3.1 wt.% of PEG 200 dimethacrylate (polyfunctional ethylenically unsaturated compound) (paragraph 0100).
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 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.
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.
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 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:
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, 4-6, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US Patent Application 2021/0171813 A1, published 10 Jun. 2021, hereinafter Kaneko).
Regarding claims 1, 4, and 10-12, Kaneko teaches a radical-polymerizable adhesive composition for laminating steel plates, which are used to form a rotor or a stator of a motor (Abstract). Kaneko teaches his adhesive comprises dimethylol-tricyclodecane diacrylate (oligomer with two methacryloyl groups), stearic-acid-modified pentaerythritol di(meth)acrylate (polyfunctional ethylenically unsaturated compound), cumene hydroperoxide (radical-polymerization initiator), and saccharin (anaerobic catalyst) (paragraphs 0028-0029, 0037-0039, 0041, 0052-0053, and 0110).
In light of the overlap between the claimed anaerobic curing adhesive and that disclosed by Kaneko, it would have been obvious to one of ordinary skill in the art to use an anaerobic curing adhesive that is both disclosed by Kaneko is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 5-6, Kaneko teaches the elements of claim, and Kaneko teaches the inclusion of phenyl (meth)acrylate, benzyl (meth)acrylate, and/or phenoxyethyl (meth)acrylate in his composition (paragraph 0035). These compounds have both an aromatic ring and only one ethylenically unsaturated group.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US Patent Application 2021/0171813 A1, published 10 Jun. 2021, hereinafter Kaneko) in view of Ito and Kobayashi (JP H05/156211, published 22 Jun. 1993, hereinafter Ito).
Regarding claims 7-9, Kaneko teaches the elements of claim 5.
Kaneko does not disclose inclusion of the compounds of claims 7-9.
Ito teaches the inclusion of epichlorohydrin-modified phthalic acid di(meth)acrylate and/or ethylene oxide modified phthalic acid (meth)acrylate in an adhesive for adhering to metals (Abstract and paragraphs 0020 and 0039). These compounds correspond to those of claims 7-9).
Given that Kaneko and Ito are drawn to acrylic-based adhesives for adhering to metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or both of the compounds listed above that are taught by Ito in the adhesive composition taught by Kaneko. Since Kaneko and Ito are both drawn to acrylic-based adhesives for adhering to metals, one of ordinary skill in the art would have a reasonable expectation of success in incorporating one or both of the compounds listed above taught by Ito in the adhesive composition taught by Kaneko. Further, Ito taches the inclusion of compounds have a cyclic structure in the molecule provide excellent oil resistance in the cured product (paragraph 0021).
Claims 1-2, 4-6, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US Patent Application 2025/0270422 A1, priority 01 Nov. 2021, published 28 Aug. 2025, hereinafter Kaneko II).
Regarding claims 1 and 4, Kaneko II teaches an anaerobically curable composition that are used to adhere a stacked steel sheet, and his composition comprises a (meth)acrylate oligomer having two to five (meth)acryloyl groups per molecule (paragraph 0028) and pentaerythritol tri(meth)acrylate, a polyfunctional monomer (paragraphs 0038 and 0041). His composition further comprises a hydroperoxide (polymerization initiator) and saccharin (anaerobic curable catalyst) (paragraphs 0053, 0087, and 0088).
In light of the overlap between the claimed anaerobic curing adhesive and that disclosed by Kaneko II, it would have been obvious to one of ordinary skill in the art to use an anaerobic curing adhesive that is both disclosed by Kaneko II is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 2, Kaneko II teaches the elements of claim 1, and Kaneko II teaches the content of component (A) is 85 to 99 mass% of the composition, and the (meth)acrylate oligomer is 35 to 65 mass% of component (A) (paragraphs 0045-0046). Therefore, the amount of oligomer is 30 (85%*35%) to 64 (99*65%) of his composition.
Regarding claims 5-6, Kaneko II teaches the elements of claim 1, and Kaneko II teaches the inclusion of 2-hydroxy-3-phenoxypropyl (meth)acrylate in his composition (paragraph 0049). This compound has both an aromatic ring and only one ethylenically unsaturated group.
Regarding claims 10-12, Kaneko teaches the elements of claim 1, and Kaneko teaches his composition is used to adhere steel plates in a stack to form rotors or stators in a motor (paragraph 0105).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko (US Patent Application 2025/0270422 A1, priority 01 Nov. 2021, published 28 Aug. 2025, hereinafter Kaneko II) in view of Ito and Kobayashi (JP H05/156211, published 22 Jun. 1993, hereinafter Ito).
Regarding claims 7-9, Kaneko II teaches the elements of claim 5.
Kaneko II does not disclose inclusion of the compounds of claims 7-9.
Ito teaches the inclusion of epichlorohydrin-modified phthalic acid di(meth)acrylate and/or ethylene oxide modified phthalic acid (meth)acrylate in an adhesive for adhering to metals (Abstract and paragraphs 0020 and 0039). These compounds correspond to those of claims 7-9).
Given that Kaneko II and Ito are drawn to acrylic-based compositions for adhering to metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or both of the compounds listed above that are taught by Ito in the composition taught by Kaneko II. Since Kaneko II and Ito are both drawn to acrylic-based compositions for adhering to metals, one of ordinary skill in the art would have a reasonable expectation of success in incorporating one or both of the compounds listed above taught by Ito in the composition taught by Kaneko II. Further, Ito taches the inclusion of compounds have a cyclic structure in the molecule provide excellent oil resistance in the cured product (paragraph 0021).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Birkett et al. (US Patent Application 2018/0072918 A1, published 15 Mar. 2018, hereinafter Birkett).
Regarding claims 10, Birkett teaches the elements of claim 1, and Birkett teaches adhering his anaerobically curable composition to steel substrates (steel sheet) (paragraph 0063).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Birkett et al. (US Patent Application 2018/0072918 A1, published 15 Mar. 2018, hereinafter Birkett) in view of Ito and Kobayashi (JP H05/156211, published 22 Jun. 1993, hereinafter Ito).
Regarding claims 7-9, Birkett teaches the elements of claim 5.
Birkett does not disclose inclusion of the compounds of claims 7-9.
Ito teaches the inclusion of epichlorohydrin-modified phthalic acid di(meth)acrylate and/or ethylene oxide modified phthalic acid (meth)acrylate in an adhesive for adhering to metals (Abstract and paragraphs 0020 and 0039). These compounds correspond to those of claims 7-9).
Given that Birkett and Ito are drawn to acrylic-based compositions for adhering to metals, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate one or both of the compounds listed above that are taught by Ito in the composition taught by Birkett. Since Birkett and Ito are both drawn to acrylic-based compositions for adhering to metals, one of ordinary skill in the art would have a reasonable expectation of success in incorporating one or both of the compounds listed above taught by Ito in the composition taught by Birkett. Further, Ito taches the inclusion of compounds have a cyclic structure in the molecule provide excellent oil resistance in the cured product (paragraph 0021).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Haufe et al. (US Patent Application 2018/0230347 A1, published 16 Aug. 2018) teach a corrosion-inhibiting, radically curable composition comprising one ethylenically unsaturated compound and an initiator. Kono and Maeda (US Patent 5,178,951, published 12 Jan. 1993) teach a composition comprising a diallyl terephthalate and a poly(meth)acrylate of dipentaerythritol. Murphy et al. (US Patent Application 2022/0089920 A1, published 24 Mar. 2022) teach an anaerobically curable composition. Ogasawara et al. (US Patent 3,888,830, published 10 Jun. 1975 and US Patent 3,935,173, published 27 Jan. 1976) teach curable compositions containing compounds with multiple acryloyl groups. Omura (JP 2017/214499 A, published 07 Dec. 2017) teaches an anaerobic curable composition comprising compounds with a (meth)acrylic group, a anaerobic catalyst, and a peroxide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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/JOHN VINCENT LAWLER/Examiner, Art Unit 1787