DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a Continuation of application No. PCT/EP2022/084648, filed on Dec. 6, 2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. GB 2117808.2 filed 12/9/2021, which papers have been placed of record in the file.
Claims 1-37 are pending.
Drawings/Specification
The disclosure is objected to because of the following informalities: The “single view" drawing is referred to as “FIG. 1”. In accordance with 37 CFR 1.84(u)(1), the specification should not refer to “FIG.” See CFR 1.84(u)(1).
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 31-33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 31, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 32-33 are subsumed by this rejection because of their dependence.
Appropriate correction and/or clarification is required.
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 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.
Claims 1-9, 12-13, 15-27, 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer et al. (US 2010/0297457).
Regarding claim 1: Kramer is directed to a curable composition comprising Part A and Part B comprising:
Part A “K1” comprising:
(i) a curable (meth)acrylate component : e.g. Tetrahydrofurfuryl methacrylate
(SR203, Sartomer), Bisomer PTE®; “ingredient a”
(ii) a free radical initiator (cumene hydroperoxide) “ingredient d”
and,
(iii) a cyclic β keto ester compound wherein the cyclic part of the cyclic β keto ester compound comprises a 6-membered ring: ethyl 2-oxocyclohexanecarboxylate ([0052] formula (IV) v=2-3; Table 1 Designation 4 “ingredient b”)
Part B “K2” can comprise:
(i) a curable (meth)acrylate component (“ingredient a” [0087])
(ii) a transition metal component “ingredient d” (abstract)
While a specific two part composition comprising the aforementioned ingredients in a single curable composition is not mentioned, it would have been obvious to have selected such a composition since Kramer discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. In the present case, ingredients c) and d) are not part of the same component (see claim 1 Kramer), and therefore the remaining components can be present in Parts A or B. Further, Examples 39-42 comprise first part encompasses methacrylate and hydroperoxide and the so-called β keto ester compound (different from the one used in the present application) is introduced in the first part of the composition and the second part encompasses the metal catalyst. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a two part curable composition within the scope of claim 1.
Regarding claims 2-3: The 6-7 membered ring is disclosed in formula (IV) (0052]).
Regarding claim 4: Ethyl 2-oxocyclohexanecarboxylate is disclosed in Table 2 Designation 4.
Regarding claim 5: Example 4 comprises of a cyclic keto ester in an amount of about 0.85 wt% based on the total weight of the composition. Specifically, Table 1 Designation 4 comprising a 6 membered cyclic β keto ester in an amount of 2 mmol (MW 170, 0.085g) in 10g THF methacrylate, 0.1 transition metal cobalt, 0.085 g cumene hydroperoxide free radical initiator.
Regarding claim 6: The amount of formula (I) including cyclic keto esters is preferably 1-5% by weight based on the total weight of the composition (see claim 20 Kramer).
Regarding claims 7-8: The (meth)acrylate is present in an amount of 40-95% by weight of the composition ([0093]).
Regarding claim 9: A methacrylate monomer is disclosed (equivalent to an acidic (meth)acrylate monomer in light of the present specification).
Regarding claims 12-13, 15-16: An impact modifier including liquid rubber and core-shell polymers are disclosed (equivalent to a toughener as defined by the present specification). The working examples utilized 12-15 wt% of the impact modifier toughener or 27 wt% when both Hycar and Paraloid impact modifiers are combined (Table 7).
Regarding claim 17: The composition can comprise a core-shell polymer ([0078])
Regarding claim 18-19: A core shell rubber of Paraloid is used in an amount of about 15 wt% of the composition in Table 7.
Regarding claim 20: The composition can comprise a liquid rubber ([0076]).
Regarding claims 21-22: A liquid rubber of Hycar in an amount of about 12 wt% based on the total weight of the composition is disclosed in Table 7.
Regarding claims 23-24: A peroxide including a free radical initiator component of benzoyl peroxide is used in an amount of about 2.2 wt% of the composition in Table 7.
Regarding claim 25: A transition metal of vanadium is disclosed ([0019]).
Regarding claims 26-27: The transition metal content is used in an amount of 0.001-0.5% by weight based on the total weight of the composition on a metal basis (see claim 21 of Kramer).
Regarding claim 34: While a 1:1 weight ratio of Parts A and B, namely K1 and K2 in Kramer, is not specifically mentioned, the amounts taught in Kramer at least overlap a 1:1 ratio. For instance, ingredients c) and d) are required to be separate, although the remaining ingredients, a) and b), can be present in either K1 or K2 or both ([0084]-[0093]). Hence, a 1:1 weight ratio of Parts A and B at least overlaps the amounts taught in Kramer. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claims 35-37: A cured product and assembly of a first substrate bonded to a second substrate bonded by the composition, wherein the composition is glass is disclosed. ([0134] claim 26 Kramer).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer as applied to claim 1 above, and further in view of Tapio et al. (US 2013/0337260).
Regarding claims 10-11: While acidic (meth)acrylate monomers are disclosed, an amount of 1-30 wt% or 5-20 wt% is not mentioned.
Tapio is directed to an adhesive composition comprising a (meth)acrylate monomer including an acidic (meth)acrylate monomer wherein a pressure sensitive adhesive polymer of an acidic (meth)acrylate monomer is added to modify the properties of the composition in an amount of 5-60 wt% of the composition ([0084]-[0087] Tapio). One skilled in the art would have been motivated to have included an acidic (meth)acrylate monomer in the composition of Kramer to adjust the properties including tack, peel adhesion, and shear strength ([0008], [0084] Tapio). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included an acidic (meth)acrylate monomer in the composition of Kramer.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kramer as applied to claim 1 above, and further in view of Hurlburt et al. (US 2020/0040223).
Regarding claim 14: Kramer doesn’t mention a block copolymer impact modifier or toughener.
Hurlburt is directed to a two part adhesive comprising a (meth)acrylate and a block copolymer. One skilled in the art would have been motivated to have included a block copolymer in the composition of Kramer to improve properties of both toughness as well as elastomeric properties without compromising inherent physical properties ([0082]-[0083] Hurlburt). Therefore, it would have been obvious to one skilled in the art at the time of filing to have included a block copolymer in the composition of Kramer.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer as applied to claim 1 above, and further in view of Kneafsey et al. (US 6,552,140).
Regarding claims 28-30: Kneafsey is directed to a curable composition comprising an acrylate and a β keto ester compound. The composition comprises a free radical stabilizer in the amount of up to 1 wt% of the composition (col. 12 ll. 23-33 Kneafsey). One skilled in the art would have been motivated to have included the stabilizer in the composition of Kramer since compositions comprising β keto ester compounds can contain small amounts of oxygen leading to sufficient activation and gelling in two component compositions. The stability of β keto ester compound can be sufficiently improved by adding a nitroxyl free radical stabilizer (col. 8 ll. 10-21 Kneafsey). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a free radical stabilizer in the amount of up to 1 wt% of the composition in Kramer to arrive at claims 28-30 of the present invention.
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer as applied to claim 1 above, and further in view of Messana et al. (US 2019/0023872).
Regarding claims 31-33: Kramer mentions a chelating agent may be added ([0070], although doesn’t mention any specific chelating agent.
Messana is directed to two part curable composition comprising a (meth)acrylate monomer and a chelating agent of EDTA in an amount of 0.001-0.1 wt% based on the total weight of the composition. One skilled in the art would have been motivated to have included the chelating agent of EDTA as the chelating agent of choice in amounts taught by Messana to trap trace amounts of metal contaminates ([0043] Messana). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected EDTA as the chelating agent of choice in amounts taught by Messana to arrive at claims 31-33 of the present invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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