DETAILED ACTION
This is an Office action based on application number 18/921,467 filed 21 October 2024, which is a continuation of PCT/EP2023/060633 filed 24 April 2023, which claims priority to US Provisional Application No. 63/363,869 filed 29 April 2022. The application further claims priority to EP22209896 28 November 2022. Claims 1-15 are pending.
Amendments to the claims, filed 21 October 2024, have been entered into the above-identified application.
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 .
Claim Rejections - 35 USC § 112
Claims 8 and 10 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.
Claim 8 recites:
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The claim is indefinite because a thioxanthone has the general formula:
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Therefore, to be a thioxanthone the R1 of general formula (IV) must be sulfur (S). However, scope of the claim further encompasses those embodiments wherein R1 is NH, CH2, or O (i.e., non-thioxanthone-based compounds). It is indefinite how said non-thioxanthone-based compounds can meet the claimed “Thioxanthone-based photosensitizer”.
Furthermore “formular” in line 3 should be changed to “formula”.
Claim 10 recites the limitation “(here: EIT Power Puk II)” I line 4. It is unclear what this limitation requires.
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.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US Patent Application Publication No. US 2012/0329900 A1) (Liu) in view of Song et al. (US Patent Application Publication No. US 2011/0195249 A1) (Song).
Regarding instant claims 1 and 13:
Liu discloses an acrylic hot melt pressure sensitive adhesive (paragraph [0016]).
Liu further discloses that the adhesive composition is irradiated to form an adhesive, wherein suitable sources of radiation include UV LED (paragraph [0068]).
Liu further discloses that the adhesive composition comprises an acrylic polymer and a cationic photoinitiator, wherein the acrylic polymer comprises an acrylic monomer and a cycloaliphatic epoxide monomer (Claim 1).
Liu further discloses that the cationic photoinitiator includes organic sulfonium salts (paragraph [0046]).
Liu does not explicitly disclose the thioxanthone-based photosensitizer.
However, Song discloses a photocationically polymerizable adhesive composition composed of at least an alicyclic epoxy and a photopolymerization initiator (Claim 1).
Song further discloses that the photopolymerization initiator includes sulfonium salts (paragraph [0056]).
Song further discloses that the adhesive composition further includes a photosensitizer to bring about an improvement in reactivity and may improve mechanical strength and adhesive strength of a cured product; furthermore, the photosensitizer is added for the purpose of further improving the curability of the adhesive composition upon UV irradiation. Song further discloses that the photosensitizer includes thioxanthone derivatives (paragraph [0073]).
Before the effective filing date of the claims, 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 include the thioxanthone derivative photosensitizer of Song into the adhesive composition of Liu. The motivation for doing so would have been to improve the reactivity, mechanical strength, adhesive strength, and curability of the adhesive composition.
Therefore, it would have been obvious to combine Song with Liu to obtain the invention as specified by the instant claim.
Regarding instant claim 2:
Liu further discloses that the adhesive composition comprises an acrylic polymer and a cationic photoinitiator, wherein the acrylic polymer comprises an acrylic monomer and a cycloaliphatic epoxide monomer (Claim 1).
Regarding instant claim 3:
Liu further discloses that the acrylic monomer is an acrylic or methacrylic acid derivative of the formula CH2=CH(R1)(COOR2) where R1 is H or CH3and R2 is C1-20, preferably C1-8 alkyl (paragraph [0020]).
Regarding instant claim 4:
Liu further discloses that examples of the acrylic monomers are inclusive of Methyl acrylate, ethyl acrylate, i-butyl acrylate, 2-ethylhexylacrylate, and n-butyl acrylate (paragraph [0022]).
Regarding instant claim 5:
Liu further discloses that the adhesive composition comprises an acrylic polymer and a cationic photoinitiator, wherein the acrylic polymer comprises an acrylic monomer and a cycloaliphatic epoxide monomer (Claim 1).
Liu further discloses that the acrylic monomer is an acrylic or methacrylic acid derivative of the formula CH2=CH(R1)(COOR2) where R1 is H or CH3and R2 is C1-20, preferably C1-8 alkyl (paragraph [0020]).
Regarding instant claims 6 and 14:
Liu further discloses that preparation of the acrylic polymers can be carried out by solution polymerization procedures carried out in the presences of one or more organic solvents inclusive of ethyl acetate, heptane, hexane, toluene, propyl acetate, benzene, and mixtures thereof (paragraph [0056]).
Regarding instant claim 7:
Liu further discloses the cationic photoinitiator is inclusive of triarylsulfonium salts whose anions are inclusive of SbF6-, PF6-, and AsF6- (paragraph [0047]).
Regarding instant claim 8:
Song further discloses that the thioxanthone derivative photosensitizer is inclusive of thioxanthone and 2-isopropylthioxanthone (paragraph [0073]).
Regarding instant claim 9:
The limitation “the application temperature of the adhesive is 110 to 120 °C is an intended use of the claimed composition. 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. In the instant case, since the prior art discloses the adhesive composition of the claims, the adhesive composition of the prior art is construed capable of being applied at the claimed temperature.
Regarding instant claim 10:
The prior art combination discloses the adhesive composition that is substantially identical to that of Applicant’s claims. The limitation that the adhesive composition is “curable at a UVA dose of 300 to 3,000 mJ/cm2” is a property of the claimed composition. One of ordinary skill in the art would readily conclude that the substantially equivalent adhesive compositions encompassed by prior art and recited by the claims would have the same properties including the same curability. 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 11:
TABLE 5 of Liu illustrates those adhesives encompassed by the scope of its disclosure have a shear adhesion failure temperature within the range of 120 to 200 °C (TABLE 5; paragraph [0086]).
Regarding instant claim 12:
TABLE 4 of Liu illustrates those adhesives encompassed by the scope of its disclosure have a peel adhesion between 5 and 35 N/25 mm (TABLE 4; paragraphs [0079-0085]).
Regarding instant claim 15:
Liu further discloses that the disclosed adhesives are used to bond one substrate to a second substrate (paragraph [0070]).
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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/TAM/Examiner, Art Unit 1788 06/08/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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