DETAILED ACTION
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 . 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.
Response to Amendment
The Amendment filed 07/23/2026 has been entered. Claims 1-5, 6-20 remain pending in the application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-5, 7-9, 11-12, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canale (U.S PG Pub 20190309196A1), Tong (WO2022009003A1 - corresponding U.S PG Pub 20240228839A1 used for citations), Briggs (EP2135904B2 - see foreign reference attached), and Yamate (U.S PG Pub 20230118487A1).
Regarding claim 1, Canale, drawn to the art of a curable two-part acrylate or methacrylate adhesive for bonding a variety of substrates (Abstract), discloses an adhesive with an adhesive part A and an activator part B (Abstract). Canale discloses part A comprising a methacrylate monomer (lauryl methacrylate amongst others) [0020]. Canale also discloses that the methacrylate monomer is present in part B [0020 – last line]. Further, Canale discloses that the monomer present can be a combination of monomers, i.e. multiple monomers present [0020] (see also [0007] wherein Canale discloses that ‘said methacrylate ester monomer(s)’ are present in part B – ‘(s)’ indicating multiple or more than one monomers), thus disclosing that a second or more than one monomer can be present in the composition. Canale discloses part B to contain a monomer like lauryl methacrylate amongst others [0020 - last line]. Canale also discloses both part A and part B containing an impact modifier [0007]. Canale also discloses part A and part B to be in the weight ration of 20-1:1 [0011], thus disclosing an overlapping and encompassing range and obviating the instantly claimed range (MPEP 2144.05(I)).
Canale has not explicitly disclosed a thermally conductive filler being a part of the composition or an organometallic catalyst and peroxide catalyst being a part of the composition, however, these limitations are known in the art from Tong, and Briggs, as explained below.
Tong, drawn also to the art of a two-component adhesive [0001], discloses the adhesive being a two-component acrylic adhesive (similar to the adhesive of Canale) [0006], wherein the adhesive is a part A and part B, and both parts A and B contain thermally conductive fillers [0006], and wherein the thermally conductive filler is 60-90 wt.%. of the composition [0006]. Tong also discloses the thermally conductive filler to be selected from aluminum hydroxide, aluminum oxide (alumina), aluminum nitride (AIN), and boron nitride [0039]. Tong also discloses that both part A and part B contain an acrylate monomer and oligomer [0006].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing the specific thermally conductive fillers in the weight range as disclosed by Tong, to arrive at the instant invention, in order to have an adhesive with high elongation at break and high thermal conductivity [0004].
Regarding the limitations of the composition containing an organometallic and peroxide catalyst, this is known from Briggs.
Briggs, drawn also to the art of two-part methacrylate adhesive [0002], discloses the adhesive formulations containing a catalyst system that is a peroxide catalyst [0064] and a catalyst system that is an organometallic catalyst [0066] (see also [0081] – wherein both a peroxide catalyst and organometallic catalyst are present). Briggs discloses that the catalyst systems are selected to effect strong bonds on particularly difficult to bond closed molded composite materials [0081]. Briggs discloses that such adhesives display excellent adhesion to difficult to bond composite surfaces without extensive surface preparation [0052] and retain their elasticity following exposure to heat [0052]. Briggs also discloses the organometallic compound having a metal center of potassium ([0122] – potassium octoate).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing organometallic and peroxide catalysts, as disclosed by Briggs, to arrive at the instant invention, in order to have an adhesive displays excellent adhesion to difficult to bond composite surfaces without extensive surface preparation and retains their elasticity following exposure to heat [0052].
Finally, regarding the limitation of one of the monomers being benzyl methacrylate, it is further known from Yamate for such a monomer to be present in a two part acrylic adhesive composition (see Abstract; [0033]; [0018 & 0021]).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Canale, Tong, and Briggs, with the monomer being benzyl methacrylate, as disclosed by Yamate, to arrive at the instant invention, in order to obtain balanced adhesion of various plastic resins [0018].
Regarding claim 2, as noted above, Canale discloses that a plurality of methacrylate monomers can be present in the part A and part B (see [0007 & 0020] of Canale). Further, Canale discloses the monomers as claimed, trimethylol propane trimethacrylate as an example [0020].
Regarding claim 3, Tong has disclosed the thermally conductive fillers as claimed; aluminum hydroxide, aluminum oxide (alumina), aluminum nitride (AIN), and boron nitride [0039].
Regarding claim 4, Tong has disclosed the thermally conductive filler to be present in the weight range as claimed (60-90 wt.%.) [0006]. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claims 5, Tong also discloses that the particle size of the thermally conductive fillers are of average particle size (Dv50) from 1 to 130 um [0039]. Thus, this would mean that 50% of particles are smaller and larger than the average particle size, as defined in [0016], and would follow a bimodal size distribution with the given range. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claims 7-8, Canale discloses a rubber (i.e. pre-reacted elastomer rubber) being a part of the formulation, and that such a rubber crack propagation of a cured adhesive is inhibited by the presence of such rubbers thereby changing the failure mode of the resultant adhesive [0021]. While Canale does not explicitly disclose the weight ranges for the rubber in part A and part B as claimed, Canale has disclosed that the rubber component can be present in combination with the impact modifier or can be present only in part B [0023] and has established that the presence of the rubber component has an effect on the crack propagation of the cured adhesive, and then as such, the weight of the rubber component is a result effective variable, which has an effect on the crack propagation of the cured adhesive, and it is within the purview of an ordinarily skilled artisan to routinely optimize a result effective variable in the absence of new or unexpected results (MPEP 2144.05 (II)).
Regarding claim 9, Canale has disclosed the impact modified being present in a in 14-20% in part A and 5-15% in part B (Table 1A), Canale has not explicitly disclosed the impact modified being 1 to 5% of the total mixed formulation. However, Briggs discloses the impact modified being 0.01 to 30% percent by weight of the formulation ([0054] of Briggs). The range disclosed by Briggs is an overlapping range and thus obviates the instantly claimed range (MPEP 2144.05 (I)).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the impact modifier being in the weight range as claimed, as disclosed by Briggs, to arrive at the instant invention, in order to have an adhesive that displays excellent adhesion to difficult to bond composite surfaces [0052].
Regarding claim 11, Canale, as modified by Tong and Briggs, discloses the instant limitations. Briggs has disclosed the peroxide catalyst to be in a weight range of 0.01 to 10 wt.%. [0064].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing peroxide catalysts in the weight range as claimed, as disclosed by Briggs, to arrive at the instant invention, in order to have an adhesive displays excellent adhesion to difficult to bond composite surfaces without extensive surface preparation and retains their elasticity following exposure to heat [0052].
Regarding claim 12, Canale has disclosed the formulation containing a toughening agent, an adhesion promoter, an antioxidant, and an accelerator in the weight ranges as claimed (see Table 1A of Canale). The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claim 17, Canale, as modified by Tong, and Briggs, discloses the instant limitations of part A comprising a methacrylate monomer as claimed and a thermally conductive filler, and a part B containing a peroxide catalyst, a thermally conductive filler, and an impact modifier, and the weight ratio of part A to part B as claimed (see claim 1 rejection above). Canale also discloses a plasticizer being present [0030]. Canale discloses that the monomer present can be a combination of monomers, i.e. multiple monomers present [0020], thus disclosing that a second or more than one monomer can be present in the composition.
Regarding claim 18, Canale discloses a process of applying the two-part adhesive to a substrate, wherein parts A and B are mixed together and then applying the adhesive mixture to a substate and allowing the adhesive to cure (Claim 17).
Regarding claim 19, Canale discloses a volume ratio of part A to part B as claimed [0032].
Regarding claim 20, Canale has disclosed holding contact with the mixture for 5 to 180 minutes during free-radical cure and then releasing the substrate from the fixture (Claim 20).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canale (U.S PG Pub 20190309196A1), Tong (WO2022009003A1 - corresponding U.S PG Pub 20240228839A1 used for citations), Briggs (EP2135904B2 - see foreign reference attached), Yamate (U.S PG Pub 20230118487A1), and Sally (GB2593793A - see foreign reference attached).
Regarding claim 10, Canale discloses a thixotropic agent being a part of the composition and in a weight range as claimed (see [0030] and Table 1A). However, Canale has not explicitly disclosed the thixotropic agent to be an organophyllosilicate additive. This limitation is known from Sally, as disclosed below.
Sally, drawn also to the art of a two part adhesive (Abstract; page 2, lines 19-21), discloses a thixotropic agent being organophilic phyllosilicate present in an amount of 0.04% to 4% by weight of the adhesive (page 9, lines 12-24).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the thixotropic agent being an organophilic phyllosilicate in the weight range as claimed, to arrive at the instant invention, since as such this would merely involve a simple substitution of one known element for another to yield predictable results (MPEP 2143 I(B)).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canale (U.S PG Pub 20190309196A1), Tong (WO2022009003A1 - corresponding U.S PG Pub 20240228839A1 used for citations), Briggs (EP2135904B2 - see foreign reference attached), Yamate (U.S PG Pub 20230118487A1), and Wan (U.S PG Pub 20140162059A1).
Regarding claims 13-14, neither Canale, Tong, nor Briggs, have explicitly disclosed a body filler (filler other than the thermally conductive filler) being a part of the composition to impart a flame rating of V0-V1. However, such a flame-retardant or filler is known from Wan as disclosed below.
Wan, drawn also to the art of an adhesive composition based on an acrylic polymer (Abstract), discloses a flame retardant filler being a part of the composition (in addition to a thermally conductive filler – see [0027 & 0035]), and discloses the flame retardant to be aluminum hydroxide (ATH) [0031-0032]. Wan discloses that the composition has a flame rating of between V0 and V1 (see table 2(1)). Wan also discloses that multiple flame retardants can be used and this allows decrease of usage volume and high bond strength [0030].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing a body filler/flame retardant as claimed, as disclosed by Wan, to arrive at the instant invention, in order to have an adhesive that has an excellent balance between adhesive strength and non-halogen flame retardant property [0006].
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canale (U.S PG Pub 20190309196A1), Tong (WO2022009003A1 - corresponding U.S PG Pub 20240228839A1 used for citations), Briggs (EP2135904B2 - see foreign reference attached), Yamate (U.S PG Pub 20230118487A1), Wan (U.S PG Pub 20140162059A1), Hosoda (U.S PG Pub 20160242274A1), and further in view of Satou (U.S PG Pub 20110259628A1).
Regarding claim 15, while Wan has disclosed multiple flame retardants being present in the composition, Wan has not explicitly disclosed a combination as claimed and a weight range as claimed.
Hosoda, drawn also to the art of an adhesive (Abstract), discloses fillers in the adhesive to include alumina, sepiolite clay, aluminum hydroxide (i.e. Al203 and ATH), and discloses that such fillers may be used alone or in combination [0108].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing multiple fillers, as disclosed by Hosoda, to arrive at the instant invention, in order to obtain an adhesive with a filler with a low dielectric constant and low dielectric loss tangent [0108].
With regards to the limitations of the weight ranges or weight % loading, it is noted, as disclosed by Satou (drawn also to the art of a curable resin composition (Abstract)), that the filler weight filling % is a result effective variable, as it directly affects the flame retardancy [0086]. Satou also discloses the fillers to be alumina, aluminum hydroxide [0086]. Thus, as established by Satou, the weight loading % of the filler is a result effective variable which has a direct effect on flame retardancy, and as such, it is within the purview of an ordinarily skilled artisan to routinely optimize a result effective variable in the absence of new or unexpected results (MPEP 2144.05(II)).
Regarding claim 16, while Tong discloses aluminum hydroxide to be a thermally conductive filler, Tong has not disclosed another separate filler. However, this is known from Wan as disclosed below.
Wan, drawn also to the art of an adhesive composition based on an acrylic polymer (Abstract), discloses a flame retardant filler being a part of the composition (in addition to a thermally conductive filler – see [0027 & 0035]), and discloses the flame retardant to be aluminum hydroxide (ATH) [0031-0032]. Wan discloses that the composition has a flame rating of between V0 and V1 (see table 2(1)). Wan also discloses that multiple flame retardants can be used and this allows decrease of usage volume and high bond strength [0030].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing a body filler/flame retardant as claimed, as disclosed by Wan, to arrive at the instant invention, in order to have an adhesive that has an excellent balance between adhesive strength and non-halogen flame retardant property [0006].
While Wan has disclosed multiple flame retardants being present in the composition, Wan has not explicitly disclosed a combination as claimed and a weight range as claimed.
Hosoda, drawn also to the art of an adhesive (Abstract), discloses fillers in the adhesive to include alumina, sepiolite, aluminum hydroxide (i.e. sepiolite and ATH), and discloses that such fillers may be used alone or in combination [0108].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Canale, with the adhesive containing ATH and sepiolite, as disclosed by Hosoda, to arrive at the instant invention, in order to obtain an adhesive with a filler with a low dielectric constant and low dielectric loss tangent [0108].
With regards to the limitations of the weight ranges or weight % loading, it is noted, as disclosed by Satou (drawn also to the art of a curable resin composition (Abstract)), that the filler weight filling % is a result effective variable, as it directly affects the flame retardancy [0086]. Satou also discloses the fillers to be alumina, aluminum hydroxide [0086]. Thus, as established by Satou, the weight loading % of the filler is a result effective variable which has a direct effect on flame retardancy, and as such, it is within the purview of an ordinarily skilled artisan to routinely optimize a result effective variable in the absence of new or unexpected results (MPEP 2144.05(II)).
Response to Arguments
Applicant’s arguments, see Amendment, filed 07/23/2026, with respect to the rejection(s) of claim(s) 1 under Canale, Tong, and Briggs have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Canale, Tong, Briggs, and Yamate.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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