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 .
The amendment filed 7/28/26 has been considered and entered. Claim 18 has been added. Claims 1-18 remain in the application with claims 1-13 having been withdrawn from consideration as being directed toward a non-elected invention. Therefore, claims 14-18 remain in the application for prosecution thereof.
Considering the amendment filed 7/28/26, the 35 USC 112 rejections have been withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Boggs et al. (11,261,359).
Boggs et al. (11,261,359) teaches a composition including component (I) a beta- ketoester, component (II) an aldehyde having at least one aldehyde group and a third component (III) including an amine (abstract). The beta-ketoester is an acetoacetate is known to have the claimed formula. The molecular weight of component (I) can be 500-100,00 g/mol (col. 11, lines 20-32) as well as 1,000-6,000 (col. 25, lines 3-15). The composition can be used as an adhesive or coating (col. 2, lines 21-28). The beta-ketoester includes an alkyl group which meets the claimed hydrocarbyl radical of 1-6 carbons (col. 14, lines 65-67).
Regarding claim 14, the components (I)-(III) are mixed and applied to a substrate (col. 11, lines 47-64).
Regarding claim 16, no water is added as a solvent (col. 32, lines 54-67).
Claims 15,17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Boggs et al. (11,261,359) in combination with Omachi et al. (2022/0089871).
Features detailed above concerning the teachings of Boggs et al. (11,261,359) are incorporated here.
Boggs et al. (11,261,359) fails to teach the aldehyde group having a polyoxyalkylene backbone.
Omachi et al. (2022/0089871) teaches a curing composition including a urethane prepolymer having a polyoxyalkylene backbone (abstract).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Boggs et al. (11,261,359) curable composition to include a polyoxyalkylene backbone of the polyurethane to improve adhesiveness when applied to a substrate as evidence by Omachi et al. (2022/0089871).
Regarding claim 15, Omachi et al. (2022/0089871) teaches applying adhesive to a thickness of 1mm and curing [0095].
Regarding claim 18, while Omachi et al. (2022/0089871) teaches applying adhesive to a thickness of 1mm and curing [0095] and Boggs et al. (11,261,359) teaches thicknesses of 50-200 microns, the Examiner takes the position that forming thicker films by repeating the process would have been within the skill of one practicing in the invention and hence would meet the newly claimed thickness of 1.5-25mm absent a showing to the contrary.
Response to Amendment
Applicant's arguments filed 7/28/26 have been fully considered but they are not persuasive.
Applicant argued Boggs et al. (11,261,359) teaches thicknesses of 50-200 microns and not the newly at least 1mm.
While the Examiner acknowledges this fact, the Examiner has taken the position that the thickness is a processing parameter optimized by one skilled in the art and would have been within the skill in the art to repeat the coating process to produce the desired thickness absent a showing to the contrary. Furthermore, it is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378 (CCPA 1960).
Applicant argued Omachi et al. (2022/0089871) discloses 1mm as the thickness of a shear-adhesion test specimen and not a teaching to increase the thickens Boggs et al. (11,261,359) and the newly at least 1mm.
Regardless whether or not the shear-adhesion specimen prepared as the adhesive is recited, it still teaches forming thicknesses of 1MM and therefore meets the claimed limitation as it teaches that thickness being attainable.
Applicant argued Omachi et al. (2022/0089871) teaches the backbone on its isocyanate-bearing urethane and not the aldehyde compound.
The Examiner disagrees. Omachi et al. (2022/0089871) teaches the isocyanate bearing urethane prepolymer includes the alkdehyde and therefore meets the claimed limitation of the aldehyde groups comprise a polymer having poly(oxyalkylene) units or polyester units.
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 BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN K TALBOT/Primary Examiner, Art Unit 1712
