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 .
Applicant's election with traverse of Group II, claims 14 and 15, in the reply filed on 4/3/26 is acknowledged. The traversal is on the ground(s) that Group I and Group II share a common subject matter of a curable composition. This is not found persuasive because the technical feature of a curable composition does not make a contribution over the prior art in view of US 2002/040093 or US 2020/181465 as noted in the restriction.
Applicant also argued there is no serious burden for examining both groups. This is not a proper argument is not proper for under unity of invention 37 CFR 1.475(c)371. Furthermore, if arguments were considered, the issues arising while examining composition and metho claims would be diverse and this would constitute a serious burden on the Office and hence would render the restriction proper.
The requirement is still deemed proper and is therefore made FINAL.
Hence, claims 1-15 remain in the application with claims 1-13 having been withdrawn from consideration as being directed toward a non-elected invention. Claims 16 and 17 have been added and belong to elected Group II. Therefore, claims 14-17 remain in the application for prosecution thereof.
Claim Rejections - 35 USC § 112
Claims 14 and 15 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 14, the claim refers to a non-elected claim and hence is improper. The Examiner suggest amending the claim to include the subject matter of the non-elected claim to overcome this rejection.
Regarding claim 15, the term “the cured composition” lacks antecedent basis as the previous claim does not recite the composition is “cured”. Clarification is requested.
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 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 and 17 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].
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
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