DETAILED ACTION
Pending Claims
Claims 1-14 are pending.
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, 2nd paragraph (b)
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.
Claim 14 is 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, claim 14 recites the limitation "further comprising, prior to step e), partially curing the mixture by initiating a photoinitiator for the free-radically self-polymerizable material by irradiation with actinic light," when referring to the mixed two-part composition of claim 1. There is insufficient antecedent basis for a photoinitiator in the claim. Furthermore, it is unclear how or when this photoinitiator is introduced to the mixture for this partial curing to take place.
Claim Rejections - 35 USC § 112, 4th paragraph (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 features “a curing agent for the epoxy resin” (singular). Claim 6 attempts to further limit the curing agent with a material: selected from the group consisting of primary amines, secondary amines, and any combination thereof. The any combination thereof improperly shifts the scope from a singular material to multiple materials.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/998,701 (unpublished) in view of Desai et al. (US 2012/0129980 A1) and Popp (US 2011/0313082 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented – see MPEP 804 I.B.1.(b)(ii).
Regarding claims 1-12:
Copending claims 1-19 satisfy all the material limitations of claim (1);
Copending claims 2-3 satisfy all the material limitations of claim (2);
Copending claim 3 satisfies all the material limitations of claim (3);
Copending claim 11 satisfies all the material limitations of claim (4);
Copending claim 5 satisfies all the material limitations of claim (5);
Copending claim 6 obviously satisfies all the material limitations of claim (6);
Copending claim 7 satisfies all the material limitations of claim (7);
Copending claim 8 satisfies all the material limitations of claim (8);
Copending claim 9 satisfies all the material limitations of claim (9);
Copending claim 10 satisfies all the material limitations of claim (10);
Copending claim 12 obviously satisfies all the material limitations of claim (11);
Copending claim 13 satisfies all the material limitations of claim (12);
The copending claims fail to disclose the two-part configuration of the instantly claimed toughened epoxy-based composition. The teachings of Desai et al. disclose a related toughened epoxy-based composition (see Abstract; paragraphs 0004-0006). They demonstrate that this type of composition is recognized in the art as equally suitable as a one-component composition (see paragraphs 0006 & 0066) and as a two-component composition (see paragraphs 0005 & 0016). In light of this, Popp demonstrates that curing agents thermally activated at relatively high temperatures are suitable for one-component compositions (see paragraph 0003). Popp further demonstrates that curing agents thermally activated at relatively low temperatures are suitable for two-component compositions, where the two-component configuration avoids premature crosslinking (see paragraph 0003). Therefore, it would have been obvious to one of ordinary skill in the art to prepare the composition of the copending claims as either a one-component composition or as a two-component composition, depending on the temperature at which the curing agent is thermally activated.
Regarding claims 13-14, the skilled artisan would have obviously envisaged the instantly claimed method in light of the combined teachings of {copending claims 16-19, Desai et al., and Popp}.
Allowable Subject Matter
Aside from the double patenting rejection, claim 1 would be allowable.
Aside from the double patenting rejection, claims 2-5 and 7-13 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Aside from the double patenting rejection, claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Aside from the double patenting rejection, claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The claimed invention in drawn to: (1-12) a two-part composition and (13-14) a method of bonding two parts with the two-part composition. The composition comprises:
(A) an epoxy resin;
(B) a curing agent for the epoxy resin;
(C) a first toughening agent; and
(D) a second toughening agent comprising a free-radically self-polymerizable material represented by the formula: LR1q
wherein each R1 is independently selected from a functional group represented by the formula:
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90
232
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wherein: each R2 is independently hydrogen or methyl; n is an integer from 1 to 5, inclusive; X is O, S, or NH; and Y is a single bond or a divalent group represented by the formula:
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108
136
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wherein: N' is a nitrogen bonded to the carbonyl carbon of R1; and T is a divalent group selected from the group consisting of a linear alkylene, a cyclic alkylene, an unsubstituted arylene, a substituted arylene, and combinations thereof;
q is an integer of at least 2; and
L is a q-valent organic polymer comprising a monomer unit represented by the formula a)
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112
464
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wherein R3 is a hydrogen, a (meth)acrylate group, or a Z-terminated alkyl or heteroalkylene chain, wherein each Z-terminated chain may independently include a linkage selected from the group consisting of a secondary amino linkage, a tertiary amino linkage, an ether linkage, and combinations thereof, and wherein each Z is independently O, S, or NH.
Agarwal et al. (US 2010/0130655 A1) represents the closest prior art. They disclose an epoxy-based adhesive composition formulated with:
(A) an epoxy resin (paragraphs 0013-0019);
(B) a curing agent for the epoxy resin (paragraphs 0059-0062);
(C) a first toughening agent (paragraphs 0020-0034 and/or 0048-0058); and
a polyurethane having urethane and/or urea linkages (paragraphs 0035-0042).
The polyurethane material of Agarwal et al. includes (meth)acrylate functionalized polyurethanes (see paragraphs 0036-0040), which are formed by reacting an isocyanate-terminated urethane prepolymer with an isocyanate-reactive (meth)acrylate (see paragraphs 0036-0037). However, they fail to disclose the instantly claimed second toughening agent (D) represented by the formula: LR1q.
Mahoney et al. (US 2022/0325022 A1 or U.S. Pat. No. 12,378,340) disclose a “crosslinker” that satisfies instantly the claimed second toughening agent (D) represented by the formula: LR1q (see patented claims 1, 2, & 18-20). This material is prepared with an isocyanate-functional (meth)acrylate and an isocyanate-reactive polyether (see exemplary embodiments), which is different from the reaction discussed in Agarwal et al. These “crosslinkers” are formulated to cure/crosslink with other (meth)acrylate monomers (see patented claims 3-7, 16 & 17). However, there is no motivation formulate the epoxy-based composition of Agarwal et al. with the “crosslinker” of Mahoney et al. because the curing mechanism described by Mahoney et al. is unrelated to the curing mechanism featured in the epoxy-based composition of Agarwal et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Agarwal et al. (US 2008/0188609 A1) disclose a related epoxy-based adhesive compositions formulated with tougheners.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 26, 2026
