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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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.
Claims 5-7, 9, 12, 13, 25, and 28 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitations "at least 7 wt%" and "not greater than 19 wt%", and the claim also recites "at least 10 wt%," "at least 12 wt%," "at least 15 wt%," "at least 18 wt%," "not greater than 17 wt%," "not greater than 15 wt%," and "not greater than 13 wt%" which are narrower statements of the ranges. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Likewise, claim 6 is rendered indefinite because it recites the broad ranges "at least 27 wt%" and "not greater than 43 wt%" as well as the narrower ranges "at least 30 wt%," "at least 35 wt%," "at least 38 wt%," "at least 40 wt%," "not greater than 40 wt%," "not greater than 38 wt%," "not greater than 35 wt%," "not greater than 33 wt%," and "not greater than 30 wt%," which are narrower statements of the ranges.
Likewise, claim 7 is rendered indefinite because it recites the broad ranges "at least 25 wt%" and "not greater than 50 wt%" as well as the narrower ranges "at least 33 wt%," "at least 35 wt%," "at least 38 wt%," "at least 40 wt%," "not greater than 45 wt%," "not greater than 42 wt%," "not greater than 40 wt%," and "not greater than 37 wt%," which are narrower statements of the ranges.
Likewise, claim 9 is rendered indefinite because it recites the broad ranges "at least 1.5" and "not greater than 4.5" as well as the narrower ranges "at least 1.7," "at least 2.0," "at least 2.5," "at least 3.0," "not greater than 4.0," "not greater than 3.5," "not greater than 3.0," "not greater than 2.5," and "not greater than 2.2," which are narrower statements of the range.
Likewise, claim 12 is rendered indefinite because it recites the broad ranges "at least 20 oC" and "not greater than 150 oC" as well as the narrower ranges "at least 25 oC," "at least 30 oC," "at least 35 oC," "at least 40 oC," "at least 50 oC," "at least 60 oC," "not greater than 140 oC," "not greater than 130 oC," and "not greater than 120 oC," which are narrower statements of the ranges.
Likewise, claim 13 is rendered indefinite because it recites the broad ranges "at least -90 oC" and "not greater than 18 oC" as well as the narrower ranges "at least -80 oC," "at least -70 oC," "at least -50 oC," "not greater than 15 oC," "not greater than 10 oC," "not greater than 5 oC," "not greater than 0 oC," "not greater than -10 oC," "not greater than -20 oC," "not greater than -30 oC," and "not greater than -40 oC," which are narrower statements of the ranges.
Likewise, claim 25 is rendered indefinite because it recites the broad range "> 3 pli" as well as the narrower ranges "3 to 100 pli," "3 to 75 pli," "3 to 60 pli," "3 to 50 pli," and "5-40 pli," which are narrower statements of the range
Regarding claim 28, the phrases "such as" and "or even" render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim Interpretation
For the purpose of examination, the limitations of claims 5-7, 9, 12, 13, 25, and 28 are taken to encompass the broadest range(s) recited in each claim.
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.
Claims 1-13, 17, 18, 27, 29, 30, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada (WO 2022/255313).
Note: since WO 2022/255313 was not published in the English language, citations in this action refer to US 2024/0301243 which is the published application of the US national stage application.
Kawada is directed to a UV curable composition with excellent adhesiveness (paragraph 0001). The composition comprises a UV curing agent and a curing component of (meth)acrylate monomer and a crosslinking component (paragraph 0010). The composition may further comprise a nonreactive component (paragraph 0011), such as a tackifier (paragraph 0013). The tackifier may be a rosin resin or terpene resin (paragraph 0072) employed at a preferred concentration of 10 to 90 parts by weight relative to 100 parts by weight of the curing component (paragraph 0090). The UV curing agent may be benzophenone, an alkyl phenome, or an acylphosphine oxide (paragraph 0057). The composition may contain an additive, such as a viscosity modifier (paragraph 0092).
In the embodiment of Example 13, the composition comprises 30.0 parts isononyl acrylate and 10.0 parts 2-methylacryloylethyl hexahydrophthalate (Table 2). Since a homopolymer of 2-methylacryloylethyl hexahydrophthalate has a Tg of 74 oC while one of isononyl acrylate has a Tg of -43.6 oC (Table 3), 2-methylacryloylethyl hexahydrophthalate reads on the first acrylate monomer of the claims while isononyl acrylate reads on the second acrylate monomer of the claims. The 2-methylacryloylethyl hexahydrophthalate is about 7 wt% of the composition and the isononyl acrylate is about 22 wt% of the composition with the ratio (2-methylacryloylethyl hexahydrophthalate):(second acrylate monomer) being 1:3.
Although the embodiment of Example 13 contains only about 11 wt% tackifier, the total content of nonreactive component (tackifier plus thermoplastic resin) is about 25 wt%. It would have been obvious to one of ordinary skill in the art to employ a nonreactive component constituted entirely of tackifier since Kawada teaches both tackifier and thermoplastic resin to functionally equivalent for use as the nonreactive component of the UV curable composition.
Regarding claim 2, both isononyl acrylate and 2-methylacryloylethyl hexahydrophthalate are mono-functional.
Regarding claim 3, isononyl acrylate includes a carbon-carbon double bond bonded to an ester functional group wherein the R group is the alkyl group -C9H19 while 2-methylacryloylethyl hexahydrophthalate includes a carbon-carbon double bond bonded to an ester functional group wherein the R group includes alkyl and cycloalkane groups.
Regarding claim 6, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case, it would have been obvious to one skilled in the art to have expected the same adhesiveness for a UV curable coating comprising composite isononyl acrylate at a higher concentration than 22 wt%, particularly since other working examples employ higher amounts of isononyl acrylate (e.g., about 30 wt% in Example 12).
Regarding claims 10 and 11, Kawada teaches that the acrylate monomer may include monomers from both of these claims, such as 2-hydroxypropyl methacrylate and isodecyl methacrylate (paragraph 0038).
Regarding claim 27, while Kawada is silent regarding the manner in which the curable composition is presented, in the absence of a showing of criticality or unexpected results, it would have been obvious to one of ordinary skill in the art to segregate the components in any fashion including a form in which one composition comprises the curing agent and the 2-methylacryloylethyl hexahydrophthalate and another comprises the isononyl acrylate.
Regarding claim 29, a viscosity modifier is a rheology modifier.
Regarding claims 30 and 32, in the embodiment of the Examples, the composition is applied to a polyethylene terephthalate sheet (paragraph 0103). The polyethylene terephthalate sheet reads the barrier layer of claim 30 as the claim requires no quantitative degree of barrier property) and the film of claim 32.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada (WO 2022/255313) in view of Ito (US 2022/0259361)
Kawada suggests all the limitations of claims 14-16, as outlined above, except for inclusion of the additives recited in these claims. However, Kawada does teach that the composition may contain additives, such as a heat curing agent (paragraph 0092).
Ito is directed to a UV curable acrylate composition (paragraphs 0020-0037). The composition may include a polymerization accelerator, such as tertiary aromatic amines, to improve photocurability (paragraph 0060). The composition may also include chemical polymerization initiators, such as organic peroxides, to improve curability (paragraph 0071).
It would have been obvious to one of ordinary skill in the art to add (i) a polymerization accelerator, such as tertiary aromatic amines, to improve photocurability, and/or (ii) a chemical polymerization initiators, such as organic peroxides, to improve curability.
Allowable Subject Matter
Claims 19-24, 26, 28, and 31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 25 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.
The following is a statement of reasons for the indication of allowable subject matter.
The inventions of claims 19-26 are directed to a method of waterproofing a construction surface comprising applying a liquid layer of the composition of claim 1 over a construction surface, allowing the composition to form a waterproofing layer by curing, followed by applying a layer of hydratable cementitious composition over the waterproofing layer. The peel adhesion between the hardened concrete and waterproofing layer is 3.0 to 50.0 pli (i.e. 0.525 to 8.756 N/mm).
The invention of claim 28 is directed to the waterproofing kit of claim 27 further comprising instructions for forming a curable composition by mixing the first and second compositions and forming a waterproofing layer after curing, wherein the waterproofing layer has a shore A durometer of 15 to 95.
The invention of claim 31 is directed to the waterproofing article of claim 30 wherein a particulate layer is disposed over at least a portion of the waterproofing layer opposing the barrier layer.
In each case Kawada, which suggests the curable composition of claim 1, represents the closest prior art. However, the composition of Kawada is designed for use as an adhesive for use inside electronic devices (paragraph 0002). The reference does not teach or fairly suggest using the composition: (a) in a waterproofing method as recited in claim 19 (or the subsequently formed article of claim 26), (b) in a waterproofing kit as recited in claim 28, or (c) in a waterproofing article as recited in claim 31.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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