DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1-17; “an adhesive composition”) in the reply filed on 06/29/2026 is acknowledged. The applicants argue at pages 3 and 4 of their Remarks filed 06/29/2026 that a search for the composition according to claim 1 (Group I) would inevitably also function to search for art pertaining to methods for use of such compositions (Group II), and that the search burden is substantially minimized by the existing overlap of the claims of Groups I and II. The applicants also argue at page 4 of their Remarks filed 06/29/2026 that the determination to make the pending Restriction requirement final must evidence the patentable distinctness of the groups. However, these arguments are not persuasive at this time for the following reasons. As mentioned in the previous Office action mailed 04/29/2026, the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries). For instance, the invention of Group I is classified in C09J7/35 whereas the invention of Group II is classified in a different search area, i.e., B29C 65/4815. Also, as mentioned in the previous Office action, while the inventions I and II are related as product and product of use, the inventions are shown to be distinct because the product of Group I can be used in a materially different process such as a method of bonding two substrates with hot glue gun. Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 18-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 06/29/2026.
Claim Objections
4. Claim 10 is objected to because of the following informalities:
As to Claim 10: The applicants are advised to define “R” in the formula consistent with the definition provided at page 6, paragraph [0019] of the present specification.
Appropriate correction is required.
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.
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.
5. Claim 4 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.
As to Claim 4: It recites, among other things, “main group (metalloid) elements” (Emphasis added). Due to the use of parenthesis, it is not clear whether the claim is limited to the “metalloid” elements, broadly recited main group elements, or both. Thus, the scope of this claim is deemed indefinite. Clarification in the next response by applicants will be helpful to better ascertaining the scope of this 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.
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.
6. Claims 1-9 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yonaiyama et al. (US 2012/0235085).
The claims are directed to an adhesive composition comprising (i) a thermoplastic polymer and (ii) solid particles having an oxide or salt composition embedded within the thermoplastic polymer, wherein the salt composition contains a cationic element associated with one or more anions that are not halide atoms. By virtue of using the term “or” as highlighted above, the claims may be limited to solid particles having an oxide composition embedded within the thermoplastic polymer.
As to Claims 1, 7-9, and 13-17: Yonaiyama et al. disclose an adhesive composition (Paragraphs [0020] and [0021]), comprising SiO2, CaO, and Al2O3 having average particle sizes of less than 10 µm (Paragraphs [0020] and [0044]-[0045]), which correspond to the claimed solid particles having an oxide composition and overlaps with the particle sizes of 1 nm-500 microns and 1 nm-5 microns recited in claims 16 and 17. Yonaiyama et al. also disclose that that the SiO2 is used in an amount of 10 wt.% or more, CaO is used in an amount of 3 wt.% or more, and Al2O3 is used in an amount of 5 wt.% or more (Paragraphs [0026]-[0028], which overlap with those recited, i.e., 0.1-20 wt% of solid particles (claim 14) and 1-20 wt% of solid particles (claim 15). See also MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, Yonaiyama et al. do not mention the claimed thermoplastic polymer with sufficient specificity to constitute anticipation within the meaning of 35 USC 102.
Nevertheless, Yonaiyama et al. do disclose employing an organic binder which may be selected from, among other things, polyalkylene oxide compounds, which according to present claims 8 and 9 correspond to the claimed thermoplastic polymer, to obtain an adhesive with high heat resistance (Paragraphs [0018] and [0032]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to select the claimed thermoplastic polymer, i.e., polyalkylene oxide, as the organic binder in the adhesive, with a reasonable expectation of successfully obtaining high heat resistant properties as suggested by Yonaiyama et al.
As to Claims 2-6: Yonaiyama et al. broadly disclose adding additional inorganic materials which may be selected from, among other things, calcium carbonate (CaCO3) particles (which according to present claims 2-6 correspond to the claimed solid particles having a salt composition) for the purposes of providing improved strength to the adhesives (Paragraphs [0031] and [0044]). Thus, it would have been obvious to one of ordinary skill in the art to add the claimed solid particles having a salt composition (i.e., calcium carbonate) to the adhesive for the purposes of improving its strength as suggested by Yoniayama et al.
7. Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yonaiyama et al. (US 2012/0235085) as applied to claims 1-9 and 13-17 above, and further in view of Boswell et al. (US 2019/0282459).
The disclosure with respect to Yonaiyama et al. in paragraph 6 is incorporated here by reference. However, they do not specify their polyalkylene oxide as polyethylene oxide and its particular molecular weight as required by claims 11 and 12.
Nevertheless, Boswell et al. teach the addition of polyethylene oxide polymers having a weight average molecular weight of 1,000-1,000,000 Daltons (Da) (which overlap with the claimed molecular weight of at least 100,000 Da) in an adhesive composition to provide the same with desired film-forming properties (Paragraphs [0074], [0078] and [0117]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the polyethylene oxide polymer having the claimed molecular weight taught by Boswell et al. in the adhesive composition of Yoaniyama et al., with a reasonable expectation of successfully imparting desired film-forming properties.
8. Claim 10 is 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.
Correspondence
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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