Examiner Zimmer has assumed responsibility for the prosecution of this case from Examiner Musser.
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 .
Election/Restrictions
Claims 13-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2026.
The current Examiner is in general agreement that at least claim 13 was sufficiently generic that there perhaps would not have been a burden to search at least this claim in concert with claims 1-12 provided that the most germane prior art identified was also using a similar composition in the same capacity. To the extent that this was not necessarily assured, restriction is deemed to have been proper. Moreover, there was no reason to suppose that a reference that disclosed preliminary debonding of a structure comparable to that of claim 12 would necessarily have taught the subsequent re-bonding of a portion of that structure with a third substrate as claim 15 requires.
The Examiner will give strong consideration to rejoining the claims if Applicant manages to make claim 1 allowable.
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 1-5 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Stapf et al., WO 2021/115771 in view of Gilbert, EP 1200252.
Stapf is directed to a (1K) debondable adhesive (abstract) containing an epoxy resin, curing agent, electrolyte, non-conductive filler, solubilizer/impact modifier combination, and electrically-conductive particles. The epoxy resin, according to page 8, lines 12-14, preferably constitutes between 23-61% of the mixture, which is an amount substantially overlapping the quantities of this component stipulated in claims 2 and 3. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191
USPQ 90 (CCPA 1976). Further, page 11 of Stapf and [066] of the instant Specification teach the exact same list of preferred epoxy compounds. Likewise, the instant Specification at [077] and the reference at page 14, lines 16+ disclose the same favored permutations of a curing agent. The amount of a curing agent advocated on page 16, 0.5-21% is encompassed with the range recited in association with this component in claim 2 and strongly overlaps the range of claim 3. The electrolyte component is preferably incorporated in quantities of 5 to 18% consistent with the corresponding ranges of claims 2 and 3. The disadvantages of being outside of the prior art range are addressed at the bottom of page 17 and one of ordinary skill would optimize the amount of electrolyte with these considerations in mind. “where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (ie. does not require undue experimentation).” “Discovering an optimum value of a result effective variable involves only routine skill in the art.” In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
The claimed rheology control agent, as recited in claims 2 and 3 is an electronically-conductive, or non-conducting filler. The prior art teaches both of these at pages 25-26 and 21-22 respectively and in amounts totaling up to 60 wt.% between them. At least several of the non-conductive fillers disclosed in claim 11, including fumed/pyrogenic silica, talc, and calcium oxide/carbonate are mentioned.
The Examiner did not observe a teaching that was anticipatory of the limitation of the last two lines of claim 1 but, on the other hand, the reference discloses the utilization of the same favored epoxy resins and curing agents, and also their employment in similar quantities thus it will necessarily be true that the prior art compositions are at least inclusive of one ones for which the ratio of epoxy groups to epoxy-reactive groups would be consistent with that claimed.
Also not described in Stapf is a compound that correlates with claimed component (c). Gilbert, however, which is also directed to epoxy-based [0036] adhesives comprising an electrolyte that may be de-bonded under electrical stimuli- a useful mechanistic explanation of the role of the electrolyte in debonding is outlined in [0032-0034,0038]- recommends the use of polymer hosts that include ion-coordinating moieties inclusive of disulfide groups capable of enabling the solvation of the cations in particular [0039]. From that same passage, it is made clear that the cation-coordinating groups may be present within the curing agent as they exemplify the employment of a diamine with high alkoxy content, alkoxy groups representing an alternative ion-coordinative group to disulfide residues. That is, compounds containing both epoxy-reactive moieties, such as amine groups but not confined thereto, and also disulfide groups would be obvious based on the teachings of the aforementioned passages. These interactions between the polymer matrix and electrolyte compounds help to facilitate ion conductivity, which is necessary for the faradaic reaction (previously alluded to in [0032] at the adhesive/substrate interface to occur and it is for this reason that one would be motivated to add a compound bearing disulfide groups and epoxide-reactive groups to the composition of Stapf. As an aside, insofar as the compound bearing disulfide groups and epoxide-reactive groups is also a curing agent, the Examiner appreciates that its addition to a system already featuring conforming relative quantities of the epoxy resin and epoxide-reactive groups, conforming to the subject matter of the final two lines of claim 1, would raise the amount of epoxide-reactive groups but it is the Examiner’s position that a skilled practitioner making the proposed modification would know to reduce the amount of curing agent such as those mentioned on page 14 so that this ratio in each of the claims 1-3 is approximately maintained.
As for claim 5, the addition of thiol-based curing agents in addition to the polyamines and compounds disclosed in Gilbert, is further contemplated by Stapf on page 14, lines 22+. Once more, the amounts of the polyamine of page 14, lines 16+, the thiol curative at page 14, lines 22+, and the curing agent suggested by Gilbert that contains cation-coordinating groups, would be added in a sum total that maintains a comparable relative amount of total epoxide groups to epoxide-reactive groups.
As for claim 9, the first two named electrolytes in claim 9 are the same as the first two named in the paragraph bridging pages 21 and 22 of Stapf.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over over Stapf et al., WO 2021/115771 in view of Gilbert, EP 1200252 as applied to claims above, and further in view of Lee et al., KR 2023/0024030.
Gilbert is admittedly not forthcoming as to what compounds bearing a plurality of epoxide reactive groups, to include amines, alcohols, and carboxylic acids, and also a disulfide moiety, may be chosen. In general, the Examiner would contend that the selection of any compounds that adhere to these structural requirements, and is comparably widely available and inexpensive, would be obvious.
In the alternative, though, one of ordinary skill would consult the related prior art, i.e. those directed to curable epoxy resin compositions where curing agents with epoxide-reactive groups and disulfide groups are contemplated. One such disclosure is Lee et al., which is directed to self-healing epoxy adhesives containing as a required component a curative adhering to the formula (1) on page 3 of the original. Paragraph [0016] of the translation defines R1 as encompassing of C5-20 aryl groups. bis(4-aminophenyl)disulfide is offered an exemplary of the compounds of formula (1) in paragraph [0087].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Stapf et al., WO 2021/115771 in view of Gilbert, EP 1200252 as applied to claims above, and further in view of Shimizu et al., WO 2022/075339. To the extent that it evolved from a National stage application of the aforementioned international disclosure, U.S. Patent Application Publication No. 2024/000295 is believed to have an identical disclosure and is used as a faithful translation of the WIPO document into the English language. All citation of teaching location will be those for the U.S. publication.
Once more, a failure of Gilbert to identify permutations of a curing agent comprising epoxide-reactive groups and disulfide groups is conceded in which case one of ordinary skill would consult the related prior art, i.e. those directed to curable epoxy resin compositions where curing agents with epoxide-reactive groups and disulfide groups are contemplated. Another such disclosure is Shimizu et al., which teaches an epoxy-based film-forming composition (abstract) and depicts as a suitable curative 3,3’-dithiopropionic acid on page 6, right column, five structures from the bottom.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stapf et al., WO 2021/115771 in view of Gilbert, EP 1200252 as applied to claims above, and further in view of the article entitled “Comparative Study of Atmospheric Ionic Liquids based on Bis(trfluoromethylsulfonyl)imide Anion and Alkyl Substituted Cations of Ammonium, Pyrrrolodium, and Imidazolium” authored by Ramenskaya et al. and published in the Journal of Molecular Liquids 312 (2020) 113368 and the article entitled “Impact of Size and Electronegativity of Halide Anions on Hydrogen Bonds and Properties of 1-ethyl-3-methylimidazolium-based Ionic Liquids authored by Sanchora et al. and published in the Journal of Physical Chemistry A (2019) 123, 4948-4963.
Most of the embodiments of the electrolyte listed in claim 9 are one for which the anion component is bis(trifluoromethylsulfonyl)imide. By contrast, the majority of the imidazolium salts disclosed on page 22 contain halide anions. The related prior art, however, is suggestive that halide salts of these compounds would exhibit inferior performance due to their lower ionic conductivity. Indeed, Applicant is encouraged to review the subject matter under the heading 6. CONCLUSIONS of Sanchora where it is confirmed that halide anions not only participate in electrostatic interactions but also cation-anion hydrogen bonding that would result in the halide anion being more tightly held and, therefore, less able to migrate towards the anode when a voltage is applied. By contrast, one of ordinary skill recognizes bis(trifluoromethylsulfonyl)imide as being weakly coordinating- see the Introduction section of Ramenskaya et al.- to the imidazolium cation and, therefore, an adhesive containing electrolytes/ionic liquids with imidazolium cations and bis(trifluoromethylsulfonyl)imide anions is more easily debonded due to the more facile dissociation of the electrolyte components as compared to imidazolium halides.
Claims 1-5 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Stapf et al., WO 2021/115771.
All the salient teachings of Stapf summarized above are applicable here. Whereas the Examiner had earlier reasoned that it was necessary to modify the teachings of this disclosure by combining with Gilbert to explain the obviousness of adding a component correlated with (c), and this continues to be true where claims 6 and 7 are concerned, it is noted here that Stapf does, in fact, teach an ingredient anticipatory of (c), and also the compound of claim 8 at page 14, lines 26-29.
As before, because (i) Stapf requires the incorporation of an epoxy resin and an amine-based curing agent, (ii) states a preference for the same epoxy resin and curing agents as a exemplified in the instant Specification, and (iii) teaches strongly overlapping relative amounts of said epoxy and curing agent, the resulting compositions will inherently contain similar ratios of epoxide to epoxide-reactive groups. While it is recognized that the addition of the mercaptan-terminated polysulfide, without adjustments in the amounts of the other components containing epoxide-reactive groups, will raise the ratio of epoxy-reactive groups to epoxide groups, it is the Examiner’s position that a skilled practitioner, when also adding thiol-functional curatives, would know to reduce the amount of the amine curing agent so that this ratio in each of the claims 1-3 is approximately maintained.
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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 9, 12, and 13 respectively of copending Application No. 19/396,760(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The inventions of the instant and copending claims, viewed through the lens of restriction practice, would be linked as subcombination and combination respectively. For a combination claim to be distinct from a subcombination claim, it must not contain all the particulars of the subcombination but the copending adhesive tape does require all the particulars of the adhesive recited in the instant claims hence they are not patentably distinct. The remaining copending claims are all further limiting of copending claim 1 in exactly the same manner as instant claims 2-12 are further limiting of instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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September 29, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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