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 .
Response to Arguments
In their response applicants amended claim 1 to include list of (meth)acrylate functionalized compounds which are urethane acrylate oligomers, as well as polyether or polyester compounds reacted with isocyanate and capped with acrylates bearing hydroxyl group. Claim 21 was cancelled to obviate 112 2nd paragraph rejection.
Amendment to claim 1 further result in 112 issues with claims 23 and 33 and specifically to the claimed acrylate compounds.
Applicants’ arguments were specifically directed at improper combination of references, inherency of the property, wherein term “inherent” was never utilized by the examiner and lastly about improper hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
What is known in the art are the urethane-based adhesives which are liquid at room temperature and cure at room temperatures. The prior art of record clearly teaches what types of components are utilized in the art. While Osae may require all of its components, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, Osae teaches urethane acrylate oligomers which type of oligomers are utilized in the examples of Barnes, consequently, the references were not combined willy nilly, but the urethane acrylate oligomer which is pertinent to the art of Barnes.
Selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp. 325 U.S. 327, 65 USPQ 297 (1945).
The office action clearly indicated that the oligomers of Osae are comprised of basically the same monomeric components as Barnes, which includes the molecular weights of the glycol components and while Osae may have different reaction mechanism, his teachings were not bodily incorporated into the teachings of Barns. There were no substitutions suggested. The grounds of rejection clearly stated that the oligomers of Barns have to have glass transition temperature that is lower than room temperature which encompasses zero degrees as shown is Osae, and such is required in order to apply the adhesive using syringe.
The examiner’s determination is an obviousness determination and not an inherency one, and term inherent was never utilized in the rejection. It is really puzzling how applicants even came to inherency conclusion when the grounds of rejection explicitly state that it would have been obvious to one of ordinary skill in the art that the components of Barns would have glass transition temperature lower than room temperature encompassing less than zero degrees.
Examiner agrees that different type of reaction mechanism matter with respect to the final product, however Osae again was not utilized to incorporate his components but rather a showing that the components of Barns would also be liquid.
As such applicants’ arguments are not commensurate with the grounds of rejection. The rejection, however, will have to be restated to reflect the amendment to the claim 1.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-33 are rejected under 35 U.S.C. 103 as being unpatentable over Barns (US 2014/0329959) in view of Toback (US 3,425,988) or Baccei (US 4,309,526).
With respect to claims 17 and 30, Barnes discloses a two-part curable composition. According to claim 1 of Barnes two-part composition comprises (Table 24):
Part A comprising cyanoacrylate component and peroxide,
Part B comprising free radical curable composition, urethane acrylate oligomer and a transition metal.
Wherein when mixed together peroxide catalyst initiates cure of the free radical curable component, and the transition metal initiates cure of the cyanoacrylate component. The free radical curable component is defined in claim 8 of Barnes and it is polyether urethane (meth)acrylate. Specific examples A19 and A20 exemplify polyether urethan meth(acrylate).
While Barnes discloses use of polyether urethane acrylate which utilizes the same type of acrylate compounds, Barns provides little with respect to the glass transition temperature. Having said that since applicants apply the composition utilizing two compartment syringe, the components have to be in a flowing form in order to be applied by syringe. This in turn means that the acrylate component at hand is liquid at room temperature and becomes solid at temperatures below 0oC meeting requirements of instant claims 1 and 30.
The oligomers of Barnes are the oligomers are the oligomers disclosed in Toback and Baccei (see legend underneath Table 24).
Toback discloses oligomers include polyester (decamethylene glycol adipate) that is reacted with toluene diisocyanate and capped with hydroxyethyl ethyl acrylate (Example III). The resulting oligomer is a clear light-yellow liquid (glass transition temperature less than room temperature) encompassing claimed zero degrees. Another oligomer is a polyether urethane oligomer reacted with toluene diisocyanate and capped with hydroxyethyl methacrylate (claims)
Baccei discloses urethane acrylates based on polyethers and capped with hydroxy acrylates (Abstract) (col. 5, l. 11-19). Preferred polyether component is polytetramethylene glycol reacted with MDI and capped with hydroxypropyl methacrylate. Resultant oligomer is liquid (at least Examples 1-3).
Consequently at least one of the two references teaches that the oligomers obtained before they are reacted with additional components of the second part are in fact liquid at room temperature and their glass transition temperature is less than 25oC encompassing 0oC further meeting limitation of instant claim 30. The oligomers further meet the limitations of newly amended claim 17.
It would have been obvious to one having ordinary skill in the art at the time instant inventio was filed to utilize oligomers of Toback or Baccei and thereby obtain invention was filed. The modification would have been obvious because Barnes explicitly states that these are the oligomers utilized in his examples.
With respect to claim 18, claim 2 of Barnes discloses formula for cyanoacrylate which is the same formula as claimed wherein R is also selected from alkyl, alkoxyalkyl, cycloalkyl, alkenyl, aralkyl, aryl, allyl and haloalkyl.
With respect to claims 19 and 20, claims 3 and 4 of Barnes disclose peroxide catalyst as perbenzoate, and t-butyl perbenzoate respectively.
With respect to claim 22, claim 6 of Barnes recites that the peroxide catalyst is present in the amount of about 0.01% to about 10% by weight of cyanoacrylate component.
With respect to claim 23, claim 8 of Barnes discloses free radically curable component which is a (meth)acrylate component, selected from exactly the same group as that of the instant invention (all compounds).
With respect to claim 24, claim 9 of Barnes states that the transition metal comprises a member selected from the group consisting of copper, vanadium, cobalt and iron. The claims are actually the same.
With respect to claim 25, the claim reciting where the composition is housed is viewed as non-limiting because it does not further narrow the scope of the composition itself. However, claim 10 of Barnes is exactly the same as instant claim 25 and recites dual chamber syringe wherein part A (First part) is housed in the first chamber and part B (second part) is housed in second chamber of a syringe.
With respect to claims 26 and 27, claim 11 of Barnes states that the second part further comprises at least one of plasticizer, filler and toughener. Barnes in [0112] states that the tougheners are particularly suitable for use in part A of the two-part adhesive.
With respect to claim 28, claim 12 of Barnes states that the toughener is selected from the same group, word for word. See also [0112]
With respect to claim 29, limitation as to what happens when composition is disposed between two substrates and how, is non-limiting as it does not further limit the composition itself. It should be noted that when composition is disposed between two substrates, the composition crosslinks and cures which product is chemically distinct from the claimed two-part composition.
With respect to claim 31, while not claimed, examples A19 and A20 disclose use of (meth)acrylate compound in amount of 33.0 and 21.206 parts which falls within claimed 15-50 parts. Per legend under the table, validating with the patents disclosed therein, the compound is polyether acrylate urethane oligomer.
With respect to claim 32, claim is directed to a cured product and not the composition itself. Since cured product is chemically and structurally different the claim is non-limiting with respect to the composition. Having said Barnes discloses improved strength and impact resistance (see examples).
With respect to claim 33, free radical component of the second part of the adhesive in addition to disclosed methacrylates includes maleimide-, nadimide- and itaconimide-, or their mixtures as defined in [0102-0103]. These compounds are referred to as reactive diluent.
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 17-20 and 22-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 U.S. Patent No. 12,351,746 to Davis. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of Davis discloses two-part curable composition where:
Part A comprises cyanoacrylate component and peroxide catalyst,
Part B comprises transition metal compound and (meth)acrylate functionalized compound having Tg of less than about 0oC, where in when mixed together peroxide catalyst initiates cure for the free radical curable components, and the transition metal initiates cure of the cyanoacrylate component. Wherein the (meth)acrylate functionalized compound is a (meth)acrylate functionalized urethane resin made with isophorane diisocyanate.
While claim 1 of Davis does not explicitly distinguish between any specific type of urethane resin, it is broad in nature, and it encompasses both polyester urethanes and polyether urethanes. Isophorane diisocyanate meets the limitation of instant claim 33.
Remaining claims 2-15 of Davis are identical to claims 18-32 of the instant invention.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 3, 2026
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