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 .
Status of the Claims
2. Claims 1-20 are currently pending. Group II claims 9-15 have been elected without traverse in the response filed on 12/25/2025. This office action is the first office action on the merits of the claims.
Election/Restrictions
3. Applicant’s election without traverse of Group II claims 9-15 in the reply filed on 12/25/2025 is acknowledged.
Claims 1-8 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/25/2025.
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.
4. Claims 9-15 are 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.
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 9 recites the broad recitation of listing the structural units B selected from a larger group of structures , and the claim also recites that optionally the structural unit B is one of 2 structures which is the narrower statement of the range/limitation. Additionally, claim 9 recites the broad recitation of the m1 and m2 values being each independently an integer from 1 to 20 , and the claim also recites that optionally each m1 being independently an integer from 2 to 12 and each m2 being independently an integer from 8 to 12 which is the narrower statement of the range/limitation. The claim(s) are 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.
Concerning claim 13 the claim recites “a weight average molecular weight of the first adhesive is 500,000 to 1,500,000” which renders the claim indefinite as it is not clear what the units indicated are as common units include Daltons, kilodaltons, g/mol, and kg/mol.
Claims 10-12, 14-15 are rejected as being dependent from a rejected base claim.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
5. Claim(s) 9-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pietsch (US 2015/0376471 A1).
Concerning claim 9, 15 Pietsch teaches adhesive compositions (paragraph 0004). Pietsch particularly teaches an acrylic ester copolymer prepared in a two stage emulsion polymerization with polymerization of first of 80 parts by wight of an monomer emulsion 1 that consists of 90 parts by weight of n-butyl acrylate 2 parts by weight of hydroxypropyl acrylate 6.4 parts by weight of methyl methacrylate and 1.6 parts by weight of acrylic acid and then polymerization 20 parts of a monomer emulsion 2 consisting of 86.5 parts of n butyl acrylate 2 parts of hydroxypropyl acrylate 3.6 parts of glycidyl methacrylate 6.3 parts of methyl methacrylate and 1.6 parts of acrylic acid to give an aqueous dispersion having a solids content of 61.9 % (paragraph 0055-0059).
This process would result in two polymers one from each of the two monomer emulsions. It should be noted that the independent claim as is currently drafted does not require that the first adhesive and the second adhesive be different from one another particularly as the claimed second adhesive is required to comprise 3 of the 4 required structures of the first adhesive.
The polymer resulting from the polymerization of monomer emulsion 2 would correspond to an adhesive being a polymer that comprises acrylic acid structural units that correspond to the structural unit A, Methyl methacrylate monomer units that correspond to the claimed structural unit B, n-butyl acrylate units which correspond to the claimed structural unit C where m1 is 3, and hydroxypropyl acrylate monomer units that correspond to the structural unit D where n1 is 3 with the exception that the OH group is not explicitly stated to be on the third carbon atom of the alkyl chain.
The polymer resulting from the polymerization of monomer emulsion 1 would correspond to another adhesive polymer that that comprises acrylic acid structural units that correspond to the structural unit A, n-butyl acrylate units which correspond to the claimed structural unit C where m1 is 3, and hydroxypropyl acrylate monomer units that correspond to the structural unit D where n1 is 3 with the exception that the OH group is not explicitly stated to be on the third carbon atom of the alkyl chain.
This would result in the example providing an adhesive composition which comprises an adhesive that comprises a first adhesive and a second adhesive and which includes a solvent of water as it is an aqueous dispersion.
As such the difference between the claimed adhesive composition and the exemplary adhesive composition of Pietsch is that the hydroxypropyl acrylate monomers in the first and second adhesive composition are not indicated to have the hydroxyl group on the third carbon atom of the propyl group. This difference is that a particular position isomer of 3-hydroxypropyl acrylate is used as the hydroxypropyl acrylate. It should be noted that Pietsch teaches that examples of monomers which can be included int eh polymer include C1-C10 hydroxyalkyl (meth)acrylates (paragraph 0019) which would generally indicate that any position of the hydroxyl group would be capable of being used in the polymer.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09.I.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978). See MPEP 2144.09.II.
Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). See MPEP 2144.09.III.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the composition of Pietsch so that the hydroxypropyl acrylate monomers which are used in the composition are 3-hydroxypropyl acrylate monomers because Pietsch teaches that hydroxypropyl acrylate monomers can be used as well as generally that C1-C10 hydroxyalkyl (meth)acrylates can be used in the polymer and so using the particular 3-hydroxypropyl acrylate monomer would have similar structure and similar properties as the compounds are position isomers.
Concerning claim 10 Pietsch teaches the composition of claim 9 as is stated above. Pietsch particularly teaches an acrylic ester copolymer prepared in a two stage emulsion polymerization with polymerization of first of 80 parts by wight of an monomer emulsion 1 that consists of 90 parts by weight of n-butyl acrylate 2 parts by weight of hydroxypropyl acrylate 6.4 parts by weight of methyl methacrylate and 1.6 parts by weight of acrylic acid and then polymerization 20 parts of a monomer emulsion 2 consisting of 86.5 parts of n butyl acrylate 2 parts of hydroxypropyl acrylate 3.6 parts of glycidyl methacrylate 6.3 parts of methyl methacrylate and 1.6 parts of acrylic acid to give an aqueous dispersion having a solids content of 61.9 % (paragraph 0055-0059). As is stated above it would be obvious to use a 3-hydroxypropyl acrylate in the polymers to give the claimed composition.
As such either of the polymers resulting from monomer emulsion 1 and monomer emulsion 2 have each of the monomer units required to be either the claimed first adhesive or the claimed second adhesive. In the event that the polymer from monomer emulsion 2 is considered to be the first adhesive and the polymer from the monomer emulsion 1 is considered to be the second adhesive than the weight ratio of the first adhesive to the second adhesive is 20:80 which corresponds to 1:4 which is within the claimed range of from 1:2.5 to 1:20. As such the example of Pietsch teaches the claimed limitation
Concerning claim 11 Pietsch teaches the adhesive composition of claim 9 as is stated above teaches that the monomer emulsion 2 which can corresponds to the first adhesive consists of 86.5 parts of n butyl acrylate 2 parts of hydroxypropyl acrylate 3.6 parts of glycidyl methacrylate 6.3 parts of methyl methacrylate and 1.6 parts of acrylic acid which is polymerized together to form a polymer (paragraph 0055-0059). The mol% of any particular monomer unit is not stated. However molecular weight of n-butyl acrylate is 128.171 g/mol, the molecular weight of hydroxypropyl acrylate is 130.14 g/mol the molecular weight of methyl methacrylate is 100.117 g/mol, the molecular weight of acrylic acid is 72.063 g/mol and the molecular weight of glycidyl methacrylate is 142.15 g/mol. This allows for the calculation of the molar amounts of each monomer in the polymer and results is 2.773 mol% of acrylic acid ( corresponding to structural unit A), 7.859 mol% of methyl methacrylate (corresponding to structural unit B) 84.286 mol% of n-butyl acrylate (corresponding to structural unit C), and 1.919 mol% of hydroxypropyl acrylate (corresponding to structural unit D). This would give a molar content of the structural unit B and C which is within the claimed ranges and therefor the example of Pietsch teaches the claimed limitation.
Concerning claim 12 Pietsch teaches the adhesive composition of claim 9 as is stated above teaches that the monomer emulsion 2 which can corresponds to the second adhesive consists of 86.5 parts of n butyl acrylate 2 parts of hydroxypropyl acrylate 3.6 parts of glycidyl methacrylate 6.3 parts of methyl methacrylate and 1.6 parts of acrylic acid which is polymerized together to form a polymer (paragraph 0055-0059). The mol% of any particular monomer unit is not stated. However molecular weight of n-butyl acrylate is 128.171 g/mol, the molecular weight of hydroxypropyl acrylate is 130.14 g/mol the molecular weight of methyl methacrylate is 100.117 g/mol, the molecular weight of acrylic acid is 72.063 g/mol and the molecular weight of glycidyl methacrylate is 142.15 g/mol. This allows for the calculation of the molar amounts of each monomer in the polymer and results is 2.773 mol% of acrylic acid (corresponding to structural unit A), 84.286 mol% of n-butyl acrylate (corresponding to structural unit C), and 1.919 mol% of hydroxypropyl acrylate (corresponding to structural unit D). This would give a molar content of the structural unit C which is within the claimed ranges and therefor the example of Pietsch teaches the claimed limitation.
Concerning claim 14 Pietsch further teaches that the adhesive composition includes a thermally expandable thermoplastic microsphere (paragraph 0007). The previously mentioned example of Pietsch teaches that the aqueous polymer dispersion is mixed with the expandable microparticles (paragraph 0062).
Pietsch does not specifically teach that one of the insulating fillers is present.
Pietsch does teach that the microspheres may comprise further substances such as silica magnesium hydroxide and the hydroxide of aluminum (paragraph 0042). Silica is another name for silicon dioxide.
It would have been obvious to one of ordinary skill in the composition to add a component such as silica, magnesium hydroxide or the hydroxide of aluminum as to give the claimed composition because Pietsch teaches that the thermoplastic microspheres which are a part of the adhesive composition can comprise the indicated insulating fillers and therefor the adhesive composition can comprise the indicated insulating filler.
6. Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pietsch (US 2015/0376471 A1) as applied to claim 9 above, and further in view of Tamura (US 2013/0017389 A1).
Concerning claim 13 above Pietsch as is stated above teaches an adhesive composition which is prepared in a two stage emulsion polymerization with polymerization of first of 80 parts by wight of an monomer emulsion 1 that consists of 90 parts by weight of n-butyl acrylate 2 parts by weight of hydroxypropyl acrylate 6.4 parts by weight of methyl methacrylate and 1.6 parts by weight of acrylic acid and then polymerization 20 parts of a monomer emulsion 2 consisting of 86.5 parts of n butyl acrylate 2 parts of hydroxypropyl acrylate 3.6 parts of glycidyl methacrylate 6.3 parts of methyl methacrylate and 1.6 parts of acrylic acid to give an aqueous dispersion having a solids content of 61.9 % (paragraph 0055-0059). As is indicated in the discussion of claim 9 above this would render the claimed adhesive composition obvious.
Pietsch is silent as to the weight average molecular weight of the polymer which is the claimed first adhesive. It should be noted that the polymer that results from either of the emulsions has the indicated repeating units of the claimed first adhesive and so either polymer can be considered to be the claimed first adhesive.
Tamora is drawn to acrylic adhesives (paragraph 0333) including those which are made from n-butyl acrylate acrylic acid and 2-hydroxyethyl acrylate (paragraph 0195) and teaches that the weight average molecular weight of the acrylic polymer is preferably from 300,000 to 1,000,000 with increasing molecular weight likely to improve cohesive force and lower molecular weight likely to have improve initial adhesive force (paragraph 0128). This range is an overlapping range with the claimed range of 500,000 to 1,500,000.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.I.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the composition of Pietsch so that an acrylic polymer of the adhesive composition would have the claimed weight average molecular weight to give the claimed composition because Tamora teaches that useful molecular weights for acrylic adhesives are an overlapping range with the claimed range and that these weights allow for improved cohesive force and initial adhesive force of the adhesives.
Conclusion
7. Claims 9-15 are rejected. No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763