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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11 March 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 11 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,339,262 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 23, the claim recites a broad thermosetting adhesive made from different components in any amount in lines 1-15 before reciting “wherein the cured thermosetting adhesive exhibits a modulus of elasticity ranging from 0.416 GPa to 0.458 GPa and an elongation ranging from 51.45% to 53.23% as measured in accordance with ASTM D638” in lines 16-18. There is no support in the specification as originally filed for this limitation in the claims. While there is support to recite a specific (albeit undisclosed) thermosetting adhesive having a modulus of elasticity of 0.416 GPa and 0.458 GPa and an elongation of 51.45% and 53.23% as set forth in the inventive examples (see instant specification, pages 28 and 35), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of a curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties.
With respect to claim 23, the claim recites a broad thermosetting adhesive made from different components in any amount in lines 1-15 before reciting “wherein the cured thermosetting adhesive exhibits, on first heating, a first coefficient of linear thermal expansion (CLTE-1) of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a second coefficient of linear thermal expansion (CLTE-2) of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14” in lines 19-23. There is no support in the specification as originally filed for this limitation in the claims. While there is support to recite a specific (albeit undisclosed) thermosetting adhesive having, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C as set forth in the inventive examples (see instant specification, pages 28 and 36), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of a curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties.
With respect to claim 23, the claim recites a broad thermosetting adhesive made from different components in any amount in lines 1-15 before reciting “wherein the cured thermosetting adhesive exhibits, on second heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14” in lines 24-27. There is no support in the specification as originally filed for this limitation in the claims. While there is support to recite a specific (albeit undisclosed) thermosetting adhesive having, on second heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C as set forth in the inventive examples (see instant specification, pages 28 and 36), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of a curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties.
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.
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.
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Veeraraghavan et al. (US 2019/0153182 A1, “Veeraraghavan”) in view of Finter et al. (US 2010/0087567 A1, “Finter”) and the evidence provided by Ulbrich (What is “Cold Rolling” Stainless Steel and Other Metals?).
With respect to claim 22, Veeraraghavan discloses a thermosetting adhesive coated on reinforcing material ([0017], [0030]), wherein the thermosetting adhesive includes a curing agent and an epoxy-modified dimerized fatty acid combined with an epoxy terminated polyurethane interpenetrating network (i.e., an epoxy terminated polyurethane polymer) ([0017]). The curing agent is represented by at least one of the tautomeric chemical structures shown below ([0021]). The epoxy-modified dimerized fatty acid has the chemical structure shown below, where R1 is tall oil based ([0024-0025], [0038]). The epoxy-terminated polyurethane interpenetrating network is represented by the chemical structure A1―R1―A2, where A1 has the structure shown below, R1 comprises a urethane polymer, and A2 = A1 ([0027]). The reinforcing materials have a thickness of approximately 0.25 mm to about 5.00 mm ([0030]). The reinforcing materials include type 6022 aluminum and CRS having a thickness of 0.75 mm (page 24, Example 1). As evidenced by Ulbrich, “CRS” is the abbreviation for cold rolled steel (Ulbrich, page 1). Therefore, the first and second reinforcing materials (i.e., first and second substrates) of Veeraraghavan are made from dissimilar materials.
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However, Veeraraghavan does not disclose the thermosetting adhesive contains diglycidyl ether of bisphenol A.
Finter teaches epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]). Finter teaches an epoxy resin composition that comprises the epoxy-terminated resin and also an epoxy resin A ([0062]). The epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]). The epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]). The resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]).
Veeraraghavan and Finter are analogous inventions in the field of epoxy-terminated polyurethane adhesives for use with metals.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermosetting resin adhesive of Veeraraghavan to contain diglycidyl ether of bisphenol A as taught by Finter in order to provide an adhesive having excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Finter, Abstract, [0123]). Because no other components are required in the adhesive composition, the thermosetting adhesive of Veeraraghavan in view of Finter consists of (a) diglycidyl ether of bisphenol A, (b) the dicyandiamide curing agent presently claimed, (c) the epoxy-modified dimerized fatty acid having a tall oil base as presently claimed, and (d) the epoxy-terminated polyurethane interpenetrating network as presently claimed.
With respect to claim 23, Veeraraghavan discloses a thermosetting adhesive coated on reinforcing material ([0017], [0030]), wherein the thermosetting adhesive includes a curing agent and an epoxy-modified dimerized fatty acid combined with an epoxy terminated polyurethane interpenetrating network (i.e., an epoxy terminated polyurethane polymer) ([0017]). The curing agent is represented by at least one of the tautomeric chemical structures shown below ([0021]). The epoxy-modified dimerized fatty acid has the chemical structure shown below, where R1 is tall oil based ([0024-0025], [0038]). The epoxy-terminated polyurethane interpenetrating network is represented by the chemical structure A1―R1―A2, where A1 has the structure shown below, R1 comprises a urethane polymer, and A2 = A1 ([0027]). The reinforcing materials have a thickness of approximately 0.25 mm to about 5.00 mm ([0030]). The reinforcing materials include type 6022 aluminum and CRS having a thickness of 0.75 mm (page 24, Example 1). As evidenced by Ulbrich, “CRS” is the abbreviation for cold rolled steel (Ulbrich, page 1). Therefore, the first and second reinforcing materials (i.e., first and second substrates) of Veeraraghavan are made from dissimilar materials.
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However, Veeraraghavan does not disclose the thermosetting adhesive contains diglycidyl ether of bisphenol A.
Finter teaches epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]). Finter teaches an epoxy resin composition that comprises the epoxy-terminated resin and also an epoxy resin A ([0062]). The epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]). The epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]). The resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]).
Veeraraghavan and Finter are analogous inventions in the field of epoxy-terminated polyurethane adhesives for use with metals.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermosetting resin adhesive of Veeraraghavan to contain diglycidyl ether of bisphenol A as taught by Finter in order to provide an adhesive having excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Finter, Abstract, [0123]). Because no other components are required in the adhesive composition, the thermosetting adhesive of Veeraraghavan in view of Finter consists of (a) diglycidyl ether of bisphenol A, (b) the dicyandiamide curing agent presently claimed, (c) the epoxy-modified dimerized fatty acid having a tall oil base as presently claimed, and (d) the epoxy-terminated polyurethane interpenetrating network as presently claimed.
Regarding the cured thermosetting adhesive exhibiting a modulus of elasticity ranging from 0.416-0.458 GPa and an elongation ranging from 51.45-53.23% as measured in accordance with ASTM D638, while there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting a modulus of elasticity ranging from 0.416-0.458 GPa and an elongation ranging from 51.45-53.23% as measured in accordance with ASTM D638, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit a modulus of elasticity ranging from 0.416-0.458 GPa and an elongation ranging from 51.45-53.23% as measured in accordance with ASTM D638, absent evidence to the contrary.
Regarding the cured thermosetting adhesive exhibiting, on first heating, a first coefficient of linear thermal expansion (CLTE-1) of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a second coefficient of linear thermal expansion (CLTE-2) of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, while there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, absent evidence to the contrary.
Regarding the cured thermosetting adhesive exhibiting, on second heating, a first coefficient of linear thermal expansion (CLTE-1) of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a second coefficient of linear thermal expansion (CLTE-2) of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, while there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting, on first heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a second coefficient of linear thermal expansion (CLTE-2) of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit, on second heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, absent evidence to the contrary.
With respect to claim 24, Veeraraghavan discloses a reinforcing sheet (i.e., substrate assembly) comprising one or more layers of a reinforcing material (i.e., a first layer that is a substrate having a first and second surface and a third layer that is a second substrate having a first and second surface) and a thermosetting adhesive coated on the reinforcing material (i.e., the thermosetting adhesive is applied to a surface of the substrate) and is associated with at least a portion of the reinforcing material (i.e., a thermosetting adhesive contacting the second surface of the first substrate and the first surface of the second substrate) ([0017], [0030]), wherein the thermosetting adhesive includes a curing agent and an epoxy-modified dimerized fatty acid combined with an epoxy terminated polyurethane interpenetrating network (i.e., an epoxy terminated polyurethane polymer). The curing agent is represented by at least one of the tautomeric chemical structures shown below ([0021]). The epoxy-modified dimerized fatty acid has the chemical structure shown below, where R1 is tall oil based ([0024-0025], [0038]). The epoxy-terminated polyurethane interpenetrating network is represented by the chemical structure A1―R1―A2, where A1 has the structure shown below, R1 comprises a urethane polymer, and A2 = A1 ([0027]). The reinforcing materials have a thickness of approximately 0.25 mm to about 5.00 mm ([0030]). The reinforcing materials include type 6022 aluminum and CRS having a thickness of 0.75 mm (page 24, Example 1). As evidenced by Ulbrich, “CRS” is the abbreviation for cold rolled steel (Ulbrich, page 1). Therefore, the first and second reinforcing materials (i.e., first and second substrates) of Veeraraghavan are made from dissimilar materials.
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However, Veeraraghavan does not disclose the thermosetting adhesive contains diglycidyl ether of bisphenol A.
Finter teaches epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]). Finter teaches an epoxy resin composition that comprises the epoxy-terminated resin and also an epoxy resin A ([0062]). The epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]). The epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]). The resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]).
Veeraraghavan and Finter are analogous inventions in the field of epoxy-terminated polyurethane adhesives for use with metals.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermosetting resin adhesive of Veeraraghavan to contain diglycidyl ether of bisphenol A as taught by Finter in order to provide an adhesive having excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Finter, Abstract, [0123]). Because no other components are required in the adhesive composition, the substrate assembly of Veeraraghavan in view of Finter comprises the first substrate as presently claimed, the second dissimilar substrate as presently claimed, and the thermosetting adhesive consisting of (a) diglycidyl ether of bisphenol A, (b) the dicyandiamide curing agent presently claimed, (c) the epoxy-modified dimerized fatty acid having a tall oil base as presently claimed, and (d) the epoxy-terminated polyurethane interpenetrating network as presently claimed.
Response to Arguments
Due to the cancellation of claim 21, the objection to claim 21 is withdrawn.
Due to the cancellation of claims 19-21, the 35 U.S.C. 112(a) and 35 U.S.C. 103 rejections of claims 19-21 are withdrawn.
Applicant’s arguments filed 11 March 2026 have been fully considered, but they are not persuasive.
Regarding the use of Veeraraghavan as a prior art reference, Applicant argues that Veeraraghavan et al. (US 2019/0153182 A1, “Veeraraghavan”) was later published as US 11,339,262 B2, such that the reference does not qualify as prior art under 35 U.S.C. 102(a)(2) due to the 35 U.S.C. 102(b)(2)(A) and 35 U.S.C. 102(b)(2)(C) exceptions. Specifically, Applicant argues that US 11,339,262 B2 has identical joint inventors and therefore does not qualify as prior art under the 35 U.S.C. 102(b)(2)(A) exception. Applicant additionally argues that US 11,339,262 B2 is commonly owned and therefore does not qualify as prior art under the 35 U.S.C. 102(b)(2)(C) exception. Applicant concludes that the rejections over US 2019/0153182 A1 must be withdrawn on this basis. The examiner disagrees.
In response to Applicant’s argument, it is unclear why Applicant argues that Veeraraghavan et al. (US 2019/0153182 A1) was later published as US 11,339,262 B2 since the prior art rejections do not rely on US 11,339,262 B2. Veeraraghavan et al. (US 2019/0153182 A1) is the reference applied in the above rejections, not US 11,339,262 B2. Veeraraghavan et al. (US 2019/0153182 A1) qualifies as prior art under 35 U.S.C. 102(a)(1) and can therefore only be excluded using the 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(1)(B) exceptions. Neither the 35 U.S.C. 102(b)(1)(A) exception nor the 35 U.S.C. 102(b)(1)(B) exception applies to Veeraraghavan (US 2019/0153182 A1). Veeraraghavan et al. (US 2019/0153182 A1) was published 23 May 2019. In contrast, the present application was filed 06 August 2020 and has no priority applications; the one-year grace period for an inventor-originating disclosure for the present application under 35 U.S.C. 102(b)(1)(A) extends to 06 August 2019. The publication of Veeraraghavan et al. (US 2019/0153182 A1) on 23 May 2019 is outside the one-year grace period, and therefore the 35 U.S.C. 102(b)(1)(A) exception does not apply. Similarly, the publication of Veeraraghavan et al. (US 2019/0153182 A1) on 23 May 2019 is outside any one-year grace period for an intervening disclosure by a third party under 35 U.S.C. 102(b)(1)(B) (which extends back to 06 August 2019), and therefore the 35 U.S.C. 102(b)(1)(B) exception does not apply. It is irrelevant that Veeraraghavan et al. (US 2019/0153182 A1) was later published as US 11,339,262 B2 since the rejections of record do not rely on the publication of US 11,339,262 B2, but rely on US 2019/0153182 A1.
In response to the use of Finter as a reference, Applicant argues that Veeraraghavan does not qualify as a prior art reference, and therefore Finter alone would be the only applicable reference. Applicant argues Finter alone cannot sustain a 35 U.S.C. 103 rejection. Applicant further argues Finder does not disclose the use of diglycidyl ether of bisphenol A and does not disclose the other aspects of the claimed invention. The examiner disagrees.
In response to Applicant’s argument, Veeraraghavan is a prior art reference for the reasons set forth above. Therefore, the rejections are over Veeraraghavan in view of Finter. It is unnecessary for Finter alone to sustain a 35 U.S.C. 103 rejection because Finter is not being used as a primary reference, but is used as a secondary teaching reference. While Finter does not disclose all the features of the presently claimed invention, Finter is used as a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention. In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973); In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, this reference teaches a certain concept, namely, epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]), where the epoxy resin composition comprises the epoxy-terminated resin and also an epoxy resin A ([0062]); the epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]); the epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]); the resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]), and in combination with the primary reference Veeraraghavan, discloses the presently claimed invention. Further, as set forth above, Finter does disclose diglycidyl ether of bisphenol A ([0063], [0068-0069]).
Regarding the rejections over Veeraraghavan in view of Finter, Applicant argues the present claims are distinguished over Veeraraghavan in view of Finter because neither reference allegedly discloses diglycidyl ether of bisphenol A. Applicant argues neither “diglycidyl ether” nor “bisphenol” appears in Veeraraghavan, and that Finter does not remedy this deficiency. Applicant further points to paragraphs 17, 25, and 29 of the action mailed 17 December 2025 for support, and argues that the adhesive of Veeraraghavan in view of Finter consists of only a dicyandiamide curing agent, an epoxy-modified dimerized fatty acid, and an epoxy-terminated polyurethane interpenetrating network, such that Veeraraghavan in view of Finter does not satisfy the claimed adhesive consisting of a composition that requires diglycidyl ether of bisphenol A. The examiner disagrees.
In response to Applicant’s arguments, the examiner acknowledges that Veeraraghavan is silent with respect to diglycidyl ether of bisphenol A. However, Veeraraghavan is not being used to meet this limitation; rather, Finter is being used. As set forth above, Finter teaches epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]). Finter teaches an epoxy resin composition that comprises the epoxy-terminated resin and also an epoxy resin A ([0062]). The epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]). The epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]). The resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]). Veeraraghavan and Finter are analogous inventions in the field of epoxy-terminated polyurethane adhesives for use with metals. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermosetting resin adhesive of Veeraraghavan to contain diglycidyl ether of bisphenol A as taught by Finter in order to provide an adhesive having excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Finter, Abstract, [0123]). Because no other components are required in the adhesive composition, the substrate assembly of Veeraraghavan in view of Finter comprises the first substrate as presently claimed, the second dissimilar substrate as presently claimed, and the thermosetting adhesive consisting of (a) diglycidyl ether of bisphenol A, (b) the dicyandiamide curing agent presently claimed, (c) the epoxy-modified dimerized fatty acid having a tall oil base as presently claimed, and (d) the epoxy-terminated polyurethane interpenetrating network as presently claimed. It is irrelevant what the examiner had mapped out for the claims that were pending at the time the 17 December 2025 action was mailed since the claims filed 11 March 2026 have been reinterpreted in light of their amendments and as such, the rejections have been updated to reflect the new limitations. Further, in response to Applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues the Office’s position of inherency is incorrect because the claimed composition consists of four materials, including diglycidyl ether of bisphenol A, whereas the previous rejections of record reflected a composition consisting of three materials. Applicant points to paragraphs 16, 18, 22, and 26 of the action mailed 17 December 2025 for support. The examiner disagrees.
In response to Applicant’s argument, it is first noted that the rejections of record have been amended as set forth above. Specifically, Veeraraghavan discloses the identified previous three materials; however, Veeraraghavan does not disclose the use of diglycidyl ether of bisphenol A. Finter teaches epoxy-terminated polymer resins useful as impact resistance modifiers and are used in heat-curing adhesives (i.e., thermosetting adhesives); the compositions demonstrate excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Abstract, [0123]). Finter teaches an epoxy resin composition that comprises the epoxy-terminated resin and also an epoxy resin A ([0062]). The epoxy-terminated polymer is made by the reaction of polyurethane and epoxy ([0011], [0053]). The epoxy resin A is diglycidyl ether of bisphenol A ([0063], [0068-0069]). The resin compositions are used as adhesives for metals, such as different metals (i.e., dissimilar materials) ([0122]), where the dissimilar metals bonded by the adhesive include steel and aluminum ([0122]). Veeraraghavan and Finter are analogous inventions in the field of epoxy-terminated polyurethane adhesives for use with metals. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermosetting resin adhesive of Veeraraghavan to contain diglycidyl ether of bisphenol A as taught by Finter in order to provide an adhesive having excellent mechanical properties and improved impact resistance properties at room temperature and low temperature (Finter, Abstract, [0123]). Because no other components are required in the adhesive composition, the substrate assembly of Veeraraghavan in view of Finter comprises the first substrate as presently claimed, the second dissimilar substrate as presently claimed, and the thermosetting adhesive consisting of (a) diglycidyl ether of bisphenol A, (b) the dicyandiamide curing agent presently claimed, (c) the epoxy-modified dimerized fatty acid having a tall oil base as presently claimed, and (d) the epoxy-terminated polyurethane interpenetrating network as presently claimed.
While there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting a modulus of elasticity ranging from 0.416-0.458 GPa and an elongation ranging from 51.45-53.23% as measured in accordance with ASTM D638, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit a modulus of elasticity ranging from 0.416-0.458 GPa and an elongation ranging from 51.45-53.23% as measured in accordance with ASTM D638, absent evidence to the contrary. Similarly, while there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, absent evidence to the contrary. Further, while there may be no explicit disclosure from Veeraraghavan in view of Finter regarding the cured thermosetting adhesive exhibiting, on first heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a second coefficient of linear thermal expansion (CLTE-2) of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, given that Veeraraghavan in view of Finter discloses an identical thermosetting adhesive consisting of identical materials as that presently claimed, it is clear the thermosetting adhesive of Veeraraghavan in view of Finter would necessarily inherently exhibit, on second heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C, as measured in accordance with ASTM E831-14, absent evidence to the contrary.
The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the reference(s). However, the reference(s) teach(es) all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not.
Applicant lastly argues the six property limitations in claim 23 are untouched subject matter that is found in the examples of the specification as originally filed and have not been disclosed by the cited references nor addressed by the examiner. Applicant argues the property limitations are unpredictable based off the prior art references since the prior art references allegedly do not disclose the use of diglycidyl ether of bisphenol A along with the claimed curing agent, claimed epoxy-modified dimerized fatty acid, and claimed epoxy-terminated polyurethane interpenetrating network. Applicant further argues that claim 23 should not be subject to a 35 U.S.C. 112(a) written description rejection as being broad because claim 23 allegedly demonstrates what the specification demonstrates as achievable. The examiner disagrees.
In response to Applicant’s argument that the claimed properties are untouched subject matter, the examiner acknowledges that Veeraraghavan in view of Finter do not explicitly disclose the claimed properties. However, as set forth above, Veeraraghavan in view of Finter discloses an identical thermosetting adhesive made from identical materials as those presently claimed, and therefore the claimed properties would necessarily inherently be present. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the reference(s). However, the reference(s) teach(es) all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
In response to Applicant’s argument that claim 23 should not be subject to a 35 U.S.C. 112(a) written description rejection, this is not found persuasive. Claim 23 recites a broad thermosetting adhesive made from different components in any amount in lines 1-15 before reciting “wherein the cured thermosetting adhesive exhibits a modulus of elasticity ranging from 0.416 GPa to 0.458 GPa and an elongation ranging from 51.45% to 53.23% as measured in accordance with ASTM D638” in lines 16-18. As Applicant admits, the section of the specification as originally filed that best provides support for these limitations is in the Examples. However, while there is support to recite a specific (albeit undisclosed) thermosetting adhesive made from undisclosed specific compounds in undisclosed specific amounts having a modulus of elasticity of 0.416 GPa and 0.458 GPa and an elongation of 51.45% and 53.23% as set forth in the inventive examples (see instant specification, pages 28 and 35), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of any curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties. Similarly, while there is support to recite a specific (albeit undisclosed) thermosetting adhesive made from undisclosed specific compounds in undisclosed specific amounts having, on first heating, a CLTE-1 of 102.6 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 223.8 µm/(m·°C) measured over a temperature range of 20°C to 160°C as set forth in the inventive examples (see instant specification, pages 28 and 36), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of a curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties. Similarly, while there is support to recite a specific (albeit undisclosed) thermosetting adhesive made from undisclosed specific compounds in undisclosed specific amounts having, on second heating, a CLTE-1 of 99.40 µm/(m·°C) measured over a temperature range of -60°C to -10°C and a CLTE-2 of 219.2 µm/(m·°C) measured over a temperature range of 20°C to 160°C as set forth in the inventive examples (see instant specification, pages 28 and 36), there is no support to broadly recite any thermosetting adhesive consisting of any amount of diglycidyl ether of bisphenol A, any amount of a curing agent represented by at least one of the claimed tautomeric structures, any amount of any epoxy-dimerized fatty acid having the structure presently claimed, and any amount of any epoxy-terminated polyurethane interpenetrating network represented by the claimed structure having these properties. As written, claim 23 encompasses innumerable compositions made from innumerable combinations of amounts of innumerable different materials which Applicant does not have support to recite as having the claimed properties. The claimed properties are found only in the inventive examples, which are made from specific components in specific amounts (albeit undisclosed specific compositions made from undisclosed specific components in undisclosed specific amounts), and therefore claim 23 contains new matter and is subject to 35 U.S.C. 112(a) rejections as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787