DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/18/2025.
The objections and rejections not addressed below are deemed withdrawn.
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 present application is being examined under the pre-AIA first to invent provisions.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/18/2025 has been entered.
Election/Restrictions
The species election requirement with regards to the species of a flexible epoxy resin as outlined in the Restriction Requirement mailed on 10/7/2024, is withdrawn in view of applicant’s amendment to independent claim 1. Claims 15 and 16 are therefore no longer withdrawn from consideration.
Information Disclosure Statement
Applicant’s arguments indicate that a copy of EP794236 was submitted for consideration; however, there is no copy of this reference in the case file. Additionally, it is noted that the filing receipt dated 11/18/2025 does not list the document as having been received. The reference therefore has not been considered as a copy of it has not been provided as required; see 37 CFR 1.98(a)(2).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 5-7, 10-16, 22, 27, and 67-69 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.
Regarding claim 1: Claim 1 has been amended to state that the ratio of phosphoric acid to monofunctional epoxy is about 1:1. This ratio can be calculated multiple ways, and that value of the ratio can change depending on the method.
For example, assume a phosphate ester is formed by reacting 1 mole of phosphoric acid (molecular weight 97.994 g/mol) with 1 mole of the monofunctional epoxide 2-ethylhexyl glycidyl ether (molecular weight 186.30 g/mol). Based on the number of moles of each reactant, the ratio of phosphoric acid to epoxide would be 1 : 1 when calculated on a molar basis. Alternatively, based on the molecular weights, the weight ratio of phosphoric acid to epoxy would be 97.994 : 186.30, or about 1 : 1.9. Because the value of the ratio depends on the method of its calculation, the fact that the claim does not specify the type of ratio required renders claim 1 indefinite.
Claims depend from claim 1 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 1.
Claim 12 recites the limitation "the one or more epoxy resins" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. As amended, the independent claim recites the limitation of one or more flexible (emphasis added) epoxy resins. It is unclear whether the phrase "the one or more epoxy resins" in claim 12 is intended to further limit the one or more flexible epoxy resins of the independent claim, or if it is intended to refer to an unrecited, additional component.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 depends from independent claim 1 and states that the invention comprises one or more epoxy resins from a list of species; note that this phrase includes the species “one or more flexible epoxy resins.” As amended, independent claim 1 requires that component A contains one or more flexible epoxy resins. As such, any composition that falls within the scope of claim 1 will contain at least one flexible epoxy resin and therefore will necessarily also fall within the scope of the claim 12’s recitation of “one or more flexible epoxy resins”. Claim 12 therefore does not further limit the parent claim, as there is no composition that would meet the requirements of independent claim 1 that would not also satisfy the requirements of claim 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
Claims 1, 5-7, 10-12, 16, 22, 27, and 67-69 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Czaplicki et al, WO2016/149700.
Czaplicki discloses two part system (for claim 1) comprising component (A) and component (B) (¶0047:Table 1). Czaplicki teaches that the prior art system cures at room temperature (¶00037). The prior art composition is used on vehicle parts (for claim 27) (¶00042).
Regarding the claimed first component: Prior art component (A) comprises a flexible epoxy resin (for claims 1, 12, 16) and a liquid epoxy resin (for claim 12); component (A) therefore corresponds to the claimed first component (for claim 1). Component (A) further comprises calcium carbonate, corresponding to the claimed additive (for claims 5, 6). Note that 1) component A comprises 20.75 wt% calcium carbonate and 2) the amounts of each of component A and component B is 100 parts. As the amounts of components A and B are equal, combining them will result in a final composition wherein the content of calcium carbonate is (20.75/200)×100, or 10.375 wt% (for claim 7).
Regarding the claimed second component: Prior art component (B) comprises two phosphate esters (for claims 1, 67). Prior art acid ester #2 is reported to be a phosphate ester derived from phosphoric acid and 2-ethylhexyl glycidyl ether (for claim 69); note that 2-ethylhexyl glycidyl ether has a single epoxy group and therefore corresponds to the monofunctional epoxy (for claim 1). Acid ester #2 is reported to have been made by reacting 65.40 wt% 2-ethylhexyl glycidyl ether with 34.60 wt% of an 85% phosphoric acid solution (Table 1).
Based on the molecular weight of 2-ethylhexyl glycidyl ether (186.30 g/mol), it is calculated that 65.40 g of 2-ethylhexyl glycidyl ether corresponds to about 0.35 moles 2-ethylhexyl glycidyl ether. As the phosphoric acid was used as an 85% solution, the mass of phosphoric acid is calculated to be 0.85 × 34.60 = 29.4 g. Based on the molecular weight of phosphoric acid (97.994 g/mol), this corresponds to about 0.30 moles phosphoric acid. The molar ratio of epoxy compound to phosphoric acid is therefore 0.35 : 0.30, or about 1.16 : 1.
Note that the claimed limitation states that the ratio is about (emphasis added) 1 : 1; the inclusion of the word “about” allows for values that are greater than the stated value of 1: 1. Because the difference between the prior art value and the claimed value is so small, it is maintained that the prior art ratio of 1.16: 1 falls within the claimed range (for claim 1). The prior art Acid ester #2 therefore corresponds to the required phosphate ester (for claim 1).
Alternatively, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113(I)). The prior art teaches a phosphate ester derived from reacting the same compounds-i.e., phosphoric acid and a monofunctional epoxy-in a ratio that is only slightly higher than the claimed ratio. Because the final product appears to have the same structure-i.e., a phosphate ester-as would be expected to be obtained from the recited steps, the burden is shifted to applicant to provide evidence that the recited ratio results in an unobvious difference between the claimed invention and the prior art. The prior art Acid ester #2 therefore corresponds to the required phosphate ester (for claim 1).
Prior component B further comprises Acid ester #1, which is reported to be a phosphate ester derived from cashew nutshell liquid (for claim 68), and calcined kaolin, corresponding to the claimed additive which is a mineral (for claims 10, 11). The prior art component (B) therefore corresponds to the claimed second component (for claim 1).
Regarding the claimed curing temperature: As noted above, Cazplicki teaches that the prior art composition cures at room temperature. Note that the National Institute of Standards and Technology (NIST) defines room temperature as 20 °C (see the Table “Common Temperature Reference Points” on pages 2-3 of the attached page from www.nist.gov). It is therefore reasonably expected that the prior art composition cures at a temperature in the required range (for claims 1, 22).
Regarding claim 16: Prior art component (A) contains 14.15 wt% flexible epoxy resin; additionally, the sum of the amounts of the combined components of (A) and (B) add up to 200 parts. It is therefore calculated that the overall two part system contains about 7.075 wt% liquid epoxy resin (for claim 14). Note that the claim states that the lower limit is about 10%; the inclusion of the word “about” allows for values that are less than 10%. Given that the difference between the prior art value and the claimed value is small, the prior art value falls within the scope of the limitation of about 10 %.
Czaplicki is silent regarding the production of an elastomeric composition (for claim 1), volume expansion (for claim 1), and compression set (for claim 1); however, it is reasonably expected that these properties are met by the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
The prior art two component system comprises a component (A) which comprises epoxy resins and component (B) which comprises the same phosphate esters as used to define the claimed invention. Furthermore, the epoxy resins used in the prior art component (A) are a blend of a liquid epoxy resin, a flexible epoxy resin, and an epoxy phenol novolac resin; note that applicant’s specification teaches the use of the same types of epoxy resins in the claimed first component (see specification ¶0024). As the prior art composition appears to be identical to the claimed invention, it is reasonably expected that its properties would necessarily be the same as claimed. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed invention would not be present in the two part system disclosed by Czaplicki.
Claim Rejections - 35 USC § 103
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al, WO2016/149700.
The disclosure of Czaplicki is discussed earlier in this Action. Briefly, Czaplicki discloses a two part system comprising component (A) and component (B), wherein component (A) comprises a liquid epoxy resin and calcium carbonate and component (B) comprises a blend of a phosphate ester derived from cashew nutshell liquid and a phosphate ester derived from 2-ethylhexyl glycidyl ether.
Regarding claim 13: Czaplicki teaches that the epoxy resin may be the product of a polyhydric phenol such as bisphenol A with a haloepoxide such as epichlorohydrin (for claim 13) (¶0031).
Regarding claims 14: Prior art component (A) 21.70 wt% liquid epoxy resin; additionally, note that the sum of the amounts of the combined components of (A) and (B) add up to 200 parts. It is therefore calculated that the overall two part system contains about 10.85 wt% liquid epoxy resin (for claim 14).
Regarding claim 15: The prior art epoxy resin may be a bisphenol A-based resin (§0031); note that Czaplicki does not require it to be modified.
Czaplicki does not specifically disclose the production of a composition comprising an epoxy resin which includes one of the recited resins (for claims 13, 15) or a flexible resin in an amount of about 10 to 45 wt%.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (MPEP 2144.07). Czaplicki teaches the use of epoxy resins that made from the same compounds as recited in the instant claims. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to use such epoxy resins in the prior art component (A) in the prior art formulation (for claims 13, 15).
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues that no teaching has been identified that Czaplicki teaches a cured elastomeric composition having the required volumetric expansion and compression set.
As noted earlier in this Action, it has been held that "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). (MPEP § 2112 (V)). See also MPEP § 2112(III)).
As discussed earlier in this Action, Czaplicki discloses a two-component formulation, wherein the prior art component A and component B comprise the same compounds as used to define the claimed first component and second component, respectively. The prior art formulation appears to be identical to the claimed invention; as such, it is reasonably expected that its properties would necessarily be the same as claimed and inherently be not different from those of the claimed composition. The burden has therefore been shifted to applicant to provide evidence that prior art composition would not inherently have the required properties. As applicant’s arguments do not cite any such evidence, the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765