DETAILED ACTION
This Office Action is responsive to the amendment filed on 4/27/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
Information Disclosure Statement
The information disclosure statement filed 5/14/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not provide a copy of JP2022525382. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
Claims 1, 7, 12-17, and 22 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: 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 1 recites the broad recitation that the second component includes one or more phosphate esters, and the claim also recites the second component includes “at least two or even at least three phosphate esters 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.
Claims 7, 12-17, and 22 depend from claim 1 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 1.
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). Prior art component A therefore corresponds to the claimed first component (for claim 1).
Regarding the claimed second component: Prior art component (B) comprises two phosphate esters (for claims 1, 67). Prior Acid ester #1 is reported to be a phosphate ester derived from epoxidized cashew nutshell liquid (CNSL) (for claims 1, 68) and phosphoric acid (for claim 1). Prior art acid ester #2 is reported to be a phosphate ester derived from phosphoric acid and 2-ethylhexyl glycidyl ether (for claims 1, 69). The prior art component B further comprises calcined kaolin, corresponding to the claimed additive which is a mineral (for claims 10, 11).
Regarding the claimed stoichiometric ratio of phosphoric acid to epoxide group: "[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"; see In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113(I)).
Czaplicki discloses a two component system wherein component B comprises two phosphate esters, the first of which is obtained by reacting epoxidized CNSL with phosphoric acid and the second of which is obtained by reacting 2-ethylhexyl glycidyl ether with phosphoric acid. Note applicant’s specification discloses the use of the same reactants to make the phosphate esters used in the claimed composition. Because the final product appears to have the same structure-i.e., a phosphate ester made via reaction of an epoxide functional group with phosphoric acid-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 #1 and Acid ester #2 therefore both correspond to the required phosphate ester (for claim 1). Prior art component B therefore corresponds to the claimed second component (for claim 1).
The prior art component (B) therefore corresponds to the claimed second component (for claim 1).
Regarding the claimed curing temperature: As noted above, Czaplicki 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 document from www.nist.gov which was included with the office action mailed on 1/27/2026). It is therefore reasonably expected that the prior art composition cures at a temperature in the required range (for claims 1, 22).
Regarding the claimed gasket: A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Note that the claimed invention is not a gasket; rather, the claimed invention is a two-part system comprising the recited first and second components. As discussed in the previous paragraphs, Czaplicki teaches a composition that appears to be the same as the claimed invention; it is therefore reasonably expected that it would be capable of performing the claimed intended use. The burden is therefore shifted to applicant to provide evidence demonstrating that the prior art composition would not be capable of performing the claimed intended use as a gasket (for claim 1).
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% flexible epoxy resin (for claim 16). 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 4/27/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claim 12 under 35 U.S.C. 112(d): Applicant has not amended claim 12 to overcome the rejection under 35 U.S.C. 112(d) outlined in paragraphs 15-17 of the Office Action mailed on 1/27/2026. Furthermore, no arguments were provided to refute this rejection. The rejection of claim 12 under 35 U.S.C. 112(d) is therefore maintained as outlined earlier in this Action.
Regarding the rejections over Czaplicki: Applicant argues that there is no evidence that the prior art teaches the production of phosphate ester(s) via reaction wherein the stoichiometric ratio of phosphate ester precursor to phosphoric acid is 0.7:1 to 1: 0.7. In response, it is noted that the claimed invention is not a process of making a two part system; rather, the invention as claimed is a composition that is defined in part by the process used to make the phosphate ester(s). The claimed invention is therefore written in product-by-process format.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion; see In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product; see In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (MPEP § 2113(II)).
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) (MPEP § 2113(III)).
Because the claimed invention is a composition defined in product-by-process language, it is not persuasive to merely argue that Czaplicki does not disclose identical process steps as used by applicant to make the claimed composition. As discussed earlier in this Action, the prior art discloses a two-component system wherein prior art component (B) comprises Acid ester #1 and Acid ester #2, wherein the Acid ester #1 is a phosphate ester obtained by reacting epoxidized CNSL and phosphoric acid and Acid ester #2 is a phosphate ester obtained by reacting phosphoric acid and 2-ethylhexyl glycidyl ether. The prior art acid esters are made from the same reactants as used by applicant and are therefore reasonably expected to have the same chemical structure as the phosphate ester(s) of the claimed composition. The burden is therefore shifted to applicant to provide evidence demonstrating that the claimed stoichiometric ratio results in an unobvious difference between the claimed composition and the composition of Czaplicki; see In re Thorpe, In re Fessmann, and In re Marosi cited earlier in this Action. As such evidence has not been provided, applicant’s argument that the prior art does not disclose the recited ratio is not persuasive.
Applicant argues that there is no evidence that Czaplicki teaches or even suggests that the second component includes at least two or even at least three of the one or more phosphate esters, alleging that Czaplicki only teaches a single phosphate ester. Contrary to applicant’s argument, Czaplicki explicitly teaches a composition wherein component B comprises two phosphate esters. See Czaplicki’s Table 1, wherein component B is reported to contain both Acid ester #1 and Acid ester #2, both of which are phosphate esters.
Applicant argues that the prior art does not teach volumetric expansion from 100 to 800% or an improved compression set.
In response, 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, this argument is not persuasive.
Applicant argues that the prior art does not teach or suggest the production of a gasket. As discussed earlier in this action, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Contrary to applicant’s argument, the claimed invention is not a gasket. Rather, the claimed invention is a two part system comprising first and second components. It therefore is not persuasive to merely argue that the prior art does not teach the same end-use as desired by applicant. As discussed earlier in this Action, Czaplicki teaches a two-component composition that appears to be identical to the claimed invention; as such, it is reasonably expected that it would be capable of performing the claimed intended use. As applicant has not provided any evidence that the prior art composition would not be capable of performing the recited intended use, it is not persuasive to merely argue that the prior art is silent regarding the production of a gasket. The rejection is therefore maintained.
Regarding the rejection of claims 13-15: Applicant argues that these claims are dependent from claim 1 and therefore are allegedly allowable per the same rationale as claim 1. This argument is not persuasive per the reasons outlined in the preceding paragraphs with respect to the rejection over claim 1.
Applicant further argues that there is no evidence that the prior art suggests the specific polymers recited in claims 13 and 15 in an amount of 10 to 45 wt%.
Regarding the claimed polymers: Applicant’s argument that the prior art does not suggest the claimed polymers is not persuasive, as Czaplicki teaches the required polymers as noted in the rejection of record. See paragraphs 33-37 of the Office Action mailed on 1/27/2026 and paragraphs 28-32 of this Action. Applicant has not provided any evidence and/or arguments to refute these citations to the teachings of Czaplicki; the argument that the prior art does not teach the required polymers is therefore not persuasive.
Regarding the amount: In response, it is noted that the features upon which applicant relies (i.e., that the amount of the resin is 10 to 45 wt%) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). None of independent claim 1, claim 13, and claim 15 recite any limitations regarding the amount of flexible epoxy resin. It is therefore unpersuasive to argue that claims 13 and 15 would be allowable over this limitation, as it is not required by either of these limitations. With regards to claim 14, this limitation was addressed in paragraph 34 of the 1/27/2026 Office Action and paragraph 29 of this Action. As noted above, the prior art exemplifies a two part system wherein the amount of liquid epoxy resin is about 10.85 wt%. It therefore would have been obvious to prepare a system wherein the required liquid resin is present in this amount. The rejection is therefore maintained.
Conclusion
Applicant's 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.
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
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