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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025, has been entered.
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.
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 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US20180290339, herein Nguyen), as evidenced by Patel (US20040039096, herein Patel), in the view of Mizori (US20180237668, herein Mizori).
Regarding Claims 1-8, 11, 13, and 15- 22, Nguyen teaches an epoxy resin composition [0005], including: EP1001; 25 PHR [table 1, Ex 5] lines in the claimed range, structure see below [scifinder] which represents an epoxy resin composition comprising one or more epoxy resins, each independently having at least two epoxy groups per molecule.
Nguyen teaches curing agents that are aromatic diamines [0027]; Lewis acid catalysts [0032] as curing catalyst.
PNG
media_image1.png
580
753
media_image1.png
Greyscale
Nguyen teaches Ultem 1000P [0058] which is line up as the claimed polyetherimide. Structure see below [Scifinder].
PNG
media_image2.png
581
748
media_image2.png
Greyscale
Nguyen teaches Ultem 1000P [0058] made from the monomers of diamine and ether dianhydride, which lead to the end groups as amine and anhydride; to support the examiner’s position, Patel teaches stichometry of the monomers, the polyetherimide resins prepared from reaction of an aromatic bis(ether anhydride) with an organic diamine in which the diamine is present in the reaction mixture [0022] at no more than about 0.2 molar excess, and preferably less than about 0.2 molar excess [0022], wherein, the aromatic bis(ether anhydride) is the 2,2-bis[4-(3,4-dicarboxyphenoxy)phenyl] propane dianhydride [0043], and the diamine is m-phenylenediamine [0018] collectively read on the claimed monomers, it is obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mixing ratio between aromatic bis(ether anhydride) with an organic diamine, which can further lead to the claimed functionalized polyetherimide formation with the specific reactive end group concentration; residual organic diamine.
Nguyen does not teach the specific process steps of the functionalized polyetherimide is obtained by precipitation from a solution using an organic anti-solvent, or by devolatilization. However, such limitations are product-by-process limitations. “[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) [See MPEP 2113]. In the present case, the product, bacterial nanocellulose transparent film, appears to be the same as that produced by the product-by-process limitations.
Nguyen teaches mixtures of two or more of these epoxy resins, and compounds having one epoxy group or monoepoxy compounds such as glycidylaniline, glycidyl toluidine or other glycidylamines may be employed in the formulation of the thermosetting resin matrix [0015], but is silent on the wherein at least one epoxy resin comprises 4,4'- methylenebis(N,N-diglycidylaniline) or NN-diglycidyl-4-glycidyloxyaniline; however, Mozori teaches the epoxy resin component can be, for example, N,N-diglycidyl-4-glycidyloxyaniline [0031].
Nguyen and Mizori both considered to be analogous to the claimed invention because they are in the same field of epoxy resin based thermosetting compositions system formation toward adhesive application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to utilize: the epoxy resin component can be, for example, N,N-diglycidyl-4-glycidyloxyaniline [0031] into the composition. Doing so would further achieve excellent adhesion to a variety of surfaces while at the same time, have excellent performance under hot, wet conditions [0117] as taught by Mizori.
Regarding Claims 9, 14, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nguyen, Patel and Mizori collectively teach all of the claimed ingredients, in the claimed amounts, and Nguyen teaches the composition as being made by a substantially similar process as of prepregs when isothermally cured at 177° C [0050]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the viscosity; glass transition temperature; fracture toughness; solvent resistance would necessarily arise from a composition with all the claimed ingredients serve as reaction composition lead to the copolymer product. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 10, Nguyen teaches carbon nanofibers [0047] reads on the fibrous filler.
Regarding Claim 12, Nguyen, Patel and Mizori collectively teach the epoxy composition formation as set forth above in claim 1, including: curing agents that are aromatic diamines [0027] as taught by Nguyen, who further teaches prepregs when isothermally cured at 177° C [0050] lies in the claimed range.
Response to Arguments
Applicant’s arguments, filed 12/23/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nguyen (US20180290339, herein Nguyen), as evidenced by Patel (US20040039096, herein Patel) and Mizori (US20180237668, herein Mizori).
Nguyen, Patel and Mizori collectively teach all of the claimed ingredients, in the claimed amounts of the composition as set forth above in the new rejection. Newly added reference Mozori teaches the epoxy resin component can be, for example, N,N-diglycidyl-4-glycidyloxyaniline [0031].
In response to the argument of “unexpected results”, is not persuasive.
First, applicants’ argument is not commensurate in scope with the instant claims, which are curable epoxy composition.
Second, When Tables 4-7 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 1 is open to epoxy resins, each independently having at least two epoxy groups per molecule, and Instant application is open to “thermoplastic additive (0 to 50 wt %)” [Instant App. P13; 0101]. However, Tables 4-7 each only include one specific epoxy resin, and Table 6 only include two thermoplastic concentrations; Table 4, 5, 7 only include three thermoplastic concentrations. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Hence, these ranges are not reasonably commensurate in scope with the claimed ranges. Additionally, the examples employ a limited range of materials that are not reasonably commensurate with either the claimed epoxy resin or thermoplastic concentration range. Tables 4-7 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. L./Examiner, Art Unit 1767
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767