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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/22/2025, has been entered.
Claim Interpretation
Instant claim 1 is directed to the adhesive composition, and recites the limitation of component (B) uses the language “provided that the component (A) is excluded”, this is considered to mean component (A) is excluded from component (B) and not the entire composition.
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.
Claims 1-4, 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sumio (JPS63189488, herein Sumio, a machine translation is being used for citation purpose), in the view of Hermansen (US6060539, herein Hermansen),
Guo (CN102827566, herein Guo, a machine translation is being used for citation purpose), and Kurio (JP2005022339, herein Kurio, a machine translation is being used for citation purpose), as evidenced by Evidence Ref. a) Cardolite NC-547 datasheet; Evidence Ref. b) Caillol et. al., P4; OCL - Oilseeds and fats, Crops and Lipids, 23 5 (2016) D511; Evidence Ref. c) JP2010037848-MT; Evidence Ref. d) JP2025086859-MT.
Regarding Claims 1, 3, 4, 16, 17, Sumio teaches adhesive composition [P5; Para. 2] comprising: 20 to 80 parts by weight of oil-modified epoxy resins [P4; Para. 1]; Oil-modified epoxy resins are those obtained by epoxidizing vegetable oils [P5; Para. 2] read on component (A); 5 to 30 parts by weight of NBR-modified epoxy resin [P4; Para. 1] reads on component (B); Epoxy Resin Curing Agent isophthalic acid dihydrazide [P5; Para. 5], 1 to 15 parts by weight [P6; Para. 6] reads on component (D) the latent curing agent. Therefore, the ratio between NBR-modified epoxy resin/ oil-modified epoxy resin=30/20=1.5 to 5/80=6.25%, hence, overlaps the claimed range of B/A, which is 70/100=0.7 to 170/100=1.7; the ratio between isophthalic acid dihydrazide / oil-modified epoxy resin=15/20=1.5 to 1/80=6.25%, hence, overlaps the claimed range of D/A, which is 1/100=0.01 to 60/100=0.6.
Sumio teaches Oil-modified epoxy resins are those obtained by epoxidizing vegetable oils [P5; Para. 2], but does not explicitly teach the specified component (A), however, Hermansen teaches trifunctional novolac epoxy of cardanol and the difunctional epoxy of cardanol. The trifunctional novolac epoxy of cardanol, with an epoxy equivalent weight of about 600, and the difunctional epoxy of cardanol, with an epoxy equivalent weight of about 350, are commercially available from the Cardolite Corp. of Newark, N.J. under the respective trade designations of NC-547 and NC-514 [C4; L30-40], lie in the epoxy equivalent range of the component (A), wherein, the epoxy of cardanol are bio-based cashew nut shell oil modified resin as evidenced by abstract Caillol et. al., OCL - Oilseeds and fats, Crops and Lipids, 23 5 (2016) D511,
Furthermore, the NC-547 is shown below as evidenced by Cardolite NC-547 datasheet, matches the claimed formula 2.
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the NC-514 is shown below as evidenced by Caillol et. al., P4; OCL - Oilseeds and fats, Crops and Lipids, 23 5 (2016) D511, matches the claimed formula 1.
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Sumio and Hermansen are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of epoxy resin based adhesive formation for metal surface application, via the selection of the bio-oil based epoxy toward the flexibility improvement. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute teaching of trifunctional novolac epoxy of cardanol and the difunctional epoxy of cardanol. The trifunctional novolac epoxy of cardanol, with an epoxy equivalent weight of about 600, and the difunctional epoxy of cardanol, with an epoxy equivalent weight of about 350, are commercially available from the Cardolite Corp. of Newark, N.J. under the respective trade designations of NC-547 and NC-514 into the composition of Sumio. Doing so would further achieve the desired property upon the selection of the particular epoxy resins which is critical in obtaining the desired flexibility in the final adhesive product. [C4; L14] as taught by Hermansen.
Sumio teaches NBR-modified epoxy resin [P4; Para. 1], but does not explicitly teach the specified component (B) as reaction product of butadiene-acrylonitrile rubber and bisphenol A epoxy resin, however, Guo teaches Rubber cross-linked modified epoxy resin [0009], such as Carboxyl-terminated liquid nitrile modified epoxy resin (ADK-EPR-4023) [0078], reads on reaction product of butadiene-acrylonitrile rubber and bisphenol A epoxy resin, as evidenced by CAS Registry Number: 449754-47-6, which is a carboxylated nitrile rubber-modified epoxy resin, also described as bisphenol-A type epoxy resin (Asahi Denka) [Scifinder], with epoxy equivalent as EPR-4023 (CTBN-modified epoxy resin, epoxy equivalent 230 g/eq.) [0053], as evidenced by [Evidence Ref_ JP2010037848-MT, see NPL]
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Sumio and Guo are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of epoxy resin based adhesive formation apply to steel surface, via the selection of the rubber-based epoxy component toward the low temperature 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 substitute teaching of Rubber cross-linked modified epoxy resin [0009], such as Carboxyl-terminated liquid nitrile modified epoxy resin (ADK-EPR-4023) [0078] into the composition of Sumio. Doing so would further achieve the desired property of the cured product has strong adhesion and has excellent adhesion properties to a variety of substrates; it has good low temperature resistance while maintaining high toughness [0038] as taught by Guo.
Sumio does not explicitly teach the specified component (C) and its range. However, Kurio teaches tackifiers include rosin-based resins, terpene-based resins [P7; Para 1] reads on the component (C), furthermore, the terpene-based resins (such as terpene-aromatic liquid resins) [P7; Para. 1] wherein the terpene-phenol resin is a type
of terpene-aromatic compound resin [as evidenced by JP2025086859-MT], in the range of 10 to 200 parts by weight, per 100 parts by weight of the total of the styrene synthetic rubber and the aromatic epoxy resin [P7; Para 1]. Kurio further explicitly teaches the curing agent including dihydrazide [P6; Para 1], reads on component (C), in the range of 0.5-15 weight part with respect to a total of 100 weight part of a styrene synthetic rubber and an aromatic epoxy resin [P6; Para 2], hence, the ratio between terpene tackifier to dihydrazide is 200/0.5=400 to 10/15=0.67, overlap the claimed components (C) and (D) ranges with their ratio as 100/1=100 to 5/60=8.33%. Sumio and Kurio are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of rubber modified epoxy resin based composition formation, upon the curing by dihydrazide toward the adhesive apply to the steel substrate. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the tackifiers include rosin-based resins, terpene-based resins [P7; Para 1] and range into the composition of Sumio. Doing so would further achieve the desired property of “ensure both sufficient adhesive strength and reinforcing properties for steel plates” [P8; Para. 1] as taught by Kurio.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claims 2, 13, Sumio, Hermansen, Guo and Kurio teach the composition as set forth above in claim 1, Sumio further teaches good adhesion to oily surfaces after
curing [P4; Para. 1], which is capable of performing the adhering materials formation and elongation percentage measurement.
Regarding the elongation percentage, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Sumio, Hermansen, Guo and Kurio teach all of the claimed ingredients, in the claimed amounts, and Sumio teaches the composition as being made by a substantially similar process as of good adhesion to oily surfaces after curing [P4; Para. 1]. 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. elongation percentage, warpage would necessarily arise from a composition with all the claimed ingredients. "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 Claims 11, 12, 15, Sumio, Hermansen, Guo and Kurio teach the composition as set forth above in claim 1.
Sumio is silent on adhesion between materials made of substances with different linear expansion coefficients. However, Hermansen teaches adhesives of the invention may be successfully employed in numerous industrial applications requiring automated bonding of dissimilar materials [C11; L10], which indicates the application of the adhesive between substances with different linear expansion coefficients as forming an assembly. Furthermore, to apply the adhesive composition to specific substrates with specific linear expansion coefficients is intended use, which does not affect the chemical composition, therefore, the selection of substrates do not affect the application of the intended use of the as-developed adhesive composition. See MPEP § 2111.02. Sumio and Hermansen are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of bio-based oil modified epoxy resin based adhesive formation for metal-based surface 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 add the teaching of adhesives of the invention may be successfully employed in numerous industrial applications requiring automated bonding of dissimilar materials [C11; L10] into the product application. Doing so would further achieve the further product formation, with desired flexibility in the final adhesive product. [C4; L14] as taught by Hermansen.
Regarding Claim 14, Sumio teaches good adhesion to oily surfaces after
curing [P4; Para. 1] and curing agent for curing the epoxy resin that exhibits a curing
action when heated [P5; Para. 1], collectively indicate the cured product formation.
Response to Arguments
Applicant’s arguments, filed 12/22/2025, 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 Sumio (JPS63189488, herein Sumio, a machine translation is being used for citation purpose), Hermansen (US6060539, herein Hermansen),
Guo (CN102827566, herein Guo, a machine translation is being used for citation purpose), and Kurio (JP2005022339, herein Kurio, a machine translation is being used for citation purpose), as set forth in the new rejection above.
In this case, Sumio, Hermansen, Guo and Kurio teach all of the claimed ingredients, in the claimed amounts which further lead to a. the excellent oily surface adhesion properties, flexibility [P9; Para. 1] as taught by Sumio; b. desired flexibility in the final adhesive product. [C4; L14] as taught by Hermansen; c. the desired property of the cured product has strong adhesion and has excellent adhesion properties to a variety of substrates; it has good low temperature resistance while maintaining high toughness [0038] as taught by Guo; d. the desired property of “ensure both sufficient adhesive strength and reinforcing properties for steel plates” [P8; Para. 1] as taught by Kurio, collectively meet: an adhesive composition that causes less warpage in adhering materials made of different substances and is superior in adhesion force with keeping bulk strength in the cured product [Instant App. US20220251431; 0009], wherein, the less warpage indicates the materials with higher flexibility.
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.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767