3DETAILED 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/5/2026 has been entered.
Status of Claims
The examiner acknowledges the amendment made to claim 1. Claims 1-2 and 4-17 are pending.
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.
Claims 1, 2, and 4-7, and 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (JP2016-199673).
Regarding Claim 1,
Okamoto teaches a urethane-modified epoxy (Paragraph 112) which contains a curing agent that cures upon heating, preferably at temperatures of 140 °C or higher (Paragraph 142). The urethane-modified epoxy is generated from a urethane prepolymer and a hydroxyl group containing epoxide (Paragraph 112). With Okamoto is silent on the material state at 25 °C, Okamoto specifies that the molecular weight of the urethane-modified epoxy resin should preferably be between 3000 and 30,000 (Paragraph 113), which overlaps with the molecular weights disclosed by the applicant in the specification. Because the melting temperature of a polymer is a function of the components used in its synthesis as well as the final molecular weight, it would necessarily follow that using similar polyols and polyisocyanates as is common in the art and similar to those used by the applicant, it would necessarily follow that such urethane-modified epoxy resins from Okamoto would also be solid at 25 °C. See MPEP 2112.01.II.
With regard to the epoxide-functional polyurethane or urea having a melting temperature 10 °C or more below the activating temperature of the curing agent, Okamoto is silent. However, Okamoto does note that the composition is preferably mixed at temperatures below 150 °C to reduce thermal deterioration (Paragraph 185). The ordinarily skilled artisan would note that mixing of compounds is easier when the primary component is in a molten state, but would be aware that temperatures need to be kept below the curing onset temperature. As such, one of ordinary skill in the art would prefer the primary component to be in a molten state below the cure temperature by a sufficient degree to avoid initiating the curing reaction. As such, it would have been obvious prior to the effective filing date of the instant application to have used an epoxide-functional polyurethane that melts at least 10 °C below the onset of curing to afford a sufficient processing window to generate the composition without curing.
Regarding Claim 2,
Okamoto teaches a curable composition containing the required elements as discussed above in regard to claim 1, but is silent on the melting temperature of the composition. However, Okamoto does teach that the temperature for dispersing the components is particularly preferable to be in the range of 90 to 120 °C (Paragraph 185). As such, it would necessarily follow that the melting temperature is above room temperature (roughly 25 °C), but below the temperature of the listed range in order for proper dispersion to occur. Additionally, Okamoto teaches that the preferred temperature for curing is 140 °C or higher. It would necessarily follow that the mixing temperature would be below this temperature in order to avoid curing during the mixing process. As such, one of ordinary skill in the art, seeking to avoid curing during the mixing process, would seek to formulate a composition in which the melting temperature is below this value. Thus, it would have been obvious to have set the melting temperature to be below the curing temperature of the composition.
Regarding Claim 4,
While Okamoto does not speak to the molecular weight of the polyol (the X component of the instant claim), Okamoto does teach that the molecular weight of the entire polymer is preferred to be from 3000 to 30000 Da. It would necessarily follow that in order to obtain a urethane polymer with a molecular weight of 3000, including the epoxy groups and polyisocyanates, that the polyol component would be of a molecular weight below 1000. Additionally, shorter polyol chains have less flexibility when incorporated into polyurethanes, rendering the polymer more rigid. As such, one of ordinary skill in the art, looking to strengthen a composition containing a polyurethane, would select a shorter polyol in order to obtain the predictable result of a stronger, more rigid polyurethane polymer. It would thus have been obvious to have selected a polyol of under 1000 Da molecular weight.
Regarding Claim 5,
Okamoto teaches that the urethane-modified epoxy resin is obtained by reacting a urethane prepolymer with a hydroxyl group containing epoxide (Paragraph 112).
Regarding Claim 6,
Okamoto teaches the use of urethane prepolymers (Paragraph 112). By definition, a urethane is comprised of a polyol and a polyisocyanate that have been reacted.
Regarding Claim 7,
Okamoto teaches a urethane-modified epoxy resin, but is silent on whether the compound is substantially free of unreacted isocyanate groups. However, as isocyanates are known for high reactivity in the presence of functional groups such as alcohols, it would necessarily follow that nearly all (>95%) of the isocyanates would be reacted, meeting the definition of substantially free as defined in the specification. Additionally, free isocyanates in polyurethane prepolymers are known to reduce shelf stability. Indeed, Okamoto notes that when utilizing blocked urethanes in the composition that having all terminal isocyanates blocked is preferable (Paragraph 116). Given this knowledge, one or ordinary skill in the art would be motivated to fully react the isocyanates of the urethane prepolymer to improve the shelf stability of the composition. It would therefore have been obvious prior to the effective filing date of the instant application to have used a urethane-modified epoxy resin which is substantially free of unreacted isocyanate groups.
Regarding Claim 9,
Okamoto teaches a curable compositions containing a urethane-modified epoxy resin, however does not explicitly teach that the melting temperature is at least 10 °C lower than the curing agent activation temperature. Okamoto does teach that the temperature for dispersing the components is particularly preferable to be in the range of 90 to 120 °C (Paragraph 185) and that the curing temperature is preferably 140 °C or higher (Paragraph 142). As such, it would logically follow that the composition would be in a melted state at the mixing temperature for uniform distribution, which would be at least 20 °C below the curing temperature. As it would be disadvantageous to cure the composition during mixture, it would have been obvious to have set the melting temperature to be below the curing temperature for this reason.
Regarding Claim 10,
Okamoto teaches that the curing agent is most preferably contained in an amount of 5 to 20 parts by weight relative to the epoxy resin (Paragraph 155), which falls within the range of the instant claim.
Regarding Claim 11,
Okamoto teaches the use of elastomeric polymers (Paragraph 25), filler materials (Paragraph 162), and other epoxy containing components (Paragraph 25), as well as accelerators (Paragraph 156).
Regarding Claim 12,
Okamoto teaches that the elastomer may be present up to an amount equal to the epoxy resin (Paragraph 25), which would overlap with the range of the instant claim. Okamoto teaches that the use of this material improves toughness of the cured product (Paragraph 39). As such, one of ordinary skill in the art would be motivated to adjust the amount of its inclusion to obtain the desired toughness of the cured product. It would thus have been obvious to have selected the overlapping portion of the ranges because selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Okamoto also teaches that filler is preferably used in an amount of 5 to 40 parts by mass (Paragraph 167) and that the accelerator can be used most preferably between 0.8 and 2 parts relative to the epoxy resin (Paragraph 161), ranges which are contained within the ranges of the instant claim.
Regarding Claim 13,
Okamoto does not explicitly state that the composition is substantially free of solvent, however does state that solvent can be used to disperse the polymer fine particles in the composition, which is followed by solvent removal (Paragraph 182). It would logically follow that the composition would be substantially free of solvent based upon a solvent removal step.
Regarding Claim 14,
Okamoto states that the urethane-modified epoxy resin preferably contains 2 or more epoxy groups (Paragraph 112) and that the base epoxy resin list includes several epoxy resins that contain 2 or more epoxide groups per molecule, such as bisphenol A and F which are listed as preferred. It would logically follow that a mixture of the two epoxide containing compounds listed would have an average epoxide value within the stated range of the instant claim.
Regarding Claim 15,
Okamoto teaches a coating of the composition can be applied and then cured (Paragraph 199), meeting the requirement of a film.
Regarding Claim 16,
Okamoto teaches that the composition may be applied by any method, but is particularly useful when heated and applied (Paragraph 189), which reads on a reactive hot melt.
Regarding Claim 17,
Okamoto teaches a composition that meets the requirements of claim 1 that has a shear strength of greater than 20 MPa following curing at a temperature of 170 °C (Example 3, Table 1).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (JP2016-199673) as applied to claims 1, 2, and 4-7, and 9-17 above, and further in view of Chin (US 20160343509).
Regarding Claim 8,
Okamoto teaches that the urethane-modified epoxy resin can be used in amounts equal in mass to that of the other epoxy resin, however does not teach inclusion at amounts above 50% of the composition. Chin teaches a composition in which the relative amount of the urethane-modified epoxy to a second epoxy resin, such as bisphenol A can be from 50:50 to 90:10 (Paragraph 55). Chin also notes that higher amounts of the urethane-modified epoxy in the composition result in greater coupling strength and heat resistance when used as an adhesive (Paragraph 56). One of ordinary skill in the art would be motivated by this knowledge to alter the composition of the adhesive to include a greater amount of the urethane-modified epoxy in order to improve the coupling strength and heat resistance of the cured composition. It would therefore have been obvious prior to the effective filing date of the instant application to have used the higher incorporation level of urethane-modified epoxy in an adhesive as taught by Chin in the adhesive composition taught by Okamoto to obtain the predictable result of an adhesive composition with greater strength and heat resistance.
Response to Arguments
Applicant's arguments filed 2/5/2026 have been fully considered but they are not persuasive for the following reasons.
On page 7, the applicant argues that Okamoto does not teach the use of a solid epoxy-modified urethane and that the only disclosed compound of this type is a liquid on the basis of a safety datasheet indicating a viscosity of 130,000 mPa·s at 25 °C and supplies a declaration from one of the inventors stating that an ordinarily skilled artisan would not think that this compound is a solid. While the examiner appreciates this information, such declarations cannot take the place of information that is provided in the initial disclosure. Because the applicant’s specification defines a solid to be a compound with a viscosity greater than 100,000 cP at 25 °C (Paragraph 26), which while nonstandard, is nonetheless sufficiently specific, this definition must be taken into account by the examiner. As such, while the compound in question may not meet what is customarily used as the definition of a solid, it does meet the requirement of a solid according to applicant’s disclosure.
On pages 8 and 9, the applicant speaks to the added limitation on the melting temperature of the epoxide-functional polyurethane, which is addressed in the rejection above.
Conclusion
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765