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 .
Claims 1, 7, 9, 10, 13-16, 22-24 are pending and are under examination on the merits.
Claims 1, 23 are amended.
Claims 3-6, 8, 11, 12, 17-20, 25-59 are previously canceled.
Claims 2, 21 are newly canceled.
No claims are newly added.
Election/Restrictions
Applicant’s previous election of Group I, claims 1, 2, 7, 9, 10, 13-16, 22-24 and species encapsulated component- curing agent; rupture initiator- physical foaming agent; and matrix material-epoxy in the reply filed on 10/21/24 is restated herein.
Claim 23 is newly withdrawn as it has been amended to include material that is not in the elected species. The species election of matrix material of “epoxy” is reflective of epoxy-based resins which have epoxy groups which are curable by the curing agent. The material of claim 23 does not require epoxy to be present in the “polymeric epoxy-based matrix material”; it describes epoxy as a reactant which forms the “polymeric epoxy-based material”. Since the epoxy appears to have been reacted, the species of “epoxy-based matrix material” is not met in claim 23. See also 112 rejection of claim 23, set forth in the interest of compact prosecution, below.
Claims 1, 7, 9, 10, 13-16, 22, 24 are examined for the elected species below.
Claim Rejections - 35 USC § 112
The rejection in the previous action of claim 23 under 35 U.S.C. 112(d) set forth in the previous action is withdrawn in view of applicant’s amendment; however a new 112(b) rejection is set forth in view of this same amendment.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is 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.
Claim 23 states “the material of claim 10, wherein the material is…” however the phrasing which follows appears to refer only to item iii), “a polymeric epoxy based matrix material” of claim 1, not the overall “a material, comprising” of claim 1. Therefore, to avoid the ambiguity currently present, applicant should change claim 23’s “the material of claim 10, wherein the material is…” to “the material of claim 10, wherein the polymeric epoxy-based matrix material of claim 1 is…”
Furthermore, it is noted that claim 23 does not require the presence of epoxy moieties in the polyether, and one of ordinary skill would not reasonably expect them to be present since diepoxy reacting with diamines typically proceeds to complete reaction of the epoxy.
The above 112 rejection is made in the interest of compact prosecution; claim 23 is not examined below because it does not describe an elected species.
Claim Rejections - 35 USC § 102
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 rejection in the previous action of claims 1, 7, 9, 10, 14-16, 22, 24 under 35 U.S.C. 102(a)(1) as being anticipated by JPH03292378A by Hosokawa et al is repeated, now as evidenced by Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad.
Hosokawa describes a microcapsule and adhesive composition.
Regarding claim 1, Hosokawa describes a material comprising:
i) an encapsulated component comprising a curing agent and
ii) a rupture initiator comprising a foaming agent (translation p.1 paragraph 3)
iii) a polymeric epoxy matrix material (p.3 paragraph 2)
The encapsulation is adapted to fail upon activation of the rupture initiator (“the foaming agent foams upon heating to break the capsule” p.1 paragraph 3), allowing the encapsulated component to be liberated (p.1 paragraph 3) and initiates a reaction (p.4 paragraph 2 “reacts with resin components”).
Hosokawa the curing agent is inside the shell with the foaming agent (p.1 paragraph 3).
Regarding the claim’s final phrase Hosokawa exemplifies 2-undeceylimidazole (p.4 Examples B-1) and mentions 2-methylimidazole and 2-ethyl-4-methylimidazole (p.2 paragraph 2). According to Ebnesajjad, these are highly reactive at ambient temperature (p.267 col 1 final paragraph), i.e. would cause Hosokawa’s epoxy adhesive to react at ambient temperature, well below the instant temperature requirements.
Notably the instant phrasing “wherein the encapsulated component causes the polymeric matrix to react at a temperature below…” is directed to a future intended use, not the product claimed. The product claimed is a material comprising an encapsulated component- the encapsulated component has yet to “cause the polymeric matrix to react”. Thus Hosokawa’s curing agent must merely be capable of “causing the polymeric matrix to react at a temperature below…” as claimed. As described in the paragraph above, Hosokawa meets this provision.
Regarding claim 7, Hosokawa specifies a chemical blowing agent (p.1 paragraph 4).
Regarding claim 9 and 10, Hosokawa describes rupture upon heat (“the foaming agent foams upon heating to break the capsule” p.1 paragraph 3).
Regarding claim 14, Hosokawa exemplifies curing agents which have melting points above room temperature, i.e. are solid at room temperature (p.4 Example items B-1 thru B-3).
Regarding claim 15, Hosokawa lists several urea curing agents (p.2 paragraph 2) and exemplifies 3-{(3,4 dichlorophenyl) -11 dimethylurea (p.4 Example B-2).
Regarding claim 16, Hosokawa describes several amines, imidazoles, and thiol compounds (reads on mercaptan) (p.2 paragraph 2).
Regarding claim 22, Hosokawa describes epoxy which is thermoset (p.3 paragraph 2).
Regarding claim 24, epoxy is capable of being foamed and Hosokawa describes releasing blowing agent into the composition, i.e. foaming (p.1 paragraph 3).
The rejection in the previous action of claim 13 under 35 U.S.C. 102(a)(1) as being anticipated by JPH03292378A by Hosokawa et al as evidenced by “Diethylenetriamine”, “Trientine”, “1,1,3,3-Tetramethylguanidine” and “Piperidine” by PubChem is repeated and maintained herein. The evidentiary reference “Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad is applied to claim 1, upon which claim 13 depends. See rejection of claim 1 above.
Hosokawa is described above.
Regarding claim 13, Hosokawa lists possible curing agents on p.2 paragraph 2. Several of these are liquid- i.e. have melting points below 20C- as evidenced by the attached PubChem sheets.
Note that the above 102 rejections are set forth in the interest of compact prosecution; Hosokawa is set forth below in 103 rejection of the elected species of physical foaming agent. Hosokawa is applied as a 102 rejection to the nonelected foaming agent above because doing so did not require further search.
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.
The rejection in the previous action of claims 1, 7, 9, 10, 14-16, 22, 24 under 35 U.S.C. 103 as being unpatentable over JPH03292378A by Hosokawa et al in view of US 20160237234 by Tayagaki et al is repeated now as evidenced by “Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad.
Hosokawa describes a microcapsule and adhesive composition.
Regarding claim 1, Hosokawa describes a material comprising:
i) an encapsulated component comprising a curing agent and
ii) a rupture initiator comprising a foaming agent (translation p.1 paragraph 3)
iii) a polymeric epoxy matrix material (p.3 paragraph 2)
The encapsulation is adapted to fail upon activation of the rupture initiator (“the foaming agent foams upon heating to break the capsule” p.1 paragraph 3), allowing the encapsulated component to be liberated (p.1 paragraph 3) and initiates a reaction (p.4 paragraph 2 “reacts with resin components”).
Hosokawa the curing agent is inside the shell with the foaming agent (p.1 paragraph 3).
Hosokawa prefers a chemical foaming agent and is silent as to the instantly elected physical foaming agent (p.1 paragraph 4).
Tayagaki describes expandable microcapsules.
Tayagaki describes the blowing agents described in Hosokawa alongside physical blowing agents (paragraph 37) and exemplifies physical blowing agents pentane and isopentane (paragraph 159). Tayagaki states that his invention gives heat-expandable microspheres of high thermal expansion performance. Thus it would be obvious to one of ordinary skill to use the blowing agents exemplified by Tayagaki in Hosokawa’s invention for their high thermal expansion.
Regarding the claim’s final phrase, Hosokawa exemplifies 2-undeceylimidazole (p.4 Examples B-1) and also mentions 2-methylimidazole and 2-ethyl-4-methylimidazole (p.2 paragraph 2). According to Ebnesajjad, these are highly reactive at ambient temperature (p.267 col 1 final paragraph), i.e. would cause Hosokawa’s epoxy adhesive to react at ambient temperature, well below the instant temperature requirements. This is merely an example of Hosokawa meeting the instant requirement; see all of Hosokawa p.2 paragraph 2 for his possible curing agents.
Notably the instant phrasing “wherein the encapsulated component causes the polymeric matrix to react at a temperature below…” is directed to a future intended use, not the product claimed. The product claimed is a material comprising an encapsulated component- the encapsulated component has yet to “cause the polymeric matrix to react”. Thus Hosokawa’s curing agent must merely be capable of “causing the polymeric matrix to react at a temperature below…” as claimed. As described in the paragraph above, Hosokawa meets this provision.
Regarding claim 7, Tayagaki exemplifies physical blowing agents (paragraph 159).
Regarding claim 9 and 10, Hosokawa describes rupture upon heat (“the foaming agent foams upon heating to break the capsule” p.1 paragraph 3).
Regarding claim 14, Hosokawa exemplifies curing agents which have melting points above room temperature, i.e. are solid at room temperature (e.g. p.4 Example items B-1 to B-3). See also Hosokawa p.2 paragraph 2 which lists many other curing agents.
Regarding claim 15, Hosokawa lists several urea curing agents (p.2 paragraph 2) and exemplifies 3-{(3,4 dichlorophenyl) -11 dimethylurea (p.4 Example B-2).
Regarding claim 16, Hosokawa describes several amines, imidazoles, and thiol compounds (reads on mercaptan) (p.2 paragraph 2).
Regarding claim 22, Hosokawa describes epoxy which is thermoset (p.3 paragraph 2), i.e. meets the future intended use of thermoset after cure.
Regarding claim 24, epoxy is capable of being foamed and Hosokawa describes releasing blowing agent into the composition, i.e. foaming (p.1 paragraph 3).
The rejection in the previous action of claim 13 under 35 U.S.C. 103 as being unpatentable over JPH03292378A by Hosokawa et al in view of US 20160237234 by Tayagaki et al as evidenced by “Piperidine”, “Trientine”, “Diethylenetriamine” and “1,1,3,3-Tetramethylguanidine” by PubChem, with aspects of claim 1 now evidenced by “Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad.
Hosokawa is described above.
Regarding claim 13, Hosokawa describes many potential curing agents (p.2 paragraph 2) and several are liquid at room temperature (i.e. have melting points below room temperature) including for example piperidine, trientine, Diethylenetriamine, and 1,1,3,3-Tetramethylguanidine (see attached reference documents).
Response to Arguments
Applicant’s argument p.5 paragraph 3 of Remarks submitted 7/7/25 is considered but is not persuasive. Applicant states that claim 23 refers to epoxy materials that are utilized with thermoplastic materials to form reaction products that result in epoxy-functional materials having thermoplastic characteristics. However, this is not how the claim is worded. First, the claim refers to “a material”, not “a polymeric epoxy based matrix material”, which confuses the issue as to what is being described. A 112 rejection is set forth above in the interest of compact prosecution. Second, claim 1’s term “epoxy based matrix material”, under broadest reasonable interpretation, may include resins that are prepared from epoxy- though these do not fall under the purview of the elected species. Claim 23 does not describe the presence of any epoxy-functional materials in the thermoplastic polyether; the epoxy is described as a reactant and the resultant polymer has “amine linkages, ether linkages, and pendant hydroxyl moieties”. The reaction of diglycidyl ether with a difunctional amine does not typically leave epoxy groups intact. Since claim 23 does not indicate the presence of epoxy groups in the thermoplastic polyether and one of ordinary skill would not reasonably expect them to be present, the claim is withdrawn from examination as the claimed polyether does not read on the elected species.
Applicant’s argument p.5 final paragraph has been considered but is not persuasive. Applicant states that the foaming agent is “within the shell surface”. Hosokawa meets this aspect of the claim by describing “the foaming agent foams upon heating to break the capsule” (p.1 paragraph 3) i.e. the foaming agent is within the shell surface and expands to break the capsule.
Regarding the phrase in claim 1 “wherein the encapsulated component causes the polymeric matrix to react at a temperature below 140C”, since the claim is to a material and not a process, the phrase is a future intended use and the applied art must merely be capable of achieving the description. As previously cited in previous claim 21, Ebnesajjad demonstrates that the curing agents described in Hosokawa react at a temperature below 140C.
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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, Randy Gulakowski can be reached at 5712721302. 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.
/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766