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, 9, 10, 13-16, 22-24, 60-65 are pending and are under examination on the merits.
Claims 1, 23 are amended.
Claims 2-6, 8, 11, 12, 17-21, 25-59 were previously canceled.
Claim 7 is newly canceled.
Claims 60-65 are newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/14/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 and 60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 23 recites “cause amine moieties from the difunctional amine to react with epoxy moieties from the polymeric epoxy based matrix”. The specification recites “the amine moieties to react with the epoxy moieties to form a polymer backbone having amine linkages” (publication paragraph 43) and the reference to epoxy moieties therein is to the diglycidyl ether or diepoxy-functionalized poly(alkylene oxide) mentioned in the same sentence (publication paragraph 43). The claim reference to “polymeric epoxy based matrix” is broader than the specification’s “diglycidyl ether or diepoxy-functionalized poly(alkylene oxide)”- it includes both more and different structures. Also, the claimed “polymeric epoxy based matrix” present in claim 1 cannot fully react with difunctional amine because it needs to have epoxy groups available to cure via the encapsulated curing agent. Also how can the polymeric epoxy based matrix include a component which is formed by reacting with the polymeric epoxy based matrix? In this case the matrix would be affected and no longer be itself.
Claim 60 depends on claim 23 and is rejected for the same reason.
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.
The 112(b) rejection in the previous action of claim 23 is withdrawn, however a 112(a) rejection is set forth above.
Claims 62, 65 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.
Claim 62 recites a list with the phrasing “include…or both”. This is improper Markush phrasing; it is not clear if the group is closed or not, therefore the group does not have definite bounds. Proper Markush wording is “are selected from…and both”.
Claim 65 recites a list with the phrasing “include…or a combination thereof” starting in line 3. This is improper Markush phrasing; it is not clear if the group is closed or not, therefore the group does not have definite bounds. Proper Markush wording is “are selected from the group consisting of….and a combination thereof”.
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, 9, 10, 14-16, 22, 24 under 35 U.S.C. 102(a)(1) as being anticipated by JPH03292378A by Hosokawa et al is withdrawn in view of applicant’s amendment requiring a physical blowing agent where Hosokawa prefers a chemical foaming agent.
Claim(s) 1, 9, 10, 16, 22, 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20190036399 by Ha et al as evidenced by “Epoxy Resins” by Nicholson.
Ha describes thermally expandable microcapsules.
Regarding claim 1, Ha describes a material comprising:
i) an encapsulated component comprising a curing agent (paragraph 74, 84-85)
ii) a physical foaming agent inside the shell (paragraph 45-46, end of paragraph labeled 63)
iii) a polymeric epoxy (paragraph 84)
Ha describes encapsulation which is adapted to fail upon expansion of the foaming agent (paragraph 8, 84, 85) which liberates the curing agent to initiate a reaction with the epoxy (paragraph 84, 85).
Ha describes curing at 100C (paragraph 84). Note that the claim phrasing of “adapted to fail” and “causes the…material to react” are future intended uses of the claimed product and Ha meets them merely by being capable of meeting the actions.
Regarding the “polymeric” aspect of instant “polymeric epoxy resin”, since Ha states “epoxy resins” which are reacted with the curing agent, this reads on “polymeric epoxy resin”, see Nicholson p.94 paragraph 2 (“prepared from polymers”).
Regarding claim 9 and 10, Ha describes foaming agent which volatizes upon application of heat (paragraph 45, 58, 63).
Regarding claim 16, Ha exemplifies the amine N,N-dimethyl-benzylamine (paragraph 74) see also end of paragraph 48, and also describes imidazoles (paragraph 49).
Regarding claim 22, Ha describes a thermoset (epoxy) material (paragraph 84-85).
Regarding claim 24, Ha’s material is capable of being foamed, for example by expansion of the vaporizable liquid in the microcapsule prior to break (paragraph 63).
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20190036399 by Ha et al as evidenced by “Epoxy Resins” by Nicholson and “N,N-dimethyl-benzylamine” by PubChem.
Ha is described above.
Regarding claim 13, Ha describes N,N-dimethyl-benzylamine (paragraph 74), which is liquid at room temperature (MP -75C, BP 180C).
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 as evidenced by “Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad is withdrawn in view of further search and applicant’s argument.
Claims 1, 9, 10, 14-16, 22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over JPH03292378A by Hosokawa et al in view of KR 20190036399 by Ha et al in further view of “Foaming Plastics with Inert Gases” by Praller as evidenced by “Curing Agents” in Handbook of Adhesives and Surface Preparation ed. by Ebnesajjad. New claim 65 is rejected under the same premise.
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).
Ha also describes thermally expandable microcapsules which rupture upon heat to release an active agent.
Ha describes using hydrocarbon blowing agents, which are physical blowing agents (paragraph 45-46, 63), not chemical blowing agents like those detailed by Hosokawa.
Praller describes inert gases which are used in foamed plastics.
Praller states that chemical blowing agents can form undesirable decomposition products and are often costly (p.1 col 3) and lists hydrocarbons as an alternative (p.2 col 3 final paragraph). Thus it would be obvious to one of ordinary skill to use the alternative hydrocarbons described by Ha where Hosokawa prefers chemical blowing agents because chemical blowing agents can form undesirable decomposition products and are often costly.
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 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 and Ha describes releasing blowing agent into the composition, i.e. foaming (Hosokawa p.1 paragraph 3; Ha paragraph 48).
Regarding claim 65, Hosokawa describes several additives which read on the instant list, including pigment and talc which read on colorant. See Hosokawa p.3 penultimate paragraph.
Claims 61 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20190036399 by Ha et al as evidenced by “Epoxy Resins” by Nicholson in view of US 4009224 by Warnken.
Ha is described above.
Regarding claims 61 and 62 Ha describes epoxy resins generally but is silent as adding an ethylene polymer (paragraph 84).
Warnken describes an epoxy composition.
Warnken describes an epoxy composition which is cured (col 2 ln 30-35). Warnken describes adding a copolymer of vinyl acetate and ethylene to improve flexibility and flow (col 2 ln 45-55). Thus it would be obvious to one of ordinary skill to add the ethylene vinyl acetate copolymer to Ha’s epoxy in order to improve flexibility and flow.
Claims 61 and 63 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20190036399 by Ha et al as evidenced by “Epoxy Resins” by Nicholson in view of US 5178902 by Wong et al as evidenced by Lotader.
Ha is described above.
Regarding claims 61 and 63 Ha describes epoxy resins generally but is silent as adding an ethylene polymer (paragraph 84).
Wong also describes an epoxy composition which is cured. Wong describes adding polyolefin powder to epoxy powder in an interlayer (col 3 ln 62-70), and specifically modified polyolefin (col 4 ln 15-22) which serves as adhesive and simplifies the coating process and gives consistent properties (col 4 ln 8-11). The modified adhesive has chemically active acrylate and maleic acid groups, Lotader PX 8450 ( col 4 ln 17-21). Lotader’s website describes it as an ethylene terpolymer with maleic anhydride and/or glycidyl methacrylate groups (paragraph 1). It would be obvious to one of ordinary skill to add the Lotader polyethylene with glycidyl methacrylate or maleic anhydride to Ha’s epoxy resin in order to simplify a coating process and/or act as an adhesive and/or give consistent properties.
Claims 64 and 65 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20190036399 by Ha et al as evidenced by “Epoxy Resins” by Nicholson in view of “Polymer Additives” by Stevens.
Ha is described above.
Regarding claims 64 and 65, Ha is silent as to specific other additives in his polymeric formulation.
Stevens describes typical polymeric additives.
Stevens describes reinforcing fibers (for instant claim 64) and- for claim 65- ultraviolet stabilizers, flame retardants, heat stabilizers, coloring agents, plasticizers (processing aids) and release agents (lubricant) (p.444 Table 1). Stevens states that reinforcing fibers increase strength and stiffness, flame retardants reduce flammability, ultraviolet stabilizers prevent degradation by sunlight, heat stabilizers prevent thermal degradation, coloring agents impart color, plasticizers reduce melt viscosity and release agents prevent sticking to process machinery (p.444 Table 1). Thus it would be obvious to one of ordinary skill to add any to all of these additives to Ha’s polymeric formulation for the advantages disclosed in Steven’s Table 1.
Claim Interpretation
Although no art is presented in rejection for claim 23 and its dependent, claim 60, claim 23 was searched for its strict phrasing, i.e. that a polymeric epoxy includes a thermoplastic polyether which has been created via reaction with the polymeric epoxy itself, i.e. present in some sort of crosslinked fashion, which is not supported by the specification. If the language is changed to that supported in the specification, it is likely that claim 23 would be rejected by KR 20190036399 by Ha et al in view of US 20070284036 by Sheasley et al since Sheasley discloses a thermoplastic polyether corresponding to the instant description (paragraph 34-36), with motivation to combine (paragraph 36).
Response to Arguments
Applicant’s argument p.6 paragraph 4 of Remarks submitted 4/14/26 has been considered but is not persuasive. Applicant has introduced new matter via amendment of claim 23.
Applicant’s argument p.6 final paragraph -p.7 has been considered and is persuasive; the narrowing of claim 1 to “physical blowing agent” removes Hosokawa as a 102 reference.
Applicant’s argument p.8 has been considered and is persuasive. Tayagaki’s motivation is high thermal expansion, which is not necessarily motivating to one who is seeking to rupture the microcapsule. This rejection has been withdrawn above.
New art rejections have been set forth above.
Conclusion
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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