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 .
Examiner’s Note
The current action is non-final because the Examiner noticed elected claims 54 – 55 filed March 22, 2025 were not addressed in the previous non-final office action.
The Examiner acknowledges the amendments of claims 37, 41, 49, the cancellation of claims 50 & 53, and the addition of new claims 56 – 57. Claims 1 – 35 were previously cancelled. Claims 36 – 48 are withdrawn from consideration.
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.
Claims 49, 51 – 52, & 54 – 57 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.
With regard to claim 49, First, Applicant’s specification teaches pre-crosslinked treatment step at room temperature for 10 minutes and at 90°C for 30 minutes for the working examples (pg. 13). This is not taught in the broader teachings of the specification. The working examples K1 – K3 had a compressibility of the pre-cross-linked adhesive of 30% (pgs. 14 – 15). Applicant’s specification does not teach a pre-crosslinked treatment step at room temperature for 10 minutes and at 90°C for 30 minutes for any samples that had greater than 30% compressibility after the pre-cross-linking step.
Applicant’s claim 49 recites a genus of “compressibility in the range of about 30% to 80%,” but the recited pre-crosslinking at 10 minutes at room temperature and 10 minutes at 90°C only had “ca. 30%” (i.e., about 30%) at 23°C compressibility (see Applicant’s working examples K1 – K3). Applicant does not have support for a sample that was formed by pre-crosslinked treatment step at room temperature for 10 minutes and at 90°C for 30 minutes and resulted in the sample having a compressibility of greater than 30%. Furthermore, according to Applicant’s data for workings examples K1 – K3, the compressibility was measured room temperature (23°C), not after heating at 90°C for 10 min as recited in claim 49. Therefore, Applicant’s recitation of “at least 30% compressibility” after pre-cross-linking “for 10 minutes at 90°C” is new matter.
According to the specification, pg. 12, the adhesive strength (Applicant’s claimed “adhesiveness”) of working examples K1 – K3 was measured at 23°C ± 2° (i.e., room temperature) and 50% ± 5% relative humidity at a peel-off speed of 300 mm/min and a peel-off angle of 180°. This contradicts Applicant’s claim recitation of “pressure-sensitive adhesiveness” after heating at 90°C for 10 minutes. Therefore, the claim 49 recitation of adhesiveness after heating at 90°C for 10 minutes is new matter.
Second, Applicant’s recited properties of compressibility and expansion of claims 49 – 53 are only supported by working examples K1 – K3. These values are dependent on the composition of the adhesive, which are not recited in claim 49. Therefore, Applicant claims a genus of unlimited epoxy-based adhesive composition, but only has support for the recited properties based on the species of the epoxy-based adhesive compositions of working examples K1 – K3.
In the instance when Applicant’s independent claim recites a genus, but only has support in their specification is limited to only small number of species, then the claim contains new matter because the recited genus does not have support for the other species in the genus that are not supported by the working examples Applicant relies on for support of their claim limitations.
Claims 50 – 55 are dependent on claim 49 and therefore also rejected.
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.
Claim(s) 49 – 53 are rejected under 35 U.S.C. 103 as being unpatentable over Shuh et al. (US 2016/0326413 A1), in view of Sajitz et al. (WO 2020/037502 A1).
*evidentiary reference Matsumoto Yushi-Seiyaku Co., Ltd, Matsumoto Microsphere® F and FN series.
With regard to claim 49, Shuh et al. teach an adhesive tape for bonding of electronic arrangements (paragraphs [0006] & [0081]), wherein an adhesive layer of the tape contains an adhesive composition comprising an epoxy component (paragraph [0021]) and at least one curing agent present in the composition. In other words, more than one curing agent may be present in the composition, such as a curing agent that crosslinks at room temperature (e.g. aliphatic and/or secondary amines) (i.e., Applicant’s “first curing agent”) and a thermally activatable curing agent (amides and anhydrides, Dy Hard 100S) (i.e., Applicant’s “second curing agent”) (paragraph [0054]). The adhesive composition may further comprise foaming agents, such as microballoons (i.e., Applicant’s “thermally expandable filler agent”), for the bridging of tolerances (paragraphs [0065], [0078], [0088], & [0091]).
Shuh et al. do not explicitly teach the second curing agent is chosen such that the second curing agent is substantially reacted with a portion of the epoxy component after a thermal curing of the epoxy resin composition at 130°C subsequent to the pre-cross-linking. It is important to note that this limitation is not a product-by-process limitation of the recited pressure-sensitive structural adhesive film. Rather, this limitation refers to the composition having adhesive properties after a method of use at a particular temperature and duration.
However, Applicant’s table on page 11 of the specification indicates Applicant’s preferred thermally activatable curing agent (i.e., “second curing agent”) is Dyhard 100S, which is the same thermally activatable curing agent as disclosed by Shuh et al. Therefore, one of ordinary skill in the art would expect the Dyhard 100S “second curing agent” taught by Shuh et al. would inherently “substantially react with a portion of the epoxy component after a thermal curing of the epoxy resin composition at 130°C subsequent to the pre-cross-linking.”
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
Shuh et al. fail to teach the first curing agent and the thermally expandable filler are chosen such that the epoxy resin composition exhibits pressure-sensitive adhesiveness after a pre-cross-linking (i.e., “room temperature curing”) of the epoxy resin composition for 10 minutes at room temperature (i.e., about 18°C to about 25°C) and subsequently for 10 minutes at 90°C. It is important to note that this limitation is not a product-by-process limitation of the recited pressure-sensitive structural adhesive film. Rather, this limitation refers to the composition having adhesive properties after a method of use at a particular temperature and duration.
However, Shuh et al. teach the adhesive composition comprising an amine compound as a room temperature curing agent (i.e., Applicant’s “first curing agent”) and microspheres (i.e., “thermally expandable filler”) as discussed above, has adhesive properties (i.e., “adhesiveness”) and temperature stability at room temperature (about 23 – 25°C), at greater than 35°C, more particularly, greater than 50°C in the uncured state (paragraphs [0019], [0037] – [0038]). Furthermore, the composition has adhesive properties after curing at 180C for 30 minutes (paragraphs [0133] & [0147]). This would suggest to one of ordinary skill in the art that the adhesive composition taught by Shuh et al. exhibits adhesiveness in the entire range of about 23°C to about 180°C, including Applicant’s recited conditions of pre-crosslinking after exposure to room temperature at 10 minutes and after exposure to 90°C for 10 minutes.
Shuh et al. fail to teach the first curing agent and the thermally expandable filler are chosen such that the epoxy resin composition exhibits at least 30% compressibility after a pre-cross-linking of the epoxy resin composition for 10 minutes at room temperature (i.e., about 18°C to about 25°C) and subsequently for 10 minutes at 90°C. It is important to note that this limitation is not a product-by-process limitation of the recited pressure-sensitive structural adhesive film. Rather, this limitation refers to the composition having adhesive properties after a method of use at a particular temperature and duration.
Sajitz et al. teach a method of manufacturing epoxy foam, wherein the epoxy foam is produced from a two-component epoxy system (a resin component and a curing agent component), for manufacturing adhesives (Pg. 1, Lines 23 – 27). Foaming of epoxy under external heating alone had disadvantages, such as inhomogeneous foams, damaged surfaces or inner areas of the foam structure, cost intensive, & time consuming (Pg. 2, Lines 31 – 38). It is known in the art that the thermoplastic shell of microsphere (microballoon foaming agent) particles expand at room temperature due to exothermic reaction created between the epoxy component and the amine component when combined, not from external heat (Pgs. 2 – 3).
Sajitz et al. teach a decrease in epoxy foam density (i.e., increasing expansion) and a decrease in compressive strength as the microsphere concentration increases (Pg. 18, Lines 17 – 20 & Examples 3.10-3.12 (Table 3) & 9.1). The amount of encapsulating blowing agent (“thermally expansive filler agent”) in composition B could be up to 40% by total weight, preferably between 0.1% and 40% by weight (Pg. 9, Lines 12 – 14). Composition B is the result of mixing composition A (ionic liquid salts, curing agents, catalyst) and an epoxy resin with blowing agent (Pg. 4, Lines 15 – 24).
The amount of microsphere (encapsulated blowing agent) in the composition determines the compressive strength of the rigid foam, and can be adjusted according to the appropriate end application needs (pg. 18, lines 17 – 20). Compressive strength is the ability of a certain material or structural element to withstand loads that reduce the size of the material. In other words, the greater the compressive strength, the greater the resistance to compression. As such, as the microsphere concentration is increased, the percentage of expansion and compressibility increase.
Sajitz et al. teach through their examples that different room temperature amines (i.e. “first curing agent”) effect the speed of foaming/curing at room temperature (example 1), wherein foaming may occur at ambient temperatures of 10°C, 25°C (room temperature), 40°C (Table 4, pg. 15), different grade of thermal expandable microspheres for foam epoxy formulation yields different density foams (Table 2), and that foaming occurs almost immediately after mixing the epoxy resin and microspheres at room temperature (example 3, pg. 13). Specifically, Sajitz teach preferred encapsulated blowing agent includes Matsumoto Microsphere® F35D & F36D (pg. 9, lines 5 – 9), which are the same thermally expansive fillers used by Applicant for working examples K1 – K3.
Therefore, based on the teachings of Sajitz et al., it would have been obvious to one of ordinary skill in the art to choose an amine-base room temperature curing agent (i.e., “first curing agent”) and Matsumoto Microsphere® F35D or F36D (i.e., “thermally expandable filler”) for achieving timely foaming activation at room temperature that has the benefits of homogeneous foam expansion, preventing damage to the foam, as well as saving cost and time. Furthermore, based on the teachings of Sajitz et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the Matsumoto Microsphere® F35D or F36D content through routine experimentation in order to achieve the desired compressive strength (i.e., “compressibility %”) for the desired application of the foamed epoxy composition. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 51, Shuh et al. and Sajitz et al. do not explicitly teach the first curing agent and the thermally expandable filler agent are chosen such that the epoxy resin composition exhibits an expansion of 180% to 230% during the pre-cross-linking.
However, as discussed for claim 49 above, Sajitz et al. teach the expansive filler is preferably Matsumoto Microsphere® F35D & F36D). Microsphere® F35D and F36D are the same thermally expandable filler material used by Applicant (specification, pgs. 11 – 12, table, examples K1 – K3). Furthermore, Sajitz et al. teach the amount of encapsulating blowing agent (“thermally expansive filler agent”) in composition B could be up to 40% by total weight, preferably between 0.1% and 40% by weight (Pg. 9, Lines 12 – 14). Composition B is the result of mixing composition A (ionic liquid salts, curing agents, catalyst) and an epoxy resin with blowing agent (Pg. 4, Lines 15 – 24). Applicant’s working examples K1 – K3 contained 10 parts by weight Microsphere F-35D or F-36D, which was about 3.1 wt.% microcapsules in working examples K1 and K3 and is within the content range of thermally expansive filler taught by Sajitz et al.
Furthermore, Sajitz et al. teach a decrease in epoxy foam density (i.e., expansion) and compressive strength as the microsphere concentration is increased (Pg. 18, Lines 17 – 20 & Examples 3.10-3.12 (Table 3) & 9.1). As evidenced by Matsumoto*, the manufacturer of Microsphere® F35D and F36D used by Sajitz et al., Microsphere ®F series microcapsules have an increased expansion ratio (“balloon formation”) as the temperature increases.
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Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the microsphere content through routine experimentation in order to achieve an epoxy resin composition with a desired density (i.e., “expansion”). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 52, as discussed for claim 49 above, Sajitz et al. teach the expansive filler is preferably Matsumoto Microsphere® F35D & F36D). Microsphere® F35D and F36D are the same thermally expandable filler material used by Applicant (specification, pgs. 11 – 12, table, examples K1 – K3). Therefore, the thermally expandable filler agent is chosen such that the epoxy resin composition exhibits substantially no expansion during the thermal curing at 130°C.
Furthermore, Matsumoto*, the manufacturer of Microsphere® F35D and F36D used by Sajitz et al., teach Microsphere ®F series microcapsules have an increased expansion ratio (“balloon formation”) no expansion of the thermally expandable filler agent after the peak balloon formation (expansion) temperature was reached. See chart below.
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It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 54, Shuh et al. do not perform any adhesive strength measurements of their adhesive composition/tape in accordance with the DIN EN 1939:1996 test.
However, Shuh et al. teach the uncured adhesive (before crosslinking) has a peel adhesiveness of at least 1 N/cm (at least 0.1 N/mm) (paragraph [0079]) and working examples of their invention K1 – K9 comprising polyurethane (Desmomelt), Applicant’s claimed epoxy resin, Applicant’s claimed second curing agent, but without Applicant’s claimed first curing agent (paragraphs [0126] & [0130]), yielded uncured adhesive strength values in the range of 2 – 20 N/cm (0.2 – 2 N/mm) (paragraph [0136]). Furthermore, Shuh et al. teach the adhesive composition, such as employment of polyurethanes in the epoxy composition, improved peel adhesions in the uncured state (paragraph [0035]).
Therefore, based on the teachings of Shuh et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the polyurethane content in the adhesive composition through routine experimentation in order to achieve an adhesion strength of at least 0.2 N/mm after the recited pre-cross-linking step. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 55, as noted in the rejection of claim 49 above, Shuh et al. teach the same type of latent curing agent (Dyhard 100S) as Applicant’s preferred embodiment of the second curing agent. Furthermore, Shuh et al. teach the tensile bonding strength, measured as tensile shear test, is at least 15 MPa (paragraph [0080]). Applicant used the same test for tensile strength as Shuh et al. used for tensile shear test (DIN EN 1465). See paragraph [0117] of Shuh et al. and pg. 15 of the specification. Therefore, the second curing agent taught by Shuh et al. is chosen such that the epoxy resin composition exhibits a tensile strength of at least 7.8 MPa after the thermal curing.
With regard to claim 56, as discussed above for claim 49, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the Matsumoto Microsphere® F35D or F36D content through routine experimentation in order to achieve the desired compressive strength (i.e., “compressibility %”) for the desired application of the foamed epoxy composition. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 57, as discussed above for claim 52, as discussed for claim 49 above, Sajitz et al. teach the expansive filler is preferably Matsumoto Microsphere® F35D & F36D). Microsphere® F35D and F36D are the same thermally expandable filler material used by Applicant (specification, pgs. 11 – 12, table, examples K1 – K3). Therefore, due to the fact that the cited prior art (Sajitz et al.) use of the same thermally expandable filler agent as used by Applicant, the epoxy resin composition would inherently exhibits substantially no expansion during the thermal curing at 130°C.
Response to Arguments
With regard to the election/restriction, Applicant argues, “Item 1 of the October 28, 2025 Office Action acknowledges the persuasiveness of Applicant’s traverse of the restriction requirement voiced in the May 9, 2025 Office Action. Yet rather than withdraw the restriction requirement, as would be proper in view of the persuasiveness of Applicant’s traverse, the October 28, 2025 Office Action vaguely asserts that ‘upon further consideration, the prior art references cited below meet the restriction requirement’ and that ‘the restriction requirement is non-final’.
“The preceding citations from the October 28, 2025 Office Action seemingly aim to establish some sort of new restriction requirement(s) in lieu of the successfully traversed restriction requirement based on Friedland et al…In view of the fact that the May 9, 2025 restriction requirement has been persuasively traversed and that no other restriction requirement has been properly presented in lieu thereof. Applicant trusts that the examiner will issue another non-final Office Action either giving consideration to all of claims 36 – 56 or voicing a new, properly formulated restriction requirement detailing the examiner’s justification for their unilateral withdrawal of claims 36 – 48 from consideration” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The action did not establish a new restriction requirement. At the time of the non-final action, as evidenced by the prior art rejection of claim 49 under 35 U.S.C. § 103, Applicant’s claims lacked a special technical feature over the prior art. Therefore, it would not have been proper to withdraw the restriction requirement.
A new restriction requirement was not needed because the deficiency of the restriction requirement was corrected in the non-final action with the citation of a new prior art reference as evidence that Applicant’s claims lacked a special technical feature. The legal requirement for the restriction requirement has been met. Contrary to Applicant’s assertion, the law does not require a new restriction requirement to be mailed to applicant in light of the correction made in the non-final action.
Applicant argues, “As noted in Applicant’s traverse of July 8, 2025, the election requirement voiced in May 9, 2025 Office Action is formally defective by virtue of its failure to employ mandatory language stipulated in 1893.03(d) of the MPEP, in particular as regards use of form paragraph 18.07.02.
“In view of the failure of the October 28, 2025 Office Action to consider this aspect of Applicant’s traverse of July 8, 2025, Applicant trusts that the examiner will issue another non-final Office Action that gives consideration to the (presumably inadvertently) overlooked aspects of Applicant’s traverse of July 8, 2025” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant’s arguments of July 8, 2025 assert that none of form paragraphs 18.07 – 18.07.03 are provided with regard to the species restriction. Applicant is incorrect. Form paragraph 18.07.02 was used on pages 6 – 7 of the restriction requirement mailed May 9, 2025. The discussion of lack of unity under PCT Rule 13.2 using form paragraph 18.07.02 applies to the entire restriction requirement, including the species restriction requirement.
With regard to the election/restriction, Applicant argues, “Further to the above, Applicant notes that the October 29, 2025 Office Action seeks to redefine the May 9, 2025 election requirements in an impermissible manner that would retroactively alter the legal basis posed to Applicant for making their elections.
“For example, the October 28, 2025 Office Action now asserts that May 9, 2025 election requirements between species (a1) and (a2) was not presented as a binary choice for all claims, but only for ‘the claims in which the compressibility of the epoxy resin in the first state is recited.’ While Applicant would welcome such a delimitation of any future election requirements. Applicant trusts the examiner will recognize that no such restrictions were voice in the May 9, 2025 election requirements” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant is overcomplicating the restriction requirement, and therefore the arguments surrounding said species restriction requirement. Let’s go back to Applicant’s argument against the species restriction of species (a1) vs. species (a2) with regard to dependent claims that recite “a first state” exhibits (a1) no compressibility or (a2) at least 30% compressibility.
Applicant argued the office presented (a1) and (a2) as a binary choice for all claims. The Examiner responded to the “all claims” part of Applicant’s argument. The Examiner noted the species restriction applied to only the (dependent) claims in which the subject matter of the species (a1) and (a2) (i.e., different measurable compressibility values for a “first state”) were applicable. This is self-evident in the claims, the restriction requirement of May 9, 2025, and the response to Applicant’s traverse of the restriction requirement in the non-final rejection mailed 10/28/2025.
Considering the fact that Applicant elected Group IV, which does not contain any claim limitations that recite a first state (pre-cross-linking state) exhibiting no compressibility, the species restriction of (a1) vs. (a2) does not apply to the elected group of claims.
With regard to the election/restriction, Applicant argues, “Further to the above, Applicant notes that the October 29, 2025 Office Action seeks to redefine the May 9, 2025 election requirements in an impermissible manner that would retroactively alter the legal basis posed to Applicant for making their elections…Similarly, the October 28, 2025 Office Action now asserts that ‘the first state’ in the May 9, 2025 election requirement should be understood as ‘the tangible object of the epoxy composition in the film under specific conditions’ albeit leaving the reader to speculate what the examiner might mean by ‘specific conditions’ and whether such ‘special conditions’ are a fixed set of conditions or conditions that will depend on and must be gleaned from the language and features of the respective, individual claims” (Remarks, Pgs. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant is overcomplicating the restriction requirement, and therefore the arguments surrounding said species restriction requirement. Let’s go back to Applicant’s argument against the species restriction of species (a1) vs. species (a2) with regard to dependent claims that recite “a first state” exhibits (a1) no compressibility or (a2) at least 30% compressibility.
Applicant argued a recited first state is not a tangible object and therefore not a restrict-able species. However, this is not persuasive because Applicant’s claims include a recitation of the first state that may have no compressibility or at least 30% compressibility. In order for a (first) state of a resin composition to have a particular compressibility property, it must be a tangible object, and therefore an intermediate product, wherein the recited (or implied) second state of claims 36 & 46 must be a final product. Said first state and second state are a direct result of the recited special (thermal) conditions for inducing the recited expansion properties of claims 36 & 46. Thus, the “special set of conditions” discussed in the previous office action were a specific reference to the recited pre-thermal curing conditions of the first state that directly result in the different species of compressibility properties of the dependent claims.
Considering the fact that Applicant elected Group IV, which does not contain any claim limitations that recite a first state (pre-cross-linking state) exhibiting no compressibility, the species restriction of (a1) vs. (a2) does not apply to the elected group of claims.
With regard to the rejection under 35 U.S.C. § 112(a) for pre-cross-linking and compressibility, Applicant argues, “Applicant is appreciative of the examiner’s thoughtful remarks regarding the pre-cross-linking, in particular the open-ended range of compressibility previously recited in claim 49. Amendments to claim 49 are respectfully submitted. Furthermore, the examiner’s attention is directed to the disclosure of original claim 4, at lines 23 – 24 on page 5, and in the penultimate paragraph on page 11” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The rejection is maintained because, as previously discussed, Applicant’s current independent claim 49 contains claim language is limited to the species of “epoxy resin composition [that] exhibits a compressibility…after a pre-cross-linking reaction of the epoxy composition for 10 minutes at room temperature and subsequently for 10 minutes at 90°C.” Applicant’s support for this particular pre-cross-linking method step is based solely on the working examples (species), and therefore does not apply to all embodiments in disclosed in the originally filed specification (genus). Neither Applicant’s original claim 1 or claim 4 recited this particular species of pre-cross-linking reaction conditions for the “not-cured adhesive film.”
Applicant’s claim amendment recites compressibility of 30 – 80%. As previously discussed, Applicant’s working examples, which is the only support Applicant has for the recited pre-crosslinking reaction temperatures and durations, does not have support for the range of more than about 30% compressibility up to 80% compressibility.
With regard to the rejection 35 U.S.C. § 112(a), Applicant argues, “The Office Action asserts that the recitation of adhesiveness after heating at 90°C for 10 minutes is new matter. Applicant respectfully disagrees…
“The examiner is respectfully reminded that claim 49 does not stipulate that measurement of the adhesive strength must occur at 90°C. Instead, claim 49 recites that the epoxy resin composition exhibits a compressibility…and a pressure-sensitive adhesiveness after a pre-cross-linking of the epoxy resin composition for 10 minutes at room temperature and subsequently for 10 minutes at 90°C” (Remarks, Pgs. 9 – 10).
EXAMINER’S RESPONSE: Applicant’s argument is persuasive. The rejection is withdrawn.
With regard to 35 U.S.C. § 112(a), Applicant argues, “The Office Action asserts that the properties of compressibility and expansion recited in claims 49 – 53 only have support based on the species of the epoxy-based adhesive compositions of working examples K1 – K3. Applicant respectfully disagrees…The claimed pre-cross-linking of the epoxy resin composition for 10 minutes at room temperature and subsequently for 10 minutes at 90°C is disclose, without obligatory ties to any particular epoxy resin composition, in the penultimate paragraph on page 11” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The discussion of the specific details of Applicant’s working examples starts on page 10 with a description of the “preferred embodiments” and specific raw materials used in the working examples and ends on page 15 of the specification, which includes the specific pre-cross-linking reaction conditions disclosed on page 11. Therefore, the claimed pre-cross-linking reaction conditions are only tied to the preferred working examples and not all examples of the specification.
With regard to 35 U.S.C. § 112(a), Applicant argues, “As regard to the rejection of claim 50, Applicant’s cancellation of claim 50 renders the rejection thereof moot” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: In light of the cancellation of claim 50, the rejection is withdrawn.
With regard to 35 U.S.C. § 112(a), Applicant argues, “As regards to the specification’s support of the specific embodiments recited in dependent claims 51 and 52. Applicant firmly believes that the disclosure supporting such embodiments, for instance in the table on page 14 and in liens 13 – 15 on page 15, is not so tied to the specific ingredients used in examples K1 – K3 as to preclude claiming such embodiments without reference to the specific ingredients used in examples K1 – K3. In this respect, Applicant notes that, as state in MPEP 2164.01, any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the art to make and used the claim invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. A person of ordinary skill in the art of polymerization chemistry understands the degree of compressibility is directly related to the degree of pre-cross-linking in an epoxy polymer composition, and the degree of pre-cross-linking is affected by the temperature and duration of the pre-cross-linking reaction step. For this reason, it would not be reasonable for person of ordinary skill in the art to assume the specific pre-cross-linking reaction conditions of a first curing agent with an epoxy resin that yielded about 30% compressibility in working examples would also yield a wide range of compressibility percentages as high as about 80% (more than double the degree compressibility) under the same pre-cross-linking conditions, as erroneously recited in claim 1.
Applicant argues the standard for determine whether the specification meets an enablement requirement as ruled by the Supreme Court in Mineral Separation Ltd. v Hyde, 242 U.S. 261, 270 (1916). However, the rejection of claims 51 – 52 under 35 U.S.C. § 112 was based on the presence of new matter in the claims, not for any lack of enablement. Therefore, Applicant’s argument with regard to any question of enablement is not pertinent to the new matter rejection discussed above.
With regard to 35 U.S.C. § 112(a), Applicant argues, “As regards support in the specification of the specific embodiment recited in dependent claim 53, Applicant’s cancellation of dependent claim 53 renders this aspect of this rejection moot” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: In light of the cancellation of claim 53, the previous rejection of claim 53 under 35 U.S.C. § 112(a) is withdrawn.
With regard to 35 U.S.C. § 112(b), Applicant argues, “Applicant’s cancellation of claim 53 renders the rejection thereof moot” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: In light of Applicant’s cancellation of claim 53, the rejection under 35 U.S.C. § 112(b) is withdrawn.
With regard to 35 U.S.C. § 103, Applicant argues, “While paragraph [0054] of Shuh et al. indeed teaches aliphatic amines, secondary amines, dicyandiamide, and anhydrides as curing agents. Applicant recognizes no teachings in Shuh et al. that characterize the aliphatic and/or secondary amines recited in paragraph [0054] as a curing agent that crosslinks at room temperature. Nor does Applicant recognize teachings in Shuh et al. that characterize the dicyandiamide and anhydrides recited in paragraph [0054] as a thermally activatable curing agent” (Remarks, Pg. 12).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s claim 49 does not recite “a curing agent that crosslinks at room temperature.” Furthermore, Applicant’s pre-cross-linking step includes exposing the resin composition to heat at 90°C for 10 minutes, which is significantly higher than room temperature (about 20°C – 25°C).
Second, Applicant’s specification explicitly teaches room temperature aliphatic and/or secondary amines are room temperature curing agents for epoxy resin adhesives (see specification, pg. 10). Therefore, the presence of secondary aliphatic amine curing agents in the epoxy composition taught by Shuh et al. must inherently meet Applicant’s recitation of a first curing agent that is capable of pre-cross-linking an epoxy resin when the composition is used under the conditions recited in claim 49.
Third, as previously discussed, based on the combined teachings of Shuh et al. and Sajitz et al., it would have been obvious to one of ordinary skill in the art to choose an amine-base room temperature curing agent (i.e., “first curing agent”) and Matsumoto Microsphere® F35D or F36D (i.e., “thermally expandable filler”) for achieving timely foaming activation at room temperature that has the benefits of homogeneous foam expansion, preventing damage to the foam, as well as saving cost and time.
Fourth, Shuh et al. teach the same type of second curing agent (Dy Hard 100S) as Applicant’s preferred embodiment disclosed in Applicant’s specification. Therefore, the second curing agent taught by Shuh et al. must inherently have the same properties, i.e. thermally activatable curing agent, as recited in Applicant’s independent claim 49.
Applicant argues, “The Office Action correctly acknowledges that Shuh eta l. fails to teach that the first curing agent and the thermally expandable filler are chosen such that the epoxy
“To bridge the gap between the subject matter of independent claim 49 and the teachings of Shuh et al., the Office Action argues that Shu et al. teaches an adhesive composition comprising an amine compound as a room temperature curing agent and microspheres, which adhesive composition has adhesive properties and temperatures stability at room temperature in the uncured state and which adhesive composition has adhesive properties curing at 180°C for 30 minutes. The Office Action concludes that this would suggest to the PHOSITA that the adhesive composition taught by Shuh et al. exhibits adhesiveness in the entire range of about 23°C to about 180°C, including the claimed conditions of pre-crosslinking after exposure to room temperature for 10 minutes and after exposure to 90°C for 10 minutes. The Office Action’s conclusion, however, rests on mischaracterizations of the actual teachings of Shuh et al.
“As touched upon above, there is no recognizable teaching in Shuh et al. that characterizes amines as a curing agent that crosslinks at room temperature” (Remarks, Pg. 13).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the claim does not recite any particular degree of adhesiveness. There is no suggestion whatsoever that that even the slightest degree of adhesiveness requires an epoxy composition to contain any cross-links.
Second, Shuh et al. teach the composition has adhesives properties at room temperature up to 180°C. Therefore, regardless of Applicant’s opinion regarding the capability of crosslinking by the first curing agent taught by Shuh et al., the limitation requiring the presence of adhesives properties after the epoxy composition is at room temperature for 10 minutes and subsequently for 10 minutes at 90°C is taught by the Shuh et al.
With regard to 35 U.S.C. § 103, Applicant argues, “Sajitz et al. does not teach the PHOSITA to choose an amine-based room temperature curing agent and Matsumoto Microsphere® F35D or F36D for achieving timely foaming activation at room temperature. Instead, Sajitz et al. teaches that an ionic liquid, in particular Ancamine 2914UF, can be used with certain microspheres to achieve foaming times of less than 10 minutes (see page 3, lines 35 – 36, page 12, lines 5 – 8, and Table 1), while demonstrating that the use of other amines, e.g. Ancamine TETA and Ancamine 2636, can result in foam start times well over ten minutes (782 seconds and 2154 second, respectively, for comparative examples 1.3 and 1.4) in, in the case of Jeffamine D230 and Vestamin IPD, no foam at all” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, as discussed above, Applicant’s claims do not recite foaming activation at room temperature, but not after exposure to temperatures higher than room temperature (e.g. 90°C).
Second, based on the teachings of Sajitz et al., it would have been obvious to one of ordinary skill in the art to choose an amine-base room temperature curing agent (i.e., “first curing agent”) and Matsumoto Microsphere® F35D or F36D (i.e., “thermally expandable filler”) for achieving timely foaming activation (within 10 minutes) at room temperature that has the benefits of homogeneous foam expansion, preventing damage to the foam, as well as saving cost and time.
With regard to 35 U.S.C. § 103, Applicant argues, “The Office Action rejections independent claim 52 as being unpatentable over Shuh et al. (US 2016/0326413 A1) in view of Sajitz et al. (WO 2020/037502 A1)” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Claim 52 is not an independent claim. Claim 52 recites “The pressure-sensitive structural adhesive film of claim 49, …”
With regard to the rejection of claim 52 under 35 U.S.C. § 103, Applicant argues, “The Office Action argues that ‘Microsphere ®F series capsules have an increased ratio (‘balloon formation’) [and] no expansion of the thermally expandable filer agent after the peak balloon formation (expansion) temperature was reached’.
“Applicant respectfully notes that this interpretation of the expansion characteristics of Microsphere ®F series microcapsules stands in direct contradiction to the statement made in the final paragraph on page 9 of the Office Action issue on June 7, 2024. That Office Action stated that ‘additional expansion during curing of the thermally activated curing agent at higher temperatures taught by Shuh et al. would be inherent” (Remarks, Pgs. 14 – 15).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the rejection mailed June 7, 2025 was a rejection of the claims filed 12/10/2021. The claims of 12/10/2021 recited a completely different species of Applicant’s invention than current claim 29 and a different curing temperature was recited in the 12/10/2021 claims compared to the current claim 49 of the current set of claims. Claims 1 – 35 of Applicant’s claims have been cancelled. Therefore, the rejection mailed June 7, 2025 in response to said claims are not pertinent to the current set of claims or the current rejection of said claims.
Second, Applicant has failed to demonstrate that a different a different thermally activatable filer was used in their invention for the different embodiments of their invention which claimed two completely different properties of expansion at the curing temperature (claim set filed 12/10/2021 compared to current claim set).
Third, as shown in the chart taught by Sajitz (in the rejection of claim 52 above), the expansion ratio decreases at temperatures higher than the balloon formation. Applicant’s specification teaches the same type of thermally expandable filler (Matsumoto Microsphere® F35D & F36D) as used by Sajitz et al. Therefore, at the same curing temperature, one of ordinary skill in the art would expand the same decrease in the expansion ratio (i.e., no expansion at curing temperature) as claimed by Applicant.
Conclusion
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781