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 .
Election/Restrictions
Claims 11-14, 17 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 2, 4-10 and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gan et al. (US 20130184378) in view of Mardis et al. (GB 2107294).
Gan et al. teach a composition comprising the epoxy product of reacting a BPA diglycidyl ether with the same amino alcohol applicants are using in their examples (see page 2 and Ex. 1, page 6, ¶ 75), wherein the high molecular epoxy resin product has a molecular weight of from about 300 Da to about 10,000 Da (¶ 36), in combination with an additive such as a flow control agent. (page 5, ¶ 65).
Gan et al. differ from the claimed invention in that they do not identify the flow control agent as an organically modified silicate. However, it is known in the art to use organically modified silicates as the flow control agent for epoxy resins, for the purpose of producing a thixotropic flow behavior with high viscosity at a low shear rate in such systems, such as taught by Mardis et al. (See page 1, lines 3-11 and 48-52)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to use the organically modified silicates (clay) of Mardis et al. as the flow control agent in the epoxy resin material of Gan et al., in order to obtain the advantages taught by Mardis et al., motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
While applicant argues that Gan et al. does not teach the average molecular weight for the epoxy resin, as noted above, in ¶ 36, Gan et al. teaches that the molecular weight of the epoxy resin product ranges from about 300 Da to about 10,000 Da , which is consistent with the present claims.
In response to applicant's argument that the combination of Gan et al. and Mardis et al. fail to recognize improved sag resistance from the composition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
It is known in the art to use organically modified silicates as low control agents for epoxy resins, such as Gan et al., for the purpose of producing a thixotropic flow behavior with high viscosity at a low shear rate in such systems, such as taught by Mardis et al. (See page 1, lines 3-11 and 48-52)
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
