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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/11/2025, has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5, 7, 9, 12, 13, 14, 15, 17, 20-29 rejected 35 U.S.C. 103 as being unpatentable over Agarwal (US20080188609, herein Agarwal). Amicure UR Product Information Sheet (2022, p. 1-3) is cited as an evidentiary reference.
Regarding Claims 1, Agarwal teaches “adhesive compositions” [0033] comprising “THIOPLAST EPS 350” [0059] which matches the claimed epoxidized polysulfide, and in the range of “0.1 to about 40 weight percent” [0060] lies in the claimed range; “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] which matches the claimed epoxidized oil, in the range of “ 0.1 to about 40 weight percent” [0060] overlaps the claimed range, hence, the ratio range between epoxidized polysulfide and epoxidized oil is 0.1/40 to 40/0.1, encompasses the claimed ratio range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Furthermore, regarding epoxidized polysulfide and epoxidized oil ratio range, the cited prior art does not expressly disclose the claimed ratio. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
In this case, Agarwal discloses “THIOPLAST EPS 350” [0059] and “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] as equally suitable alternatives to one another and therefore recognizes the equivalence of “Other tougheners or impact modifiers” [0059]. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine “THIOPLAST EPS 350” [0059] and “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
Agarwal teaches Epoxy Resin/Core-Shell Rubber Blend2 52.85%, which is KANEKA ACE MX120 (masterbatch of 25 weight % nano-sized core-shell rubber in a diglycidyl ether of bisphenol A matrix; Kaneka Corporation), [Example 1; 0084], wherein, the epoxy component is diglycidyl ether of bisphenol A matrix and the weight fraction is 52.85%x(1-25%)=39.64%, which lies in the claimed range and reads on the additional epoxy-containing component.
Regarding Claim 5, Agarwal teaches “castor oil; HELOXY 505” [0059] reads on the epoxidized castor oil.
Regarding Claims 7, 12, 15, 17, Agarwal teaches “KANEKA ACE MX” [0084] reads on the elastomeric particles; “latent curing agent” [0078] “8 weight percent curing agent” [0070] lies in the claimed range; “accelerator” [0081]; 0.28% [0084] lies in the claimed range; “filler; 10 weight percent” [0071] lies in the claimed range.
Regarding Claim 9, Agarwal teaches “KANEKA ACE MX” [0084] reads on the elastomeric particles, in the concentration of 52.58%x25%=13.15% [0084, example 1] lies in the claimed range.
Regarding Claim 14, Agarwal teaches “AMICURE CG1200 (Air Products)” [Example 1; 0084], which is non-encapsulated latent curing agent. (See: Amicure UR Product Information Sheet (2022, p. 1-3) cited as an evidentiary reference in form 892 as NPL)
Regarding Claims 20, 21, 26, Agarwal teaches “composition is especially useful for bonding substrates having surfaces contaminated with oily substances, as good adhesion is attained despite such contamination.” [0077] which indicates the coating composition applied to the oily surface and only the non-contaminated surface part will be coated.
Regarding Claims 22-23, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the Agarwal teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process as the composition is cured [0018] taught by Agarwal. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. lap shear strength, displacement at failure, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claims 24, 25, Agarwal teaches “the adhesive is applied to one or both of the substrates to be joined. The substrates are contacted such that the adhesive is located between the substrates to be bonded together.” [0078] which indicates the claimed dual substrates bonded by the adhesive composition, and “composition is especially useful for bonding substrates having surfaces contaminated with oily substances, as good adhesion is attained despite such contamination.” [0077]
Regarding Claim 27, Agarwal teaches “curing preferably takes place at a temperature above 150° C” [0081] which lies in the claimed range.
Regarding Claim 28, Agarwal teaches “accelerator in the form of so-called accelerated dicyandiamides in finely ground form” [0069] indicates solid form.
Regarding Claim 29, Agarwal teaches “p-chlorophenyl-N,N-dimethylurea (monuron)” [0069] which is isocyanate-blocked amine.
Claim 3 is rejected 35 U.S.C. 103 as being unpatentable over Agarwal (US20080188609, herein Agarwal) as applied to claim 1 and in the further view of Suga (US20140336340, herein Suga).
Regarding Claim 3, Agarwal does not explicitly teach epoxidized polysulfide comprises a block copolymer; however, Suga teaches “polysulfide polymers having an epoxy group at the terminal (trade names “FLEP-60” manufactured by Toray Fine Chemicals Co., Ltd.)” [0030] matches the claimed block polymer “FLEP-60” [Instant application; P3, 0030]. Agarwal and Suga are both considered to be analogous to the claimed invention because they are in the same field of epoxy based curable resin composition development toward adhesion application. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to select FLEP-60 as the epoxidized polysulfide in Agarwal’s composition, as it is recognized by Suga as being suitable for use in this capacity in similar adhesive compositions with similar end uses.
It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use. See MPEP 2144.07.
Claim 11 is rejected 35 U.S.C. 103 as being unpatentable over Agarwal (US20080188609, herein Agarwal) as applied to claim 7 and in the further view of Liang (US20130146816, herein Liang).
Regarding Claim 11, Agarwal teaches “the latent curing agent is not yet activated” [0079], but Agarwal does not explicitly teach the wherein the latent curing agent and/or the accelerator is encapsulated. However, Liang teaches “microencapsulated accelerators” [0024. Agarwal and Liang are both considered to be analogous to the claimed invention because they are in the same field of epoxy based liquid adhesive resin composition for the packaging of the electronic parts. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to select “microencapsulated accelerators” [0024] as the encapsulated accelerator in Agarwal’s composition, as it is recognized by Liang as being suitable for use in this in “epoxy composition with improved curing characteristics for high speed, automatic electronic packaging or device connection applications such as bonding with an ACF (isotropic Conductive Film)” [0044] as taught by Liang, in similar adhesive compositions with similar end uses of “adhesives in electronics for bonding components to printed circuit boards” [0082] as taught by Agarwal.
Response to Arguments
Applicant's arguments filed 9/11/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that Agarwal does not disclose the co-presence of epoxidized polysulfide (EPS) and epoxidized oil (EO) in a ratio of 7.5:1 to 1:1. Furthermore, Agarwal does not disclose the specified weight-percent ranges relative to the entire adhesive composition. Nor does Agarwal recognize that when EPS and EO are combined in excess of -60 wt% of the adhesive composition, the system becomes too flexible, degrading structural performance (e.g., lap shear strength)“ is not persuasive.
In this case, the cited prior art does not expressly disclose the claimed ratio. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
Furthermore, Agarwal discloses “THIOPLAST EPS 350” [0059] and “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] as equally suitable alternatives to one another and therefore recognizes the equivalence of “Other tougheners or impact modifiers” [0059]. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine “THIOPLAST EPS 350” [0059] and “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This 1:1 ratio falls within the claimed ratio.
The declaration under 37 CFR 1.132 filed in 9/11/2025 is insufficient to overcome the rejection of claim 1 based upon the rejection of claim 1 as set forth in the last Office action because:
First, the argument is still insufficient to overcome the fact that the data which is not commensurate in scope with the claims, hence, are insufficient to establish non-obviousness. Claim 1 is open to all epoxidized polysulfides and all epoxidized oils. However, these examples only show data for one species of epoxidized polysulfide and epoxidized oil, namely FLEP-60 and Heloxy modifier 505. There is also only one example C including both of these components, and they are present in a weight ratio of 4.888:1. Neither the materials nor the ratio in the examples are reasonably commensurate in scope with the breadth of the claims and therefore cannot be relied upon to establish non-obviousness.
Second, the applicant overlooked the prior art, in fact, Agarwal teaches “adhesive compositions” [0033] comprising “THIOPLAST EPS 350” [0059] which matches the claimed epoxidized polysulfide, and in the range of “0.1 to about 40 weight percent” [0060] lies in the claimed range; “hydroxyl-containing triglycerides (e.g., castor oil); sold under the tradename HELOXY 505” [0059] which matches the claimed epoxidized oil, in the range of “ 0.1 to about 40 weight percent” [0060] overlaps the claimed range, hence, the EPS and EO combination is 0.2 to 80% which encompasses limit of the combination of EPS and EO is less than 60%. Hence, Agarwal does not teach away from the instant application.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767