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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/202/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments to claims 1, 6, and 18. Claims 1-7 and 9-26 are pending.
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.
Claims 1-2, 4-7, and 9-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kasemi (WO2017140687, using US version 20190177472).
Regarding Claims 1 and 9,
Kasemi teaches an epoxy resin composition (Abstract) which contains 2,4,6-tris(N,N-dimethylaminomethyl)phenol (Paragraph 71) and salicylic acid (Paragraph 119), with the combination of these two compounds being most preferred (Paragraph 120). Kasemi also teaches that the composition can contain N-benzylethane-1,2-diamine (Paragraph 109) and 1-amino-3-aminomethyl-3,5,5-trimethylcyclohexane (IPDA) (Paragraph 123). Kasemi also teaches that amines such as IPDA can comprise 15-50% of amine hydrogens (Paragraph 155) while N-benzylethane-1,2-diamine may comprise 30-60% of amine hydrogens (Paragraph 154), which allows for usage in the range of 90/10 to 20/80 as required by the instant claim. While Kasemi does not teach the amount of curing accelerator used, Kasemi does teach that the number of groups reactive with epoxy groups to epoxy groups in the composition should be in the range of 0.5-1.5, but preferably between 0.7-1.2 (Paragraph 194). This would set a limit on the amount of accelerator that can be present. Additionally, as the amount of accelerator would increase the curing rate, it would necessarily follow that the amount used would be determined based upon the desired curing rate or curing time. As such, the included amount would constitute a rate-effective variable. It would therefore have been obvious prior to the effective filing date of the instant application to have selected any amount of curing accelerator that afforded the desired curing rate.
While optional, Kasemi teaches the use of other amines such as polytetrahydrofurandiamines (Paragraph 124) and other aliphatic amines such as 4,7-dioxadecane-2,9-diamine (Paragraph 124).
Finally, with regard to the composition consisting essentially of N-benzylethane-1,2-diamine and the optional further amines, the phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). As such, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003). See MPEP 2111.03.III. Because there is no statement in either the claims nor in the specification that define the basic and novel characteristics that would be altered based upon the inclusion of amines other than those listed, the phrase “consisting essentially of” is interpreted to mean “comprising” in this case, which allows for the inclusion of amines other than those listed.
Regarding Claims 2 and 4,
Kasemi teaches that the amine hardeners are separate from the epoxy resin until mixed for use (Paragraphs 244-246) and that some examples do not pre-react the amine with any epoxy (EZ-1, Table 1), meeting the requirements of the instant claims.
Regarding Claim 5,
Kasemi teaches that amines such as IPDA can comprise 15-50% of amine hydrogens (Paragraph 155) while N-benzylethane-1,2-diamine may comprise 30-60% of amine hydrogens (Paragraph 154), which allows for usage in the range of 80/20 to 25/75 as required by the instant claim.
Regarding Claim 6,
Kasemi teaches that the composition also contains amines of the following formula:
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100
240
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Greyscale
in amounts of 15-50% of the total amines (Paragraph 153) and that thinners up to 10% by weight may be used (Paragraph 193), meeting the requirements of the instant claim.
Regarding Claim 7,
Kasemi teaches that amines such as IPDA can comprise up to 50% of the amine hydrogens in the composition (Paragraph 155), meeting the requirements of the instant claim.
Regarding Claims 10 and 19,
Kasemi teaches that the composition has a viscosity of 300-4,000 mPa·s (Paragraph 218), meeting the requirement of the instant claim.
Regarding Claims 11 and 20,
Kasemi is silent on the glass transition temperature of the composition. However, as the composition of Kasemi contains the components as required in the instant claims in similar amounts, it would necessarily follow that it would meet the requirements of the instant claim. "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). See MPEP 2112.01.II.
Regarding Claims 12, 15, 21, and 24
Kasemi teaches that the composition may be used as a potting compound, matrix for fiber composites, sealant, adhesive, or coating (Paragraph 209).
Regarding Claims 13, 16, 22, and 25,
As Kasemi teaches that the composition is useful as a coating (Paragraph 209), it would necessarily follow that a method of application would be used to coat a substrate. It would therefore have been obvious prior to the effective filing date of the instant application to have used an application method to apply the composition to form a coating.
Regarding Claims 14, 17, 23, and 26
Kasemi teaches that the composition may be used as an adhesive (Paragraph 209). It would necessarily follow that a method for its application and bonding of two substrates would be used. It would therefore have been obvious prior to the effective filing date of the instant application to have used an application method to apply the composition and join two parts.
Regarding Claim 18,
Kasemi teaches the components other than the epoxy resin as discussed above in claim 1. Kasemi additionally teaches that the preferred epoxy resins are diglycidyl ethers of bisphenol A or bisphenol F (Paragraph 176).
Regarding Claim 19,
Kasemi teaches the composition has a viscosity of 300-4,000 mPa·s (Paragraph 218), meeting the requirement of the instant claim.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kasemi (WO2017140687, using US version 20190177472) as evidenced by Certificate of Analysis for N-benzylethylamine from 2019 (Sigma-Aldrich).
Regarding Claim 3,
Kasemi teaches the use of N-benzylethane-1,2-diamine, but does not state the purity. However, as evidenced by the certificate of analysis from Sigma Aldrich, the purity of commercially available N-benzylethane-1,2-diamine meets the requirement of the instant claim.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 8-10, the applicant argues that the inclusion of Mannich amine of formula (I) is required by Kasemi and excluded by the amended language of claim 1. The examiner disagrees. The applicant has used the language “consisting essentially of” in the claim construction which, as noted in the rejection, is to be interpreted according to MPEP 2111.03.III and limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original). As such, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined the scope of the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68 USPQ2d 1280, 1283-84 (Fed. Cir. 2003). See MPEP 2111.03.III. While the applicant states that Kasemi does not contemplate its omission to which the examiner agrees, the burden is on the applicant to establish that the inclusion of structures of this type would affect the characteristics of the invention. There does not appear to be an indication in either the claims or the specification that the inclusion of compounds fitting formula I of Kasemi would alter the characteristics of the invention of the instant application and as such, their inclusion would not be prohibited by the claim language. As a result, the rejection stands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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