DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 8, 2025 has been entered.
Response to Arguments
Applicant's arguments filed September 8, 2025 have been fully considered but they are not persuasive.
A) Applicant’s argument that Beck et al. does not teach three of the different claimed components present in both the A and B component is not persuasive. Beck et al. teaches metal hydroxides and hollow glass spheres can be present (para. 57-58) and teaches that they can be in both parts of the two part composition (para. 100). More than one metal hydroxide can be used since the reference teaches “metal hydroxides” instead of “a metal hydroxide”.
B) Applicant’s argument that Beck et al. does not disclose density and viscosity as potential guidelines for selected the different materials for each component is not persuasive. The Court in KSR stated that it is an error to look only to the particular problem the patentee was trying to solve. The problem motivating the patentee may be only one of many addressed by the patent’s subject matter and a person having ordinary skill in the art would not be led only to those elements of the prior art designed to solve the same problem (MPEP 2141 II A2).
C) Applicant’s argument that Beck et al. teaches many filler options, which is allegedly insufficient teaching to arrive at the claims is not persuasive. The prior art’s disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit or otherwise discourage the solution claimed (MPEP 2141.02 VI).
D) Applicant’s argument that Beck et al. does not provide suggestions for selecting fillers with flame retardancy, viscosity and/or density characteristics in mind is not persuasive. All properties of each embodiment need not be disclosed in a prior art reference for the reference to still positively teach the embodiment. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II).
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, 7-18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Elgimiabi et al. (EP 2 818 490) in view of Beck et al. (US 2015/0284563).
Regarding claim 1: Elgimiabi et al. teaches a two-component system (para. 23) comprising a first component of one or more curable polymers (para. 17) and a second component comprising a curing agent/hardener (para. 21) and comprising a metal hydroxide (para. 48), as well as hollow glass microspheres (para. 44). The two-component system is separated from each other, since when the resin and hardener mix, they begin to cure at room temperature (para. 23).
Elgimiabi et al. does not teach that each of the first component and the second component comprise three or more materials from the selected list. However, Beck et al. teaches a similar two-part epoxy composition (abstract) comprising metal hydroxides and hollow glass spheres (para. 57-58) where the fillers can be in both of the two components (para. 100). The “s” on “metal hydroxides” implies more than one metal hydroxide can be present. Elgimiabi et al. and Beck et al. are analogous art since they are both concerned with the same field of endeavor, namely two-part epoxy compositions. At the time of the invention a person having ordinary skill in the art would have found it obvious to include the flame retardant material of Elgimiabi et al. in both components, as in Beck et al. and would have been motivated to do so to form a more homogenous final product.
Regarding claim 2: Elgimiabi et al. teaches the compositions are extrudable pastes (para. 60).
Regarding claims 3 and 4: Elgimiabi et al. teaches the density of the composition can be in a range of 0.5-0.8 g/cm3 (para. 47), which overlaps each of the components claimed range, and overlaps the difference in relative density of each component.
Regarding claim 5: Elgimiabi et al. teaches the compositions are extrudable pastes (para. 60).
Regarding claims 7 and 8: Elgimiabi et al. does not teach foaming or blowing agents.
Regarding claims 9 and 10: Elgimiabi et al. teaches 10-70 percent by weight of the epoxy resin in the composition (para. 19), which overlaps the claimed range.
Regarding claim 11: Elgimiabi et al. teaches liquid epoxy resins such as diglycidyl ether of bisphenol A (para. 17-18).
Regarding claim 12: Elgimiabi et al. teaches an epoxy equivalent weight of 150-180 g/eq (para. 17), which overlaps the claimed range.
Regarding claim 13: Elgimiabi et al. teaches 10-70 percent by weight of the epoxy resin in the composition (para. 19), which overlaps the claimed range.
Regarding claim 14: Elgimiabi et al. teaches epoxy phenol novolac resins (para. 76).
Regarding claim 15: Elgimiabi et al. teaches an epoxy equivalent weight of 150-180 g/eq (para. 17), which overlaps the claimed range.
Regarding claim 16: Elgimiabi et al. teaches 10-70 percent by weight of the epoxy resin in the composition (para. 19), which overlaps the claimed range.
Regarding claim 17: Elgimiabi et al. teaches a curing agent/hardener (para. 21).
Regarding claim 18: Elgimiabi et al. teaches 0.5-20 wt% curing agent (para. 31), which overlaps the claimed range.
Regarding claim 20: Elgimiabi et al. teaches an aliphatic amine having the structure
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107
248
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Greyscale
(para. 31), which is ethylene-1,2-diamine when R1, R2, and R4 is hydrogen, R3 is a hydrocarbon/ethylene and n is 1
Regarding claim 21: Elgimiabi et al. teaches a polyamidoimidazoline curing agent (para. 27, 30).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Elgimiabi et al. (EP 2 818 490) in view of Beck et al. (US 2015/0284563) as applied to claim 5 set forth above and in view of Franzoi et al. (US 2013/0171407).
Regarding claim 6: Elgimiabi et al. teaches the basic claimed composition as set forth above. Not disclosed is the viscosity. However, Franzoi et al. teaches the viscosity of at least about 200 Pas (para. 23), which overlaps the claimed range. Elgimiabi et al. and Franzoi et al. are analogous art since they are both concerned with the same field of endeavor, namely adhesives for cavities. At the time of the invention a person having ordinary skill in the art would have found it obvious to formulate the composition of Elgimiabi et al. with the viscosity of Franzoi et al. and would have been motivated to do so for workability.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/
Primary Examiner, Art Unit 1767