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 .
Response to Arguments
In their response the applicants amended independent claims to require the hardener to be cycloaliphatic amine. The applicants argued that office action utilized Haji and Mizuki to meet the hardener limitation. This statement is not exactly correct.
Haji was utilized to provide a better recitation of the core shell particle, specifically its glass transition temperature.
Mizuno was utilized to reject claim 6, which recited a very specific aniline type hardener. Mizuno was not disclosed to teach a generic amine hardener.
Generic hardeners such as cycloaliphatic amines are taught by Nguyen [0042]. Consequently, the rejection of record are restated to reflect the amendment.
Per applicant’s request Double Patenting rejection will be held until allowable subject matter has been identified.
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 1-17 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.
Applicants amended claims 1 and 7 to include limitation where the hardener has to be a cycloaliphatic amine.
Instant specification [0066] discloses amine hardeners as aromatic amines, cyclic amines, aliphatic amines, alkyl amines and polyether amines. Following paragraphs starting [0067] provide specific examples of the hardeners that can be utilized in the instant invention. While cycloaliphatic amines may be sub-genus or either cyclic amines or aliphatic amines, cycloaliphatic amines are not disclosed as possible group and are not taught with sufficient specificity to have written description support.
All dependent claims inherit the deficiencies of independent claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claims 1 and 7 were amended to require the hardener to be cycloaliphatic amine. Dependent claims 6 and 9 list 4,4'-methylene-bis-(3-chloro-2,6-diethyl-aniline) as a hardener which is not a cycloaliphatic amine. Claim 9 additionally recites 0-75 parts of aromatic amine or aliphatic amine. Neither one is cycloaliphatic amine.
Claimed aniline compound has central methylene bridge connecting two aromatic rings. Aniline comprises unsaturated aromatic moiety. Cycloaliphatic amines have amine group attached to saturated cyclic hydrocarbon ring.
Consequently instant claims 6 and 9 fail to further narrow the scope of instant claims 1 and 7.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-5, 7, 8, 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US 2015/0240042) in view of Hajji (WO 2019/012052).
Nguyen discloses high modulus fiber reinforced polymer composite. Nguyen teaches that the fiber reinforced composite has to have durable bonds because it can be subjected to environmental and/or hostile conditions [0003]. High modulus fibers are carbon fibers with high tensile modulus that are used in components under rotation, bending, torsion loads or various thermal conditions [0008]. The composition is utilized to make prepreg [0014].
With respect to claim 1, comprising thermosetting resin, thermoplastic resin and (polyether sulfone) and core shell rubber article [0090 Table]. Nguyen also teaches addition or toughening agents/fillers which include core-shell particles. The core shell particle of Nguyen is Kane Ace MX416 which as depicted by company’s website and further evidenced in [0057] pf cited EP document is in fact an impact modified particle with crosslinked rubber core.
With respect to the amounts of the toughener per examples 17 and 18 of Nguyen (page 14), core shell particle is utilized in amount of 5% by weight and thermoplastic polyether sulfone is utilized in 6% by weight. Overall content of toughener is 11% by weight.
Nguyen discloses hardeners which include cycloaliphatic amine hardeners [0042] as well as aromatic amines.
Nguyen discloses core shell particles as additive to improve impact resistance but fails to disclose specifics regarding to glass transition temperatures.
Hajji discloses multistage particles that are utilized as tougheners and impact modifiers in an epoxy compositions for prepreg [0010]. Hajji teaches that utilizing usual core-shell particles are not easy to disperse to obtain homogeneous particle distribution and good homogeneous dispersion is required to obtain satisfactory impact performance [0013-0015]. Hajji teaches that multistage polymers overcome these challenges.
Hajji discloses a multistage particle having three layers. First layer A has glass transition temperature of less than 10oC, second stage B has a glass transition temperature of at least 60oC and third stage C has glass transition temperature of at least 30oC. In accordance with claim interpretation above Hajji discloses at least one (reads on two layers) layer be having temperature over 30oC.
The core of the multistage polymer of Hajji can be made from rubber such as isoprene or butadiene, which is also the type of the core disclosed in Nguyen (rubber) [0073]. Layers B and C of Hajji comprise acrylates [0078] which are compatible with epoxy and wherein Nguyen also discloses acrylate. Hajji teaches the core made of rubber such as polybutadiene and shell made of acrylic polymers which have functional groups and therefore affinity to epoxy matrix resin
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art to utilize multistage polymer of Hajji in the teachings of Nguyen. Using multistage polymer of Hajji would improve dispersion of the filler which in turn will provide better impact resistance, which is a properties required by both references.
With respect to claims 2 and 3, Nguyen discloses in Table [0090] diepoxies and tetra-epoxy [0040] and include combination of the epoxides as well.
With respect to claim 4, Nguyen teaches that in order to achieve better modulus the thermosetting resin may be a combination of epoxy and benzoxazine [0040].
With respect to claim 5, Nguyen teaches using thermoplastic polymer, preferred being polyether sulfones and polyetherimides [0054] [Table 0090].
With respect to claims 7 and 8, thermoplastic additive (polyether sulfone) is utilized in the most preferred range of 5-35 wt.% [0052], impact modifiers (core shell) are utilized up to 30 wt.% [0062], thermosetting resin is used in 50-70 wt.% [0040], curing agents (hardeners) are used up to 75 wt.% [0045].
With respect to claim 10, Nguyen discloses fiber reinforced composite.
With respect to claim 11, Nguyen discloses reinforcing fibers. Fibers can be polymer fibers such as aramid, silicon carbide fibers, alumina fibers, boron fibers, glass fibers, carbon fibers and the like [0064].
With respect to claim 12, based on the amounts of all components combined, examples 5 and 10 as well as comparative example 6 disclose fiber content of 29 wt.% based on the amounts depicted in Tables. (Comparative examples can also be utilized as prior art because they constitute a published record, which does not have to be better. Instant invention has to be different).
With respect to claims 13, 14, 16 and 17, fibers were brought into contact with the composition which infuses in between the fibers [0076] and cured by using heat at a temperature of 180oC or less [0077]. Vacuum is applied using autoclave, vacuum bag or pressure press to facilitate infusion of the composition between fibers. Examples further disclose placing the composition on a substrate and transferring the composition onto a fiber which results in coating the fiber component. All these processes result in forming fiber reinforced composite. Without forming a prepreg the composition may be directly applied to reinforcing fibers in a mold, composition can be injected to infuse the fibers through application of vacuum [0080-0082]. Examples discloses mixing the composition and cooling it to 65oC at which point the curing agent and accelerator were added and composition would begin to cure. The mixture was agitated for 1 hour when discharged. Mixture was poured into a mold, heated to 180oC for final cure. The composition was allowed to dwell at 180oC for two hours which meets the post curing operation required by instant claim 17. Final cure of the adhesive occurs when partial cure reaches approximately 20% [0077] and is held int final cure condition until cure reaches 80%, then vacuum is applied.
With respect to claim 15, the composite of Nguyen is utilized as a structural material in spacecraft and aircraft which meet the limitation of aerospace.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen (US 2015/0240042) in view of Hajji (WO 2019/012052) as applied to claims 1-5, 7, 8, 10-17 above, and further in view of Neegan (US 2019/0127514).
Discussion of Nguyen from paragraph 1 of this office action is incorporated here by reference. Nguyen teaches the hardener in amount of up to 75 parts by weight, wherein hardener comprises a nitrogen bearing group and amine group such as aminobenzamide [0046]. Nguyen utilizes these hardeners to obtain high modulus composite, however, one of ordinary skill in the art would understand that other hardeners can also achieve the same purpose.
Neegan discloses fiber reinforced epoxy composite which comprises core shell rubber particles as for impact resistance (Abstract) which composites are obtained via RTM or VaRTM [0006]. The composition utilizes amine curing agent (Abstract).
With respect to claim 6, suitable curing agent is MCDEA or 4,4’methylene-bis-(3-chloro-2,6-diethylaniline).
With respect to claim 9, Nguyen discloses use of curing agents in amount of up to 75 parts by weight. Since aromatic amine can be used in 0 wt.% its amount is viewed as optional.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize curing agent of Neegan in the teachings Nguyen and still obtain the claimed invention because Nguyen teaches curing agents that contain amine group. One of ordinary skill in the art would also know that there are advantages associated with use MCDEA. Specifically, MCDEA as a highly effective curing agent for epoxies will enhance both mechanical and dynamic properties of the composition. MCDEA is also easy to process because of its low melting point.
Claims 1-5, 7, 8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuki (US 2013/0202873).
With respect to claims 1 and 2, Mizuki discloses epoxy resin composition for fiber reinforced composite comprising (see examples 32 and 33 Table 5):
Epoxy resin A’ and B’
Core Shell rubber particles MX416 in amount of 6 %
Thermoplastic resin F’
Curing agent, which is multifunctional epoxy compound which include cycloaliphatic amines based on cyclohexane [0128]. Specifically, multifunctional compounds are utilized by Mizuki to crosslink (harden) the epoxy resin [0130]. Other curing agents include polyamines [0153
Wherein MX416 is Styrene-butadiene- methyl methacrylate rubber having particle size of 10 nm and produced by Kane Ace [0027]. As defined by Mizuki in [0085] core shell particles are produced by growing dissimilar polymer on the surface of crosslinked rubber particles. Examples of other suitable core shell particles are listed in [0086-0088]. Claim 9 further states that the elastomeric component has a block with glass transition temperature of less than 10oC. The only information available for MX 416 by Adeka is the glass transition of the core is -10oC Tg of PMMA shell is not disclosed. However other tradename in [0087] include Polaroid EXL-2611 which have polybutadiene core having glass transition temperature of -85oC and PMMA shell having glass transition temperature of 100oC. Stafiloid AC-3355 has acrylic rubber core having Tg below 0oC (as low ass -100oC) and shell Tg of approximately 90oC. All having PMMA core with Tg above required 30oC. See also [0163-0165].
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to use CSR particles as the elastomeric component such as those mentioned above and thereby obtain the claimed invention which would meet the instant invention. Specifically, the glass transition temperature of crosslinked core has to be low enough to be suitable as impact modifier while shell enveloping the core has functionality that is compatible or reactive with the matrix epoxy resin.
With respect to claim 3, epoxy resin can be trifunctional resin A’ [0035] and difunctional resin B1[0036]. Epoxy of Mizuki is mixture of the two [0111] and monofunctional epoxy [01113-0114]. With respect to claim 4, Mizuki teaches use of benzoxazine resin which can be utilized in combination with the epoxy resin [0131].
With respect to claim 5, Mizuki discloses that thermoplastic resin can be dissolved in epoxy [0188] the preferred embodiment names polyether sulfone due to its excellent heat resistance [0189].
With respect to claims 7 and 8, based on the content of examples 32 and 33 (Table 5) for polymers and curing agents, normalizing the composition to 100%: total epoxy content is 56%, CSR rubber is 3%, PES is 11%, curing agent 1 is 5%, curing agent 2 is 22%. Please also note that in his specification, PES can be utilized in a range of 2-40% [0191], Epoxy resin is utilized in amount of 30-70% [0152].
With respect to claims 10 and 11, Mizuki discloses composition for fiber reinforced composites, wherein fiber, which include carbon fibers, glass fibers, graphite fibers, silicon carbide fibers, boron fibers, alumina fiber and the like [0096].
With respect to claims 12-17, article of Mizuki is a prepreg. According to Mizuki’s claims 20-24 the prepreg comprises fiber and has industrial applicability in aerospace industry [0296] wherein fibers are impregnated with the epoxy composition [0221]. Mizuki teaches that when making prepreg the epoxy composition has to have appropriate viscosity at 80oC to properly impregnate the fiber [0090] and the content of the epoxy resin when making the prepreg has to be 30-50 parts to ensure proper adhesion between polymer and fiber can be utilized in amount of 25-50parts per 100 parts of epoxy resin [0124]. According to working example 13, prepregs are formed by impregnating the fiber with epoxy at 100oC [0290]. Curing temperatures include 150oC [0284] and 180oC [0286] depending on the method.
By definition RIM process involves injecting liquid resin and hardener into fibers arranged in a mold. Mizuki teaches this in [0003 and 0221].
By definition VaRTM involves infusing liquid epoxy into fiber layup under vacuum which is also utilized by Mizuki [0281]
Claims 6, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuki (US 2013/0202873) as applied to claims 1-5, 7, 8, 10 and 11 above, and further in view of Neegan (US 2019/0127514).
Discussion of Mizuki from paragraph 3 of this office action is incorporated here by reference. Mizuki discloses aromatic amine containing curing agent in amount of 2-15 parts by weight [0030, 0039, 0089] in combination with another curing agent.
While anilines are disclosed in [0116-0117] aliphatic amines are listed in a generic manner [0153].
Neegan discloses fiber reinforced epoxy composite which comprises core shell rubber particles as for impact resistance (Abstract) which composites are obtained via RTM or VaRTM [0006] which also meet the limitations of claims 16 and 17. The composition utilizes amine curing agent (Abstract), wherein amine curing agents are also disclosed in Mizuki.
With respect to claim 6 and 9, suitable curing agent is MCDEA or 4,4’methylene-bis-(3-chloro-2,6-diethylaniline). MCDEA is an aliphatic amine curing agent and it can be utilized up to the amounts disclosed in Mizuki, who already teaches anilines that are also known as curing agents.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize curing agent of Neegan in the teachings Nguyen and still obtain the claimed invention because Mizuki teaches curing agents that contain amine group. One of ordinary skill in the art would also know that there are advantages associated with use MCDEA. Specifically, MCDEA as a highly effective curing agent for epoxies will enhance both mechanical and dynamic properties of the composition. MCDEA is also easy to process because of its low melting point.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-3, 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5-10 of co-pending Application No. 18/021039 (‘039). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 and 7 of copending application ‘039 discloses composition comprising:
50-95 wt.% of thermoset resin
1-15 wt.% of toughener comprising multistage polymer and a thermoplastic toughener
5-50 wt.% hardener
While claim 1 of ‘039 does not specify the glass transition temperature required by instant claims the double patenting rejection is still appropriate for two reasons: Reason 1, is that the multistage polymer of ‘039 is broader in scope and encompasses any glass transition temperature. Reason 2, per MPEP 804 specification can be used as a dictionary to learn the definition or a meaning of the term used in the claims. As such multistage polymer of ‘039 is the same as that of the instant invention. Additionally claim 1 of the instant invention is open to any hardener including that claim in ‘039. As such the limitations of instant claims 1 and 7 are met.
Claim 2 of ‘039 teaches that thermosetting resin is an epoxy which meets the limitation of instant claim 2.
Claim 3 of ‘039 teaches that epoxy resin includes difunctional epoxy resin, trifunctional epoxy resin, a tetrafunctional epoxy resin or mixtures thereof. This meets the limitations of instant claim 3.
Claim 4 of ‘039 teaches that the hardener is 4,4’methylene-bis-(3-chloro-2,6-diethylaniline), which meets the limitation of instant claim 6.
Claims 5 and 10 of ‘039 states that the thermoplastic toughener is polyether sulfone. This meets the limitation of instant claim 5.
Claims 6 and 9 of ‘039 discloses aromatic amine curing agent which meets the limitation of instant claim 9.
Claim 8 of ‘039 discloses amount of multistage polymer to be 5-10 wt. % and thermoplastic toughener in amount of 0.1-20 wt.% which encompasses amounts of instant claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 March 16, 2026