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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/220583 (hereinafter, HANLEY)in view of OTAKA et al. (U.S. Patent No. 5,326,548, hereinafter OTAKA) in further view of LAKE, JR. et al. (U.S. Publication No. 2014/0323632, hereinafter, LAKE, JR.).
Regarding claims 1, 6-8, 11, and 12, HANLEY teaches thermosetting epoxy resin composition comprising 17.5-30 weight% of at least one liquid epoxy resin A having on average more than one epoxide group per molecule; 1-5 weight% of at least one hardener B for epoxy resins; 0-2 weight% of at least one accelerator C; 5-12 weight% of at least one polymeric impact modifier D; 0.1-3 weight% of at least one physical or chemical blowing agent H (which reads on component E of the present invention); 15-55 weight% of at least one filler, based on the total weight of the epoxy resin composition (p. 17, line 15 to p. 18, line 5). The thermosetting epoxy resin composition for reinforcing of heat-stable materials (i.e., structural components) (p. 22, lines 1-4). The thermosetting epoxy resin is in the form of article having a three-dimensional extent (i.e., sheet-like form) including form of strips or sheets or patches (p. 21, lines 7-10). The strips (articles) have a thickness of 20-500 mm (length), 2-15 mm (width), 1-3 mm (thickness) (p. 21, lines 16-20).
However, HANLEY does not teach a fibrous anhydrous magnesium oxysulfate MOS.
OTAKA teaches the preparation of a fibrous anhydrous magnesium oxysulfate having a rational formula MgSO4.5Mg(OH)2 (Abstract; Col. 1, line 67), for example MgSO4.5Mg(OH)2.3H2O and MgSO4.5Mg(OH)2.8H2O which has a diameter of 0.07 to 7 µm (Col. 2, line 65 to Col. 3, line 3; Col. 3, lines 52-58); Claim 3) and length of up to 1000 µm (Claim 2). The anhydrous magnesium oxysulfate can be utilized as an additive for a resin, filler or filter medium due to the fibrous structure thereof (Col. 1, lines 9-13).
Given HANLEY teaches the thermosetting epoxy resin composition comprises 15-55 weight% of at least one filler (p. 17, lines 11-13), it would have been obvious to a person of ordinary skill in the art to have provided the fibrous anhydrous magnesium oxysulfate of OTAKA for the benefit of utilizing the compound as an additive for a resin or filler as taught by OTAKA.
However, the combined disclosures of HANLEY and OTAKA do not teach 2-35 weight% of a fibrous anhydrous magnesium oxysulfate MOS and wherein the thermosetting epoxy resin composition has a needle penetration value (in 0.1 mm) of 20-80 using a total load (weight of the needle and related parts) of 100 g for 5 second with a needle thickness of 1 mm at 23oC.
LAKE, JR. teaches an additive composition comprises a plurality of first particles and a metal hydroxide compound. The first particles comprise magnesium oxysulfate compound including 5Mg(OH)2.MgSO4.3H20 (Abstract; [0006-0007]). The particles have a length of about 1 µm or more to about 100 µm or less [0009], therefore the particles have the same dimension as fibers. The weight of the first particles present in the additive composition is about 20% to about 95% or more of the combined total weight of the first particles and metal hydroxide compound present in the additive composition [0013].
The polymer composition comprises an additive composition and one or more polymers such as thermoplastic or thermoset which includes epoxy resin [0016-0017]. The polymer composition is used for producing articles intended for applications that require flame resistance (e.g., coatings for wire and cable applications, roofing and siding used in building and construction industries) [0052].
Given HANLEY teaches thermosetting epoxy resin composition comprising fillers and OTAKA teaches fibrous anhydrous magnesium oxysulfate as an additive for resins, it would have been obvious to a person of ordinary skill in the art to have provided the magnesium oxysulfate compound of LAKE, JR. with the combined disclosures of HANLEY and OTAKA for the benefit of utilizing the magnesium oxysulfate as an additive for plastic (i.e., thermoplastic and thermoset) in order to impart improved levels of flame retardance in manufactured products (i.e., coatings for wire and cable applications, roofing and siding used in building and construction industries) as taught by LAKE,JR.
With regard to the thermosetting epoxy resin composition comprises 2-35 weight% of a fibrous anhydrous magnesium oxysulfate, LAKE, JR. teaches he weight of the first particles present in the additive composition is about 20% to about 95% or more of the combined total weight of the first particles and metal hydroxide compound present in the additive composition [0013], it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
With regard to the claim limitations, wherein the thermosetting epoxy resin composition has a needle penetration value (in 0.1 mm) of 20-80 using a total load (weight of the needle and related parts) of 100 g for 5 second with a needle thickness of 1 mm at 23oC, the examiner takes the position that the combination of HANLEY, OTAKA, and LAKE, JR. would intrinsically possess the claimed properties because the combined disclosures teach the same components within the claimed range. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 2, HANLEY teaches the thermosetting epoxy resin composition comprises at least one hardener B for epoxy resins which is selected from dicyandiamides, guanamines, guanidines, aminoguanidines, and derivatives thereof, and also imidazoles, imidazoles and amine complexes (p. 7 , lines 13-19).
Regarding claim 3, HANLEY teaches the thermosetting epoxy resin composition comprises at least one accelerator C which includes substituted ureas (p. 7, lines 29-34).
Regarding claim 4, HANLEY teaches the thermosetting epoxy resin composition comprises impact modifier D is a terminally blocked polyurethane prepolymer (p. 8, lines 26-33).
Regarding claim 5, with regard to the thermosetting epoxy resin composition comprises 5-30 weight% or 7.5-25 weight% of a fibrous anhydrous magnesium oxysulfate, LAKE, JR. teaches he weight of the first particles present in the additive composition is about 20% to about 95% or more of the combined total weight of the first particles and metal hydroxide compound present in the additive composition [0013] (which is within the claimed range), it would have been obvious to one of ordinary skill in the art to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MFEP 2131.03 and MPEP 2144.05I.
Regarding claims 9 and 10, the examiner takes the position that the combination of HANLEY, OTAKA, and LAKE, JR. would intrinsically possess the claimed properties because the combined disclosures teach the same components within the claimed range. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive. The response is insufficient to rebut the obviousness rejection. Despite the applicant’s arguments in view of the teachings of the prior art, the position is maintained.
Firstly, the applicant argues that the combination of HANLEY, OTAKA, and LAKE Jr. would not inherently have a needle penetration value within the claimed range. More specifically, the component ranges and types differ significantly, it cannot be concluded that the composition of the applied references necessarily has a needle penetration value within the claimed range. Moreover, HANLEY teaches that the composition has viscosity that is inconsistent with the claimed need penetration value range. Viscosity and needle penetration are related physical properties that both measure the consistency and flow characteristics of a composition.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. The combination of references (HANLEY, OTAKA, and LAKE Jr.) teaches the claimed components within the claimed ranges, therefore, the examiner concludes that the final composition of HANLEY, OTAKA, and LAKE Jr. would intrinsically posses the claimed properties (i.e., need penetration). Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicant's to show otherwise. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Secondly, the applicant argues the claimed composition has improved mechanical properties, especially improved adhesion on metal substrate while maintaining the volume expansion properties. In particular, the specification provides experimental data demonstrating unexpected improvements in lap shear strength and failure mode when fibrous anhydrous magnesium oxysulfate MOS is included in the composition as shown in Table 1 (Examples E1-E3 as compared to Comparative Example Ref. 1-Ref. 3, which includes other fillers instead of MOS).
The examiner has considered the applicant’s examples for a showing of unexpected results but the examples are not commensurate in scope with the claims because the claims are not limited to the specific components and the amount of the components (i.e., liquid epoxy of Formula II, solid epoxy of formula II, carbon black, calcium oxide, stabilizer (hindered phenolic antioxidant), calcium carbonate, recycled carbon fiber, Wollastonite, BA1 (physical blowing agent (Expancel, Akzo Nobel), DICY, and Accelerator (substituted Urea) ) in the Table 1 of the present specification. Also, other components not being claimed are in the working Examples (Rubber 1 (NBR) and Rubber 2 (SBR)). Therefore, it has been held that to overcome a reasonable case of prima facie obviousness given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227.
Lastly, the applicant argues OTAKA does not teach or suggest improved adhesion in thermosetting epoxy resin compositions and LAKE Jr. focuses on flame retardance, not adhesion. Thus, the improved adhesion properties of the claimed composition would have been unexpected over the teachings of the applied references. The applied references (HANLEY, OTAKA, and LAKE Jr.) address different technical problems, there would have been no apparent motivation to combine them in the manner asserted. Nor would the skilled person have reasonably expected the resulting composition to have a needle penetration value of 20-80 or the improved adhesion properties. The claimed composition would not have been obvious over the teachings of the applied references.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. It is noted that a prima facie case of obviousness does not require the solution of the same problem or recognition of the same advantages as applicant’s invention. In re Dillion, 16 USPQ 2nd 1897.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763