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 .
In the light of the amendment submitted with the Request for Continuing Examination the prior art of record as applied in the final office action dated 8/18/2025 is overcome. However, updated search provided additional reference which is utilized in current office action.
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.
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 1-7, 9, 12-14, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 6,993,349 in view of Situ article.
With respect to claims 1-3, 5, 6 and 20, Chen discloses insulation binder for fiberglass (example 5). The composition comprises polyacrylic acid with polyhydroxy crosslinking agent. The crosslinking agents includes triethanol amine (Synthetic example 2) other polyhydroxy compounds include glycerol, sorbitol and the like. Triethanol amine of Chen is utilized in amount of 23.3 parts. (Table 1).
The difference between Chen and Instant invention is disclosure of other hydroxy compounds that can serve as crosslinking agents.
Situ, discloses phenolic compounds specifically mean for laminates such as copper clad laminates that contain large amounts of glass fiber.
The experimental section of Situ discloses starting material such as phenol, formalin, oxalic acid, hexamethylenetetramine, epoxidized soybean oil and triethanol amine. The intermediate product has following structure:
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Wherein phenolic component is reacted with epoxidized soybean oil to produce polyhydroxy compound, wherein the polyhydroxy compound comprises beta-hydroxy phenyl ether linkages which are circled in red.
The content of epoxidized soybean oil (ESO) is varied between 10 and 60% (see Figures 4, page 239, 2nd para), where Situ sates that if the content of ESO is lower than 20%, then the resulting polymer would have inferior toughness. The content of ESO at 30% or more impact strength increases rapidly which is more than that of unmodified phenolic component. Resulting composition is further resistant to leaching. As such the content of triethanol amine to ESO has to be around 1:1 or higher for ESO.
Discovery of a new property or use of previously known composition, even if unobvious from prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ2d 1655 (CAFC 1990).
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that the compound of Situ would crosslink the polyacrylic acid of Chen, especially when Chen discloses triethanol amine and hydroxy containing system as crosslinking components of his invention. Using compound of Situ would further be suitable for use with glass fiber or fiberglass, provide composite with good mechanical properties and resist leaching.
Finding obviousness does not require existence of express, written motivation to combine in prior art" 69 USPQ2D 1686 Ruiz v. A.B. Chance Co.
With respect to claim 4, starting material is a phenol, which is polymerized and meets limitation of polyphenolic compound.
With respect to claim 7, Chen also teaches use of sorbitol and pentaerythritol (col. 3).
With respect to claims 9, 12 and 13, Chen discloses polyacrylic acid under tradename ACUMER 9932 which has molecular weight of 2000-10,000.
With respect to claim 14, Chen discloses that typical binder will have a 0.475 molar ratio of hydroxyl group to carboxylic acid group which is within the claimed range.
Claims 8, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 6,993,349 in view of Situ article as applied to claims 1-7, 9, 12-14, 20 above, and further in view of Arkens (US 5,661,213).
Discussion of Chen and Situ from paragraph above is incorporated here by reference. While Chen and Situ disclose polyacid compound with hydroxy compound based on epoxidized soybean oil, the rejection does not disclose any alternatives of functional equivalents that can still produce the same final polyhydroxy compounds.
With respect to claim 8, Arkens discloses polyacids compounds suitable for use with fiberglass like that of Chen. In addition to polyacrylic acid, other suitable acids identified by Arkens include citric acid or cyclobutene tetracarboxylic acid. All have the same carboxylic acid functionality as acrylic acid [Col. 3, l. 49-54, col. 4, l. 1-20].
One of ordinary skill in the art would readily know that acids such as citric acid is functional equivalent to acrylic acid.
With respect to claim 10, epoxidized soybean oil can also be reacted with diethanol amine in lieu of triethanol amine (col. 6).
It would have been obvious one of ordinary skill in the art at the time of the instant invention to utilize diethanolamine, because diethanol amine is viewed in Situ as multi-amine which gives better results than monoamine, wherein the ratio would also be at least 1:1.
With respect to claim 11, Arkens teaches that the reaction mixture can be neutralized with sodium hydroxide.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 December 29, 2025