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 .
DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/2025 has been entered. Claims 1-4 and 7-20 are currently under examination on the merits.
Any rejections and/or objections made in the previous office action and not repeated below are hereby withdrawn.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 nonobviousness.
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 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al (JP 2019156965, of record, ‘965 hereafter) in view of Urakawa et al (US 2010/0273940, ‘904 hereafter) and Goto et la (JP 2012236972, of record, ‘972 hereafter).
Regarding claims 1-5, 8-9 and 11-20, ‘965 discloses an epoxy resin composition comprising a compound containing two or more epoxy groups component (component B, [0011], [0026]-[0029], [0061], examples); a phenyl mono-glycidyl ether having an alkyl group (component C, [0011], [0031], [0062], Examples), a thiol curing agent (component A, [0011], [0020]-[0024], [0060], Examples) and a curing accelerator being an amine adduct (component D, [0011], [0032], [0033], [0063]); wherein the ratio of thiol compound to multifunctional epoxy resin can be 126/100 (Example 1,Table 1). ‘965 also discloses that the composition contains a storage stabilizer being a boric acid ester([0044], [0045]), and the composition can be formed into a product having thermosetting properties without containing an elastomer ([0054]). ‘965 discloses that the composition contains a thiol curing agent but does not specifically set forth the thiol curing agent is a secondary thiol compound. However, in the same filed of endeavor, ‘940 teaches an epoxy resin composition wherein an secondary thiol curing agent such as pentaerythritol tetrakis(3-mercaptobutyrate), provides better pot life and good storage stability ([0016]-[0038], [0140], [0141], [0152]-[0154]). In light of these teachings, one of ordinary skill in the art would have been motivated to use secondary thiol curing agent as taught by ‘940, to modify the epoxy resin composition of ‘965, in order to render the epoxy resin composition having better pot life and storage stability. ‘965 does not set forth that the composition also contains an oxetane compound having two oxetanyl groups in a content in the range as in claims 3 and 12-13, however, in the same field of endeavor of epoxy resin composition, ‘972 discloses an epoxy resin composition comprising an epoxy resin and an oxetane resin ([0007]-[0017]) to render the composition have excellent flexibility and heat resistance (abstract, [0006]), wherein the ratio of oxetane resin to epoxy resin can be 11/100 (10/90, Example 2, Table 1). In light of these teachings, one of ordinary skill in the art would have been motivated to use the oxetane resin as taught by ‘972, to modify the epoxy composition of ‘965, in order to render an epoxy composition having better flexibility and heat resistance. ‘965 discloses that the content of amine adduct in the composition is be 5 parts per 100 parts of the total composition but does not discloses the ratio of amine adduct to thiol curing agent satisfying present claims 14-15, however, it is known in the art that the amine adduct is used to increase curing speed, and its content in the composition directly affect the curing speed ([0032] of ‘965), thus the content of amine adduct in the epoxy composition is an effective variable in terms of the curing speed of the composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the content of amine adduct in the composition within the scope of the present claims 14-15 so as to produce desired curing speed of the composition.
Regarding claims 7 and 10, modified ‘956 teaches all the limitations of claim 1, but fails to expressly set forth that the composition having curing shrinkage and cured product having storage elastic modulus as presently claimed. However, as set forth in the paragraph 7 above, modified ‘956 fairly suggests an epoxy composition having epoxy components and oxetane components which can be cured into a crosslinked network by using phenyl mono-glycidyl ether to adjust crosslinking density, which is substantially identical to the epoxy composition as presently claimed; thus it is reasonable to expect that the prior art epoxy composition would have possessed the same properties including presently claimed curing shrinkage and storage elastic modulus of cured product, in absence of an objective showing to the contrary. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977), see MPEP 2112(V) and 2112.01(I)).
Response to Arguments
Applicant's arguments filed on 12/18/2025 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/ Primary Examiner, Art Unit 1782