DETAILED ACTION
Applicant’s amendment dated 27 April 2026 is acknowledged. Claims 1, 4, 8, 11, 12, 14, 16, 22-26, 28, 29, and 32-39 as amended are pending, with claims 25 and 26 withdrawn.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
Claim Rejections - 35 USC § 112
Claim 39 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 39, in the last two paragraphs, recites “hollow, organic, spherical filler particles” and “hollow, inorganic, spherical filler particles”. It is unclear whether these are the same components as previously recited in claim 1.
In addition, under the presumption that these are the same particles previously recited, claim 39 recites a weight range of each of these particles, and also a weight ratio of hollow, organic spherical filler particles to hollow inorganic spherical particles that is much broader than that which can be obtained from the individual amount ranges. It is therefore unclear as to how ratio in the full range can be obtained consistent with the individual ranges.
Claim Rejections - 35 USC § 103
Claim(s) 1, 4, 8, 11, 12, 14, 16, 22, 23, 28, 29, 34-36, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”).
As to claims 1, 4, and 8, Elgimiabi C teaches a composition for coating (para. 0110). Elgimiabi C teaches an epoxy resin, thus an epoxy based binder (abstract) and a curing agent (abstract). Elgimiabi C exemplifies polyetheramine curing agent (Jeffamine D-230) (para. 0129), which is polyoxyalkylene amine curing agent.
Elgimiabi C teaches compositions containing two different types of hollow microspheres (abstract). The first are hollow inorganic microspheres, specifically glass microspheres (para. 0081) as required by claim 4. The second are organic microspheres (para. 0082). Elgimiabi C teaches the use of a greater amount of inorganic than organic microspheres (para. 0089).
Elgimiabi C teaches example 2 (Table 3) of Composition A1 and B2 mixed at a 1:2 ratio (para. 0132). It is calculated, based on the density of the Dualite organic spheres (0.0655 g/cm3, para. 0129), and glass bubbles (0.32 g/cm3, for Scotchlite D32/4500, as evidenced by Elgimiabi, para. 0063), it is estimated that example 2 has inorganic spherical filler particles and hollow organic spherical filler particles in a ratio of approximately 1.67:1, which is within the range of claims 1 and 8. Given that Elgimiabi C suggests the use of a greater amount of hollow inorganic spherical particles than organic hollow spherical particles, the recited range of the ratio is obvious given the teaching of Elgimiabi C.
Elgimiabi C does not explicitly discuss a thickener. However, the examples teach the use of imidazole derivatives, which as evidenced by Yin, para. 0036, is a thickening agent.
Elgimiabi C does not exemplify the recited curing agents. However, Elgimiabi C is not limiting as to amine curing agents, and specifically states polyamidoamines, polyamide amines (para. 0064), and as such, the use of alternative curing agents is an obvious modification suggested by Elgimiabi C.
As to claim 11, Elgimiabi C teaches mixing the components (para. 0132).
As to claim 12, Elgimiabi C teaches a first mixture containing epoxy binder, glass bubbles, and organic microspheres, and a second composition containing curing agent and both types of spherical fillers (para. 0132). As discussed with respect to claim 1, this is calculated to have the recited ratio of fillers, and both fillers are present in at least one of the compositions.
As to claim 14, Elgimiabi C teaches coating onto a surface (para. 0133).
As to claim 16, Elgimiabi C does not discuss insulating coating. However, Elgimiabi C teaches the same composition, and is thus presumed to be insulating.
As to claim 22, Elgimiabi C suggests using more inorganic spherical particles than organic spherical particles, but does not exemplify the recited weight ratio. Elgimiabi C teaches 8 to 30 wt % of the inorganic spherical particles and 1 to 10 wt % of the organic spherical filler particles (para. 0090), which includes compositions within the recited range for the ratio. As such, modifying the composition of Elgimiabi C to have the recited weight ratio of inorganic to organic spherical particles is obvious as within the suggested ranges of Elgimiabi C.
As to claim 23, Elgimiabi C does not discuss the recited characteristics. However, the composition of Elgimiabi C, containing the recited components, especially the hollow microspheres, would be expected to have the thermal conductivity as recited.
As to claim 28, Elgimiabi C teaches curing at room (ambient) temperatures (para. 0133).
As to claim 29, Elgimiabi C, example 2, lacks the recited compounds.
As to claim 34, Elgimiabi C does not exemplify the recited ratio. However, Elgimiabi C teaches the use of hollow glass spheres of 85 micrometer diameter (para. 0129), and teaches that the organic microspheres may range from 15 to 200 micrometers (para. 0084), which includes diameters providing a dimeter ratio in the recited range, and as such, the recited range is an obvious modification suggested by Elgimiabi C.
As to claim 35, while the recited amount is not exemplified, Elgimiabi C teaches the use of 1 to 10 weight percent (para. 0090), for processibility and mechanical properties, and as such, the use of recited amounts of hollow organic microspheres is an obvious modification suggested by Elgimiabi C.
As to claim 36, while not exemplified, Elgimiabi C teaches that hollow organic microspheres preferably between 20 and 180 micrometers on average (para. 0084), and as such, the use of hollow organic microspheres, including in the recited diameter range, is an obvious modification suggested by Elgimiabi C.
As to claim 38, while not exemplified with recited curing agents, Elgimiabi C exemplifies compositions having the recited amount of inorganic and organic hollow spherical filler particles (para. 0135), and as such, the use of such amount is an obvious modification suggested by Elgimiabi C.
Claim(s) 24, 32, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”) as applied to claim 1, further in view of EP 3333211 A1 (“Elgimiabi B”).
As to claim 24, Elgimiabi C, example 2, uses bisphenol type epoxy binder (para. 0129). Elgimiabi teaches curing at room temperature (para. 0131), and thus the curing agent is presumed to be curable at ambient temperature. Elgimiabi C teaches glass bubbles having the recited average size (para. 0129), and polyacrylonitrile based organic spherical particles of the recited particle diameter (para. 0129). As discussed with respect to claim 1, the imidazole is a thickener as evidenced by Yin, para. 0036. The amount of epoxy resins (Epikote 232 and Cardolites) of Example 2, Tables 1 and 2, is calculated to be approximately 49 wt %.
Elgimiabi C suggests using more inorganic spherical particles than organic spherical particles, but does not exemplify the recited weight ratio. Elgimiabi C teaches 8 to 30 wt % of the inorganic spherical particles and 1 to 10 wt % of the organic spherical filler particles (para. 0090), which includes compositions within the recited range for the ratio. As such, modifying the composition of Elgimiabi C to have the recited weight ratio of inorganic to organic spherical particles is obvious as within the suggested ranges of Elgimiabi C. Given the relative density of the inorganic and organic spherical filler particles, the compositions of Elgimiabi C in the recited weight ratio would also have a volume ratio in the recited range.
Elgimiabi C teaches additional adjuvants (para. 0093), but does not specify the recited thickener. While the recited material is not recited, it is known that polyamide wax is suitable thixotropic (thickening agent) for use in curable epoxy resins (Elgimiabi B, para. 0077, table 1) for controlling flow (Elgimiabi B, para. 0058), and as such, the use of polyamide wax for similar purposes is an obvious substitution suggested by Elgimiabi B.
As to claim 32, Elgimiabi C teaches additional adjuvants (para. 0093), but does not specify the recited thickener. While the recited material is not recited, it is known that polyamide wax is suitable thixotropic (thickening agent) for use in curable epoxy resins (Elgimiabi B, para. 0077, table 1) for controlling flow (Elgimiabi B, para. 0058), and as such, the use of polyamide wax for similar purposes is an obvious substitution suggested by Elgimiabi B.
As to claim 39, Elgimiabi C exemplifies bisphenol based epoxy binder (para. 0129).
Elgimiabi C teaches curing at room (ambient) temperatures (para. 0111, 0133).
Elgimiabi C exemplifies hollow inorganic spherical particles are glass and have average particle size in the recited range (para. 0129).
Elgimiabi C teaches that the organic microspheres are formed of acrylonitrile copolymers (para. 0086).
While not exemplified, Elgimiabi C teaches that hollow organic microspheres preferably between 20 and 180 micrometers on average (para. 0084), and as such, the use of hollow organic microspheres, including in the recited diameter range, is an obvious modification suggested by Elgimiabi C.
Elgimiabi C teaches example 2 (Table 3) of Composition A1 and B2 mixed at a 1:2 ratio (para. 0132). It is calculated, based on the density of the Dualite organic spheres (0.0655 g/cm3, para. 0129), and glass bubbles (0.32 g/cm3, for Scotchlite D32/4500, as evidenced by Elgimiabi, para. 0063), it is estimated that example 2 has inorganic spherical filler particles and hollow organic spherical filler particles in a ratio of approximately 1.67:1, which is within the range of claim 39. Given that Elgimiabi C suggests the use of a greater amount of hollow inorganic spherical particles than organic hollow spherical particles, the recited range of the ratio is obvious given the teaching of Elgimiabi C.
The same example contains epoxy based binder in the recited amount, and hollow inorganic spherical filler particles in the recited amount.
Elgimiabi C differs in that it does not exemplify the recited amount of hollow organic spherical filler particles or the recited ratio of hollo inorganic spherical particles to hollow organic spherical particles. However, Elgimiabi C teaches the use of 1 to 10 percent (para. 0090), and as such, the use of recited amounts of hollow organic microspheres is an obvious modification suggested by Elgimiabi C. Amounts in the recited range would also provide the recited ratio of inorganic to organic hollow spherical particles, and as such, both ranges are obvious modification suggested by Elgimiabi C.
Elgimiabi C teaches additional adjuvants (para. 0093), but does not specify the recited thickener. While the recited material is not recited, it is known that polyamide wax is suitable thixotropic (thickening agent) for use in curable epoxy resins (Elgimiabi B, para. 0077, table 1) for controlling flow (Elgimiabi B, para. 0058), and as such, the use of polyamide wax for similar purposes is an obvious substitution suggested by Elgimiabi B.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”) as applied to claim 1, further as evidenced by US 2003/0235693 (“Oishi”).
As to claim 33, Elgimiabi C does not discuss the volume percent of the spherical filler particles. However, based on the densities of the fillers which are lower than that of epoxy resin (evidenced as approximately 1.17 g/eq, by Ochi, para. 0205), it is estimated that Example 2 has approximately 39 volume percent of the hollow inorganic spherical particles (in recited range), 23 vol percent of hollow organic spherical particles (above recited range), and 62 vol percent total spherical particles (within range). Furthermore, Elgimiabi C teaches a range of 1 to 10 wt % of organic spherical particles (para. 0090), the lower range of which would provide volume percent in the recited range. As such, compositions having the recited volume amounts of the particles are an obvious modification within the teaching of Elgimiabi B.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”) as applied to claim 1, further as evidenced by WO 00/22025 A1 (“Fletcher”), US 2003/0104212 (“Agarwal”), and US 3,207,718 (“Zimmerman”)
Elgimiabi C does not discuss the equivalent ratio of amine hydrogen to epoxy. However, the examples show the use of Jeffamine D230, which based on a molecular weight of 230 (Table 1), would have an amine hydrogen equivalent weight of approximately 56 g/mol. The examples further show Epikote 232, which has an epoxy equivalent weight of 176 g/mol, as evidenced by Fletcher, 9:6-8, Cardolite NC 514, which has an epoxy equivalent weight of approximately 350 g/mol as evidenced by Agarwal, para. 0016, and Cardolite NC 513 having an epoxy equivalent weight of approximately 475-575, as evidenced by Zimmerman, 5:14-17. Based on example 2, this provides a ratio of hydrogen to epoxy equivalents of approximately 116:100, which is within the recited range. Given that Elgimiabi C uses compositions having the recited ratio, the use of such ratio, when modified with other amines, is an obvious modification suggested by Elgimiabi C.
Response to Arguments
Applicant's arguments filed 27 April 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 102 rejections over Elgimiabi C are moot because those claims are now rejected under 35 USC 103. While the recited list of amine curing agents is not exemplified, Elgimiabi C teaches the same can be used for the compositions.
Applicant’s arguments regarding the combination of Elgimiabi C and Elgimiabi are unpersuasive. Elgimiabi is used in this case as evidence of characteristics of components found in Elgimiabi C. The combination of Elgimiabi C and Elgimiabi B arises from the utility taught by Elgimiabi B of using thixotropic agents to control flow of curable epoxy resin compositions.
Applicant’s argument that Elgimiabi C does not suggest the recited ratio of inorganic to organic hollow spherical particles is not persuasive. First, Elgimiabi C clearly teaches and exemplifies compositions with far higher weight amounts of inorganic hollow filler. Second the respective ranges clearly suggest compositions with far more inorganic than organic hollow spherical particles. Given the densities taught by Elgimiabi C, the recited volume ratios are also suggested by Elgimiabi C.
The remaining distinctions raised by applicant are all suggested by Elgimiabi C, as set forth above.
Applicant’s argument that unexpected results arise from the recited combination of hollow inorganic and organic spherical particles is not persuasive. First, these results do not provide comparison with the closest prior art. Second, the evidence is not commensurate in scope with the claims, which are very broad as to composition and density of the respective particles, as well as the curable epoxy resins.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights