DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group 1, claims 1-18, 20 filed on 7/1/2025 is acknowledged. The traversal is on the ground(s) that (i) that examination of both claimed invention together would not present a serous burden on the U.S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper. The requirement is still deemed proper and is therefore made FINAL.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/1/2025.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it contains less than 50 words and does not describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 16-18 objected to because of the following informalities: “composition A/B” should be part A/B. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18, 20 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “consisting of” in the preamble and “comprising” in the claim body. Some dependent claims recite “further comprises”. For purposes of expediting prosecution, the transitional phrase “consisting of” is interpreted as “comprising”.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “thermal conductive filler” in claim 1 and claim 11 is used by the claim to include diatomaceous earth, while diatomaceous earth has a thermal conductivity lower than typical polymer and therefore cannot be a thermal conductive filler for polymer. The term is indefinite because the specification does not clearly redefine the term.
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 5, 9 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.
Claim 1 recites R is a divalent residue of dimerized fatty acid, claim 5 recites R is selected from a divalent radical of aliphatic, cycloaliphatic or aromatic hydrocarbon compound having 2-48 carbon atoms. Claim 5 broadens the scope of claim 1.
Claim 1 recites the ratio of amine equivalents in component d to the epoxy equivalents is 0.7-1.2, claim 9 recites the ratio is still 0.7-1.2 when an additional amine curing agent is included. Claim 9 does not further limit claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-17, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elgimiabi (US 2011/0244245).
Claims 1-5, 7-8, 10-11, 14-17 : Elgimiabi teaches a composition comprising bisphenol A based diglycidyl ether EPON 828, core shell rubber toughened epoxy resin based on bisphenol A Kane MX 153, epoxy diluent 1,4-cyclohexane dimethanol diglycidyl ether EPODIL 757, and a polyamido amine curing agent ANCAMIDE 910 which reads on formula I and identical to the compound used in instant application, and aluminum hydroxide, and another amine curing agent TTD 4,7,10-trioxamidecane-1,13-diamine, and silica (tables 1-2). The equivalent ratio of amine from ANCAMIDE 910 to the epoxy is 0.7 (detailed calculation is available upon request).
Claim 9: The ratio of amine equivalent from amine curing agent to epoxy equivalent is about 0.95.
Claim 12: The composition comprises a phosphoric acid ester as a bonding promoter [0007], which reads on a coupling agent.
Claim 13: the composition comprises a catalyst for accelerating the curing reaction [0093]. It is noted that instant claims do not recite whether parts A and B are mixed together. A composition comprising all the components mixing together also reads on the claimed invention. Therefore, the curing accelerator included in part A or part B has no patentable weight.
Claim 20: Elgimiabi teaches an assembly comprising the adhesive and a substrate [0105-0110, 0116-0117].
It is noted that claim 20 is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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.
Claim 6, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elgimiabi (US 2011/0244245).
Claim 6: Elgimiabi teaches the limitation of claim 1, as discussed above. The examples show the amine curing agent is a mixture of TTD and Ancamid 910, and the equivalent ratio of amine from ANCAMIDE 910 to the epoxy is 0.7, the equivalent ratio of amine from TTD to the epoxy is 0.25, the equivalent ratio of amine from Hycar 1300 X 16 to the epoxy is 0.05.
Elgimiabi further teaches the amine curing agent can be one or more amine curing agents, and in the composition the ratio of amine equivalent to epoxy equivalent is about 1:1 [0065, 0103]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize the amine equivalent from ANCAMIDE 910 overlaps the claimed range when only one amine curing agent ANCAMIDE 910 is used.
Claim 18: Elgimiabi discloses aluminum hydroxide can be included in both parts A and B at a concentration of 26 and 28 wt% respectively. Elgimiabi does not require aluminum hydroxide has to be in both parts.
Elgimiabi does not teach the content of aluminum hydroxide is 35-80 wt% in parts A or B.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize that aluminum hydroxide can be included in only one part having a concentration overlapping the claimed range to achieve the desired final content in the adhesive composition.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763