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 .
Response to Amendment
The amendment of claims 11, 14, 16-18 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 5/26/2026. Thus, the following action is properly made final.
Claim Objections
Claims 2-4, 8, 10-12, 14-18 objected to because of the following informalities: the preamble should be consistent with the independent claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 8, 10-12, 14-18, 20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the two parts of the composition when mixed exhibit modulus at room temperature of 2000 MPa or less”, the specification disclose a cured two part epoxy adhesive having modulus of no more than 2000 MPa with the thermal conductive filler loading of more than 60%.
Claims 1-4, 8, 10-12, 14-18, 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 8 is dependent on a cancelled claim. For purposes of expediting prosecution, claim 8 is interpreted as dependent from claim 1.
Claim Rejections - 35 USC § 103
Claims 1-4, 8, 10-12, 14-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elgimiabi (US 2011/0244245).
Claims 1-4, 8, 10-11, 15-17: 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 aother 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.
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.
Elgimiabi is silent with respect to the property of the composition. However, the teachings from Elgimiabi have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 12: The composition comprises a phosphoric acid ester as a bonding promoter [0007, table 2], which reads on a coupling agent.
Claim 14: the composition comprises a thixotropic agent silica with amine curing agent [table 1]. It is noted that instant claims recites a composition comprising in two parts. For the final mixed composition, the silica in part A or part B is a matter of different order of processing which does not affect or change the characteristic of the final composition. Case law holds that selection of any order of performing process steps or mixing ingredients is prima facie obvious in the absence of new or unexpected results; In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize that the silica can also be in the epoxy part.
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 because this is a matter of different order of processing.
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).
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding unexpected results, the data have been fully considered, however, they are insufficient to establish unexpected results given that 1) the data is related to a mixture after mixing part A and part B while the claim is directed to a composition comprising in two parts; 2) the data is not compared to the closest prior art, 3) the data is not reasonably commensurate in scope with the scope of claims. The inventive data only contains a specific species of each component as compared to the claimed genus, and the inventive data only contain a specific amount of each component as compared to the claimed general recitation. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). 4) Ex3-Ex8 and CEx 5 show a clear trend of tensile modulus/lap shear strength decreases with the increase of formula I amine equivalent to the epoxy equivalent. The higher ratio means more unreacted amine and therefore lower crosslinking density, which eventually leading to a poorer adhesion is a known fact. 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." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
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 extension fee 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 date of this final action.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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