DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/14/2026 has been entered.
Response to Amendment
The previous rejections of Claim(s) 1-9, under 35 U.S.C. 103 as being unpatentable over JP 2002-309077 A to Ando et al. (hereinafter Ando) and further in view of US 2011/0054074 A1 to Jonschker et al. (hereinafter Jonschker) are withdrawn in light of the Applicant’s amendments.
The previous rejections of Claim(s) 1-9 under 35 U.S.C. 103 as being unpatentable over CN 109880569 A to Sun et al. (hereinafter Sun), and further in view of US 2011/0054074 A1 to Jonschker et al. (hereinafter Jonschker) are withdrawn in light of the Applicant’s amendments.
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.
Claim(s) 1, 2, 4-7, 10, is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002-309077 A to Ando et al. (hereinafter Ando) and further in view of WO 2019/123934 A1 to Miyatake et al. (hereinafter Miyatake).
Regarding claims 1, 2, 4-7, 10, Ando teaches a 2-pack curable composition comprising agent A and agent B. Agent A contains (A) a reactive silicon group-containing polyoxypropylene polymer, (B) a copolymer with one or more meth(acrylic) units having a silicon-containing group capable of crosslinking (para 13 and Example 2, para 78-79), (C) 1-60 parts of a hardener for an epoxy resin based on 100 parts of component (A) and (B), (para 16), such as 2,4,6-tris(dimethylaminomethylphenol (TAP), and (D) 0.1-20 parts of a silane coupling agent based on 100 parts of component (A) and (B), (para 16) such as aminoethyl-aminopropyltrimethoxysilane, and wherein component (A) and (B) are in ratio of 99/1-10/90 (para 61 and See abstract, para 7-16 and Table 1, para 84). Agent B contains (E) 10-80 parts of an epoxy resin based on 100 parts of component (A) (para 67) such as bisphenol A epoxy resin, (F) a condensing catalyst (dibutyltin dilaurate) and (G) water (See abstract, para 7-16 and Table 1, para 84).
PNG
media_image1.png
347
745
media_image1.png
Greyscale
. The above agent B meets the claimed agent A containing the epoxy resin, water and the catalyst, and the above agent A meets the claimed agent B containing the polymer having crosslinkable silicon group, the epoxy curing agent, and (meth)acrylic polymer. Ando further teaches that the two part composition with agent B containing the epoxy resin with the condensation catalyst and water and agent A containing the reactive silicon group-containing polyoxyalkylene polymer will have good storage as well as good internal curability with no decrease in curability during storage (para 6-7 and para 86). Ando also teaches that the (B) a copolymer with one or more meth(acrylic) units having a silicon-containing group capable of crosslinking is added from the viewpoint of achieving the final adhesives strength and force (para 50 and 60), and is used in a component (A) and (B) ratio of 99/1-10/90 (para 61). Ando further teaches that fillers and thixotropic agents may be added to the composition. (para 75). The above agent A and B are mixed and applied to cured (para 80-82) at room temperature or by heating, and used as an adhesive. (para 77). The above parts ranges overlaps and meets the claimed ranges. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”).
Ando does not explicitly teach a core-shell rubber particle.
However, Miyatake teaches an epoxy resin composition an alkoxysilyl-modified polymer (A), an epoxy resin (B), an epoxy hardener (C), and a core/shell polymer (D) (See abstract) used in the field of adhesives. (para 2-6). Miyatake further teaches that the epoxy resin composition may be two components comprising a main component and a curing component, (para 90), wherein the main component contains an epoxy resin (B), and the curing component contains an epoxy resin curing agent (C), an alkoxysilyl modified polymer (A), (para 90) and further teaches the core-shell polymer may be in either the main component or the curing component (para 90). The above is in the same field of use of two-component adhesive compositions of the Applicant’s invention. Miyatake further teaches the core-shell is used in an amount of 1-30 wt% based on total weight of the composition (i.e. main component + curing component), from the viewpoint of balance of adhesive strength and viscosity, (para 34). The amount overlaps and meets the claimed amount range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Miyatake further teaches the core is made from a polymer rubber (para 36-45), and the shell layer is made from methyl(meth)acrylate or ethyl(meth)acrylate (para 59-61), which meets the claimed core-shell particle. Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity. (para 54-61).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to include the 1-30 wt% of core/shell particles of Miyatake in component A or B of Ando because Miyatake teaches the same field of use of two-component adhesive compositions of the Applicant’s invention and Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity, (para 54-61), and the amount range is desired from the viewpoint of balance of adhesive strength and viscosity, (para 34).
Regarding the claimed properties of breaking strength, elongation at break, and storage modulus cited in the claim, one skilled in the art would have a reasonable expectation for the epoxy resin composition of Ando and Miyatake to have the claimed properties of the claimed invention because the combination of Ando and Miyatake teaches a substantially identical composition to the claimed invention such as the same bisphenol A epoxy resin, trimethoxy-silyl-terminated polypropylene oxide, curing agent and catalyst, and core-shell rubber particle cited in the Applicant’s examples and the Applicant further teaches that it is the combination of the epoxy resin, polymer containing crosslinkable silicon group, and the core-shell rubber particle that gives the claimed properties. (See Applicant’s examples and Table). See MPEP 2112.01. (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, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1, 2, 4-7, 10, is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 109880569 A to Sun et al. (hereinafter Sun), and further in view of WO 2019/123934 A1 to Miyatake et al. (hereinafter Miyatake).
Regarding claims 1, 2, 4-7, 10, Sun teaches a two component sealant comprising component A and component B, wherein component A contains 100 parts of a hydrolysable (i.e. crosslinkable) silane modified polyether polymer (MS polymer), 1-20 parts of an epoxy curing agent, 0-90 parts of a filler, and 1-4 parts of a silane coupling agent, and component B contains 30-80 parts of an epoxy resin, 0.2-3 parts of a MS catalyst, 0-50 parts of a filler, and 0.1-2 parts of a co-catalyst (page 1-2), wherein the co-catalyst is deionized water. (page 2 and See Examples), and the above components of component B are combined and mixed together. (page 3). The MS polymer is preferably a silane-modified polyether polymer S303H, the epoxy resin is epoxy 828, the epoxy curing agent is 2,4,6-tris(dimethylaminomethyl)phenol, the MS catalyst is a dibutyltin catalyst (U-220H), and water co-catalyst, (See examples). Sun further teaches that by storing the above silane-modified polyether polymer separately from the epoxy resin, the sealant’s storage stability performance is enhanced, and by adding the epoxy curing agent with the silane-modified polyether polymer and the MS catalyst with the epoxy resin, the two components only cure upon mixing and further enhances the sealants long term storage stability. (page 2). The above parts ranges overlaps and meets the claimed ranges. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”).
Sun does not explicitly teach the core-shell rubber particle.
However, Miyatake teaches an epoxy resin composition an alkoxysilyl-modified polymer (A), an epoxy resin (B), an epoxy hardener (C), and a core/shell polymer (D) (See abstract) used in the field of adhesives. (para 2-6). Miyatake further teaches that the epoxy resin composition may be two components comprising a main component and a curing component, (para 90), wherein the main component contains an epoxy resin (B), and the curing component contains an epoxy resin curing agent (C), an alkoxysilyl modified polymer (A), (para 90) and further teaches the core-shell polymer may be in either the main component or the curing component (para 90). The above is in the same field of use of two-component adhesive compositions of the Applicant’s invention. Miyatake further teaches the core-shell is used in an amount of 1-30 wt% based on total weight of the composition (i.e. main component + curing component), from the viewpoint of balance of adhesive strength and viscosity, (para 34). The amount overlaps and meets the claimed amount range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Miyatake further teaches the core is made from a polymer rubber (para 36-45), and the shell layer is made from methyl(meth)acrylate or ethyl(meth)acrylate (para 59-61), which meets the claimed core-shell particle. Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity. (para 54-61).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to include the 1-30 wt% of core/shell particles of Miyatake in component A or B of Sun because Miyatake teaches the same field of use of two-component adhesive compositions of the Applicant’s invention and Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity, (para 54-61), and the amount range is desired from the viewpoint of balance of adhesive strength and viscosity, (para 34).
Regarding the claimed properties of breaking strength, elongation at break, and storage modulus cited in the claim, one skilled in the art would have a reasonable expectation for the epoxy resin composition of Sun and Miyatake to have the claimed properties of the claimed invention because the combination of Sun and Miyatake teaches a substantially identical composition to the claimed invention such as the same bisphenol A epoxy resin, trimethoxy-silyl-terminated polyether, curing agent and catalyst, and core-shell rubber particle cited in the Applicant’s examples and the Applicant further teaches that it is the combination of the epoxy resin, polymer containing crosslinkable silicon group, and the core-shell rubber particle that gives the claimed properties. (See Applicant’s examples and Table). See MPEP 2112.01. (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, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1, 2, 4-7, 10, and 11, is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/117476 A1 in which US 2023/0002609 A1 to Hisanaga is used as the US Equivalent (hereinafter Hisanaga), and further in view of WO 2019/123934 A1 to Miyatake et al. (hereinafter Miyatake).
Regarding claims 1, 2, 4-7, 10 and 11, Hisanaga teaches a two-component curable resin composition comprising agent A and agent B (para 23-24), wherein agent A contains (A) an epoxy resin, (B) a bismuth catalyst, (C) water), and agent B contains (D) an organic polymer having 2 or more hydrolysable silyl groups, and (E) a curing agent for an epoxy resin (para 8-24) and used as an adhesive (para 159). Hisanaga further teaches 100 parts of component (A) epoxy resin is used in agent A (para 165-166), the (B) bismuth catalyst is used in an amount of 0.1-10 parts based on 100 parts of component (D) (para 90), component (C) water is used in an amount of 0.1-20 parts per 100 parts of component (A) (para 103), component (D) is used in an amount of 30-200 parts per 100 parts of component (A) (para 112), and component (E) is used in an amount of 1-100 parts per 100 parts of component (A) (para 19). The above parts ranges overlaps and meets the claimed ranges. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Hisanaga further teaches other additives such as silane coupling agents may be added to the composition (para 130), and as optional components, they may be excluded and meets claim 11.
Hisanaga does not explicitly teach the core-shell rubber particle.
However, Miyatake teaches an epoxy resin composition an alkoxysilyl-modified polymer (A), an epoxy resin (B), an epoxy hardener (C), and a core/shell polymer (D) (See abstract) used in the field of adhesives. (para 2-6). Miyatake further teaches that the epoxy resin composition may be two components comprising a main component and a curing component, (para 90), wherein the main component contains an epoxy resin (B), and the curing component contains an epoxy resin curing agent (C), an alkoxysilyl modified polymer (A), (para 90) and further teaches the core-shell polymer may be in either the main component or the curing component (para 90). The above is in the same field of use of two-component adhesive compositions of the Applicant’s invention. Miyatake further teaches the core-shell is used in an amount of 1-30 wt% based on total weight of the composition (i.e. main component + curing component), from the viewpoint of balance of adhesive strength and viscosity, (para 34). The amount overlaps and meets the claimed amount range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Miyatake further teaches the core is made from a polymer rubber (para 36-45), and the shell layer is made from methyl(meth)acrylate or ethyl(meth)acrylate (para 59-61), which meets the claimed core-shell particle. Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity. (para 54-61).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to include the 1-30 wt% of core/shell particles of Miyatake in component A or B of Hisanaga because Miyatake teaches the same field of use of two-component adhesive compositions of the Applicant’s invention and Miyatake also teaches the core/shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity, (para 54-61), and the amount range is desired from the viewpoint of balance of adhesive strength and viscosity, (para 34).
Regarding the claimed properties of breaking strength, elongation at break, and storage modulus cited in the claim, one skilled in the art would have a reasonable expectation for the epoxy resin composition of Hisanaga and Miyatake to have the claimed properties of the claimed invention because the combination of Hisanaga and Miyatake teaches a substantially identical composition to the claimed invention such as the same bisphenol A epoxy resin, trimethoxy-silyl-terminated polyether, curing agent and catalyst, and core-shell rubber particle cited in the Applicant’s examples and the Applicant further teaches that it is the combination of the epoxy resin, polymer containing crosslinkable silicon group, and the core-shell rubber particle that gives the claimed properties. (See Applicant’s examples and Table). See MPEP 2112.01. (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, 195 USPQ 430, 433 (CCPA 1977)).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4-7, 10-11, have been considered but are moot because the new ground of rejection does not rely on the references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 07/14/2026 have been fully considered but they are not persuasive in part.
On page 5-8, the Applicant argues that motivation to combine references exists when the references “address the same problem and one of the references provides a known technique that would suitably address the problem.” Specifically, that Ando and/or Sun teaches solving the issue of stability and the motivation to use the core-shell particles is unrelated to the issue of storage stability. This is not persuasive because the Applicant’s argument of the “same problem” standard appears to be a different motivation standard used for situations where there is an “Art Recognized Equivalence for the Same Purpose.” (See MPEP 2144.06). This appears to be factually unrelated and irrelevant to the current rejection.
For supporting a rejection under obviousness, “the rational to modify or combine the prior art…may be expressly or impliedly contained in the prior art…” (See MPEP 2144 I.) and “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art…, that some advantage or expected beneficial result would have been produced by their combination.” (See MPEP 2144 II.).
In this case, the above reference Miyatake teaches the same field of use of two-component adhesive compositions of the Applicant’s invention and expressly gives motivation to use the core-shell polymer because the core-shell polymer with a rubber core improves toughening (para 37-41), and the shell layer improves dispersion and reduces viscosity, (para 54-61), and the amount range is desired from the viewpoint of balance of adhesive strength and viscosity, (para 34).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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, Randy Gulakowski can be reached at (571)272-1302. 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.
/HA S NGUYEN/Primary Examiner, Art Unit 1766
Prosecution Insights