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 .
The 112b rejection of claims 22 and 23 are withdrawn in view of applicants’ arguments.
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.
Claim(s) 1,2,4-9 and 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Mashima et al US 20170369629 in view of JP-2019059014 Iawmura et al in further view of US 20150050472.
Mashima discloses an adhesive epoxy resin composition comprising:
A) An epoxy resin, which can be of bisphenol A or F type [0050] and mixtures thereof, specifically the same liquid epoxy resins as disclosed by applicants [0053] which would then must meet the claimed "liquid at 25 degrees C" limitation;
B) 3-30 parts by mass of a blocked urethane resin, which can be the same as used in the instant spec., i.e. QR-9466 (0060, last line) having a blocked isocyanate equivalent of 1400;
C) 1-16% by mass of a rubber modified epoxy, wherein the rubber portion can be many well known rubbers such as nitrile butadiene rubbers (NBR) [0063], specifically EPR 1415-1 (0065, 4th line), which as an epoxy equivalent weight of approx. 400 which is a nitrile butadiene rubber epoxide;
D) 3-30 parts by mass of rubber particles which qualifies as applicants claimed organic filler;
E) 1-30 parts by mass of a latent curing agent which can be dicyandiamide [0070];
F) Additional additives can be used, specifically glass filler materials, in amount of 0.1-200 parts by mass [0075]. The glass fillers are added to improve the elastic modulus and flowability of the composition.
Mashima fails to disclose 1) the use of a solid epoxy resin and 2) the addition of spherical glass fillers of the claimed size and surface treated with glycidyloxysilane.
Iwamura discloses a composite material made of a combination of two epoxy resins, one being solid and one being liquid. The solid epoxy, from their example 1, can be JER 1004 while the liquid epoxy can be JER 828, both of which are disclosed in applicants specification for the same epoxides respectively. The curing agents elected can be dicyandiamide and polyamine type curatives, which are the same as claimed. The ratio between the epoxides are generally 9:1 to 1:9 [0038], which overlaps applicants claimed ratio. The reference teaches that the solid epoxy resin is used for its contribution of toughness and impact resistance, while the liquid epoxide gives adhesiveness and flexibility.
Therefore, it would have been obvious to one of ordinary skill in the art to add the solid epoxy resin to the composition of Mashima to improve the toughness and resistance to impact of the composition, as taught by Iwamura.
Saito discloses an epoxy resin prepreg/laminate that also contains filler materials, one being hollow/spherical glass, see 0023. The ave. particle diameter of the filler material being 0.5-10 microns, see 0024. The presence of these fillers can increase thermal conductivity of the cured product.
Additionally, with respect to claim 3, 0038 of Saito teaches the addition of well know silane coupling agents which are used to react with the surface of the inorganic filler, glass, which increases the adhesiveness between the thermosetting resin and the filler material.
Therefore, it would have been obvious one of ordinary skill in the art at the time of the invention to have replaced the glass beads of Mashima with the surface treated beads of Saito, to improve the thermal conductivity of the composition of Mashima AND to improve the adhesiveness between the thermosetting resin and the filler material, as taught by Saito.
With respect to claim 8, it is the position of the office that this property would have been inherent to the combination discussed above since, after analysis of applicants disclosure, specifically the example, it appears that dynamic resistance to cleavage is achieved by 1) the presence of the glass beads and the mixture of epoxies which are taught as being obvious above. Hence, one would expect that property be inherent to the modified Mashima composition. With respect to amended claim 20, Mashima, 0080-0082, disclose the epoxy adhesive is used to adhere two adherends via curing the composition at temps ranging from 50-200 degrees C.
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive.
Applicants argue that the Mashima references discloses the filler/glass being present at a range of 0.1-200 parts by mass, which is very broad and fails to recognize any technical significance associated with the amount of filler, or varying the amount.
This argument is not persuasive, since the law doesn’t require such. A prima facie case of obviousness has been established since the courts have recognized that: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05 I. Therefore, the burden is shifted to applicants to show unexpected results for the amount of filler materials.
Applicants argue the amount of filler is high loading, and basically does not apply.
This argument is not persuasive since Saito isn’t used for the amount of filler material, Mashima already makes obvious the amount.
Applicants refer to the specification and results from the present composition, generally, and general achievements of the present invention, but ultimately fail to show anything unexpected and also fail to compare the present invention to the closest prior art.
The statement concerning the data present is repeated from the last office action below:
Applicants argue that they have found that including the glass filler of the claimed size and loading produces unexpected improvements in impact resistance while maintaining low temperature curability. Applicants reference page 23 of the spec and the comparative examples for such evidence. Applicants arguments and data have been considered but are not persuasive.
First, the low temperature curability is exactly the same for ALL examples presented, including the comparative. Therefore, nothing persuasive towards this aspect is present.
Second, with respect to the impact strength (IS) which has been demonstrated as "dynamic resistance to cleavage" in the examples/data, applicants data shows that for the 2 comparative examples the IS goes down when compared to the inventive examples. This is not convincing since Comp ex. 1 does contain the same amount of the glass beads as the other examples. Therefore the only conclusion that can be made is that this property has nothing to do the presence of the glass, but with the amount/species of epoxy resins used, since Comp ex. 1 does not use a mixture of epoxides at all. The comp ex. 1 does not use a mixture of epoxides, it uses only the DER 331 which is the liquid epoxy. The examiner has shown above from the teachings of the Iwamura reference that the presence of the JER 1004 solid epoxy is well known to give toughness and impact resistance to product. Comparative example 2 contains higher amounts of epoxy blend when compared to all others examples, and does not contain any glass beads. Therefore, it is not comparable to any of the inventive examples.
Lastly, the claims are not of commensurate scope with the showing since the claims are not limited to the ranging amounts of components (only individual data points are shown), which would clearly be expected to affect the final properties of the adhesive product.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy P 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.
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/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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