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 .
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 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.
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Oota et al. ‘200 (WO 2020/050200, using US 2021/0221969 as translation) in view of Oota et al. ‘057 (US 2018/0142057).
Regarding Claim 1, Oota ‘200 discloses epoxy resin composition (para 0085) comprising epoxy resin (A) having three or more functional groups (paras 0114, 0122), acid anhydride (B) (para 0145), curing agent (C) (para 0160), and pigment including carbon black (paras 0191, 0266).
The epoxy resin (A), corresponding to claimed component (A), includes epoxy resins known under the tradename jER 827, 807, or Tetrad-X (paras 0124, 0133, 0252-0254) which are identical to the epoxy resin used in the present invention (paras 0018, 0022) and therefore, would necessarily inherently have a viscosity at 25 °C of 0.1-1000 Pa·s.
The acid anhydride (B), corresponding to presently claimed component (C), includes those known under the tradename HN-2200 (para 0256) which is an acid anhydride identical to that used in the present invention (para 0077) and therefore would necessary inherently undergo a thickening reaction with the epoxy resin at a temperature equal to or lower than a curing temperature.
The curing agent (C), corresponding to claimed component (D), may be an amine (para 0169).
The carbon black, corresponding to claimed component (E), is identical to that used in the present invention (paras 0052-0053). Oota ‘200 further discloses the carbon black is present in an amount of 0.15 parts per 100 parts epoxy (Table 3, example 11).
Oota ‘200 discloses that the epoxy resin composition comprises an internal mold release agent (paras 0191, 0203) but does not disclose component (B) as presently claimed.
Oota ‘057 discloses resin composition comprising epoxy resin having a viscosity at 25 °C of 1 Pa·s or higher (para 0063), amine-type epoxy curing agent (paras 0075-0077), and mold release agent known under the tradename Chemlease IC-35 (paras 0117, 0119). The mold release agent is present in an amount of 0.1-10 parts per 100 parts epoxy (para 0120). The mold release agent suppresses the deterioration of the curability and toughness of the composition while controlling the surface tackiness (para 0118). Given that IC-35 is identical to component (B) used in the present invention (para 0026), the mold release agent would necessarily inherently have a viscosity at 25 °C as presently claimed.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Oota ‘200 to incorporate the teachings of Oota ‘057 to include the mold release agent of Oota ‘057. Doing so would produce a composition with suppressed deterioration of the curability and toughness and desired surface tackiness.
Given that Oota ‘200 in view of Oota ‘057 discloses epoxy composition as claimed, including component (B) identical to that presently claimed and used in the present invention, it is clear that the dispersion diameter of such component (B) in a cured product obtained by heat treating the epoxy composition at a curing temperature for two hours would necessarily be identical to that presently claimed.
Regarding Claims 3-4, Oota ‘200 in view of Oota ‘057 discloses all the limitations of the present invention according to Claim 1 above. Oota ‘200 further discloses that the epoxy resin composition has a viscosity of 3-7 Pa·s at 25 °C (Examples 1-13). Given that Oota ‘200 in view of Oota ‘057 discloses epoxy composition as claimed including viscosity at 25 °C as claimed, it is clear that the epoxy composition would necessarily inherently have a lowest viscosity as claimed.
Regarding Claim 5, Oota ‘200 in view of Oota ‘057 discloses all the limitations of the present invention according to Claim 1 above. Given that Oota ‘200 in view of Oota ‘057 discloses epoxy composition as claimed including component (B) identical to that presently claimed and used in the present invention in amounts that overlap that claimed, it is clear that the dispersion diameter of such component (B) in a mixture obtained by mixing 1 part by mass of component (B) with respect to 100 parts by mass of component (A) would necessarily be identical to that presently claimed.
Regarding Claims 6-7, Oota ‘200 in view of Oota ‘057 discloses all the limitations of the present invention according to Claim 1 above. Given that Oota ‘200 in view of Oota ‘057 disclose component (B) identical that presently claimed and used in the present invention, it is clear that such component (B) would necessarily inherently possess the same roundness Rs and Rc as presently claimed.
Regarding Claims 8-10, Oota ‘200 in view of Oota ‘057 discloses all the limitations of the present invention according to Claim 1 above. Oota ‘200 further discloses molding material comprising the epoxy resin composition and reinforcing carbon fibers (para 0084) as well as a fiber reinforced composite comprising such molding material (para 0237).
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Applicant argues against the combination of references, arguing that Oota ‘057 uses a liquid internal mold release agent and uses thixotropic particles in an amount different than claimed, while Oota ‘200 teaches elastomer-based thixotropy modifiers, not inorganic particles.
However, Oota ‘057 is only being used as a secondary reference to teach the mold release agent, not the particles.
Further, Oota ‘057 is only used as teaching reference in order to teach the mold release agent, not the particles. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Examiner maintains that the combination is proper, because both are drawn to sheet molding compounds comprising the same epoxy resins (Oota ‘057 para 0065; Oota ‘200 para 0124-0126), and because Oota ‘200 generally discloses an internal mold release agent (paras 0191, 0203) and Oota ‘200 discloses motivation for a specific mold release agent (para 0118).
Applicant argues that the prior art of record would not lead a person of ordinary skill in the art to replace Oota ‘200’s elastomer-based thixotropy modifiers with inorganic particles as claimed.
However, while Oota ‘200 may disclose elastomer-based thixotropy modifiers, these elastomers are optional (paras 0191, 0207), and the fact remains that Oota ‘200 also discloses carbon black (para 0266) (i.e. carbon particles (E) as claimed).
Applicant argues that the prior art of record does not teach the synergistic mechanism of the present invention, specifically the interplay of component (B), component (E), and the viscosity/phase stabilization produced via the balance of all components. Applicant points to paragraphs 0051 and 0054 of the present specification which describe the composition and content of the component (E).
However, as shown above, Oota ‘200 in view of Oota ‘057 discloses a resin composition as claimed, including component (B) as claimed, component (E) as claimed, and viscosity of the epoxy resin composition within the range claimed.
Paragraphs 0051 and 0054 of the present specification do not present any data showing the criticality of the synergistic mechanism applicant describes. Further, considering the data in the present Examples (Tables 1 and 2), the data is not commensurate in scope with the scope of the claims. Specifically, the examples use specific compounds for each of compounds (A)-(E), in specific amounts, while the claims encompass a broader scope for each of compounds (A)-(E), and discloses compounds (B)-(C) in any amount. There is also no data at the endpoints of the claimed amount of component (E).
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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