DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on January 13, 2026 is acknowledged. Claim 22 was not addressed in the restriction requirement and will be examined with elected claims 1-17.
Claims 24 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 13, 2026.
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 3 and 15 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 3: TDI is not defined. For the purpose of further examination, it is taken to mean toluene diisocyanate.
Regarding claim 15: The limitation beginning with “selected from tertiary amines, including…” is indefinite since it is unclear if the list after “including” is a closed group, i.e. a tertiary amine that is not listed is not a possible catalyst, or if the list are examples of possible tertiary amines, but other non-listed tertiary amines are also within the scope of the catalyst. For the purpose of further examination, it is taken that the list is closed. It is suggested to amend this claim with Markush language, for example “the catalyst (b2) is selected from the group consisting of tertiary amines, diazabicyclo[2.2.2]octane, 2,4,6-tris((dimethylamino)methyl)phenol, triethanolamine, (2,2’-dimorpholinodiethylether), polyethyleneimine and imidazoles.”
Further, the acronym DMDEE is not defined. For the purpose of further examination, it is taken to mean the (2,2’-dimorpholinodiethylether).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5-7, 11-13, 15, 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Goel (U.S. Pat. 4,803,257) in view of Herndon et al. (U.S. Pat. 5,139,857).
Regarding claim 1: Goel teaches a two-component system (col. 3 lines 40-45) comprising a blocked polyurethane prepolymer which is the reaction product of a polyisocyanate with a phenol (col. 2 lines 45-55), a polyepoxy (col. 3 lines 65-68) such as a diglycidyl ether of bisphenol A (example 4), which is an aromatic epoxy resin. A second part comprises a nucleophilic cross-liner/polyamine (col. 3 lines 40-50) and a catalyst (col. 3 lines 29-31), along with a thermally conductive filler/metal oxide (col. 3 lines 35-40).
Goel does not teach the epoxy silane. However, Herndon et al. teaches a similar composition comprising an epoxy silane (col. 5 lines 20-25). Goel and Herndon et al. are analogous art since they are both concerned with the same field of endeavor, namely epoxy and blocked urethane compositions cured with amines. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to add the epoxy silane of Herndon et al. into the composition of Goel and would have been motivated to do so to increase adhesion.
Regarding claim 2: Goel teaches the blocked polyurethane prepolymer is made by reacting an aromatic diisocyanate/toluene diisocyanate with a polyether polyol/poly(propylene oxide) polyol and capping with phenol (example 1).
Regarding claims 5 and 6: Goel teaches a diglycidyl ether of bisphenol A (example 4), which is a reaction product of a diphenol/bisphenol A with epichlorohydrin.
Regarding claim 7: Goel teaches up to 25% by weight of a polyepoxy resin (col. 3 lines 20-25), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use an overlapping amount of the aromatic epoxy resin and would have been motivated to do so since Goel teaches overlapping amounts provide improved tack, peel and shear strengths.
Regarding claim 11: Goel teaches a triamine (example 1).
Regarding claim 12: Goel teaches polyamines/diamines containing poly(alkylene oxide) chains in the backbone (col. 3 lines 20-25).
Regarding claim 13: Goel teaches a triamine having a molecular weight in a range of 200-10,000 that has a poly(alkylene oxide) backbone (col. 3 lines 55-61).
Regarding claim 15: Goel teaches tertiary amine catalysts (col. 3 lines 29-30).
Regarding claim 17: Goel teaches the basic claimed composition as set forth above. Not disclosed is the amount of the accelerator. However, Herndon et al. teaches 0-6 parts of an accelerator (col. 5 lines 20-25), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the amount of accelerator in Herndon et al. in the composition of Goel and would have been motivated to do so in order to accelerate the reaction to an acceptable level.
Regarding claim 22: Goel teaches mixing the components and heating to cure (example 1).
Claims 1-13, 15, 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Goel (U.S. Pat. 4,803,257) in view of Mayer et al. (US 2022/0227991).
Regarding claims 1, 8, 9, and 10: Goel teaches a two-component system (col. 3 lines 40-45) comprising a blocked polyurethane prepolymer which is the reaction product of a polyisocyanate with a phenol (col. 2 lines 45-55), a polyepoxy (col. 3 lines 65-68) such as a diglycidyl ether of bisphenol A (example 4), which is an aromatic epoxy resin. A second part comprises a nucleophilic cross-liner/polyamine (col. 3 lines 40-50) and a catalyst (col. 3 lines 29-31), along with a thermally conductive filler/metal oxide (col. 3 lines 35-40).
Goel does not teach the epoxy silane. However, Mayer et al. teaches an epoxy silane, called an adhesion promoter, such as 3-glycidoxypropyltrimethoxysilane (para. 173), which has the formula claimed in claim 8 where R1, R2, and R3 are methyl groups and R4 is propyl. The adhesion promoter is used in an amount of 0.1-5 wt% (para. 179). Goel and Mayer et al. are analogous art since they are both concerned with the same field of endeavor, namely two component compositions having epoxy resins and blocked polyurethane prepolymers. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the silane of Mayer et al. in the composition of Goel and would have been motivated to do so to promote adhesion.
Regarding claim 2: Goel teaches the blocked polyurethane prepolymer is made by reacting an aromatic diisocyanate/toluene diisocyanate with a polyether polyol/poly(propylene oxide) polyol and capping with phenol (example 1).
Regarding claim 3: Goel teaches the blocked polyurethane prepolymer is made by reacting toluene diisocyanate with poly(propylene oxide) polyol and capping with phenol (example 1).
Not disclosed is the phenol is cardanol. However, Mayer et al. teaches an impact modifier that is the reaction product of a diol, a polyisocyanate and cardanol (abstract). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the cardanol of Mayer et al. as the phenol of Goel and would have been motivated to do so since it is based on natural, renewable resources and is inexpensive, as evidenced by Mayer et al. (para. 119).
Regarding claim 4: Goel teaches the basic claimed two component composition/kit as set forth above. Not disclosed is the amount of the blocked polyurethane. However, Mayer et al. teaches 3-45 wt% of the blocked polyurethane/impact modifier in part A/component K1 (para. 102). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use an overlapping amount of the blocked polyurethane as in Mayer et al. in the composition of Goel and would have been motivated to do so in order to sufficiently protect against impacts.
Regarding claims 5 and 6: Goel teaches a diglycidyl ether of bisphenol A (example 4), which is a reaction product of a diphenol/bisphenol A with epichlorohydrin.
Regarding claim 7: Goel teaches up to 25% by weight of a polyepoxy resin (col. 3 lines 20-25), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use an overlapping amount of the aromatic epoxy resin and would have been motivated to do so since Goel teaches overlapping amounts provide improved tack, peel and shear strengths.
Regarding claim 11: Goel teaches a triamine (example 1).
Regarding claim 12: Goel teaches polyamines/diamines containing poly(alkylene oxide) chains in the backbone (col. 3 lines 20-25).
Regarding claim 13: Goel teaches a triamine having a molecular weight in a range of 200-10,000 that has a poly(alkylene oxide) backbone (col. 3 lines 55-61).
Regarding claim 15: Goel teaches tertiary amine catalysts (col. 3 lines 29-30).
Regarding claim 16: Goel teaches the basic claimed composition as set forth above. Not disclosed is the diazabicyclo[2.2.2]octane. However, Mayer et al. teaches a diazabicyclo[2.2.2]octane as an accelerator (para. 97). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the accelerator of Mayer et al. in the composition of Goel and would have been motivated to do so since Mayer et al. teaches they accelerate the reaction between amino groups and epoxy groups.
Regarding claim 22: Goel teaches mixing the components and heating to cure (example 1).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Goel (U.S. Pat. 4,803,257) in view of Mayer et al. (US 2022/0227991) or Herndon et al. (U.S. Pat. 5,139,857) as applied to claim 1 set forth above and in view of Ming et al. (US 2017/0288279).
Regarding claim 14: Goel teaches the basic claimed kit as set forth above. Not disclosed is the amount of nucleophilic crosslinker. However, Ming et al. teaches a similar composition having a curing agent in an amount of 0.01-90wt% (para. 60), which overlaps the claimed range. Goel and Ming et al. are analogous art since they are both concerned with the same field of endeavor, namely epoxy compositions with polyurethanes. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the curing agent in the amount of Ming et al. and would have been motivated to do so in order to adequately cure the adhesive.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 22-24 of copending Application No. 18/702,823 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the copending requires a two-component thermally conductive adhesive formulation comprising a first part comprising a blocked polyurethane prepolymer which is the reaction product of a polyisocyanate with a phenol, an aromatic epoxy resin, an epoxy silane and a second part comprising a nucleophilic cross-linker capable of reacting with the blocked polyurethane prepolymer and the aromatic epoxy resin, and a catalyst capable of promoting the reaction of nucleophile with the blocked polyurethane prepolymer and the aromatic epoxy resin and wherein the first part and/or the second part comprise a thermally conductive filler, as does claim 1 of the instant. Claim 5 of the copending application overlaps in scope with claim 2 of the instant, claims 22-24 of the copending application overlap in scope with claim 6 of the instant
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767