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 .
Claims 1-8, as amended in the response filed after final on 2/18/2026, have been entered.
The final rejection mailed on 12/23/2025 has been withdrawn upon reconsideration in view of Applicant’s arguments regarding the combination of Asai and Reyes in the action mailed on 12/23/2025.
Upon updating the search, new references were found which anticipate or render obvious the presently claimed subject matter. The new rejections set forth below were necessitated by Applicant’s amendment to the claims filed on 12/1/2025, in response to the non-final rejection mailed on 9/22/2025. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
Claim Rejections - 35 USC § 102
Claim(s) 1, 4 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitsubishi (GB 1578303).
As to claims 1, 4 and 5, Mitsubishi exemplifies a modified product of an amine composition which consists of a reaction product of an amine composition which consists of meta-xylylenediamine and para-xylylenediamine in a 70/30 ratio (which falls within the presently claimed range of 99/1 to 51/49) and epichlorohydrin (which is an epoxy compound having one epoxy group) (example 3, p 8).
Mitsubishi fails to characterize the polyglycidyl compound as “an epoxy resin curing agent” as recited in the preamble of the claims. However, given that Mitsubishi’s reaction product has epoxy groups which have reactivity with “an epoxy resin,” and given that it meets the structural limitations recited in claim 1, there is reasonable basis to conclude that the polyglycidyl compound disclosed by Mitsubishi is capable of being a curing agent as presently recited. A claim preamble is not limiting if the body of the claim defines a structurally complete invention, and the preamble only states a purpose or intended use of the invention. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble.)
Claim Rejections - 35 USC § 103
Claim(s) 2, 3 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsubishi (GB 1578303).
As to claims 2 and 3, Mitsubishi discloses a polyglycidyl xylylenediamine having a formula as shown on p 2:
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Produced by reaction of a diamine with epihalohydrin (a compound having one epoxy group) (see p 3, lines 35-45). Mitsubishi discloses that meta-xylylenediamine containing less than 40% by weight paraxylylenediamine may be used as the raw material (p 6, lines 50-55). In other words, Mitsubishi discloses a reaction product of an epoxy compound and an amine composition which consists of meta-xylylenediamine and paraxylylenediamine in a mass ratio of less than 100/0 to greater than 60/40, which encompasses the ranges recited in claims 2 and 3.
Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05. Considering Mitsubishi’s teaching that the diamine used for reaction with epihalohydrin can be meta-xylylenediamine with less than 40% para-xylylenediamine, It would have been obvious to the person having ordinary skill in the art to have formed Mitsubishi’s polyglycidyl xylylenediamine by reaction of epihalohydrin with meta-xylylenediamine containing any content of para-xylylenediamine within a range of less 40%, including amounts which fall within the presently claimed ranges.
Mitsubishi fails to characterize the polyglycidyl compound as “an epoxy resin curing agent” as recited in the preamble of the claims. However, given that Mitsubishi’s reaction product has epoxy groups which have reactivity with “an epoxy resin,” and given that it meets the structural limitations recited in the present claims, there is reasonable basis to conclude that the polyglycidyl compound disclosed by Mitsubishi is capable of being a curing agent as presently recited. A claim preamble is not limiting if the body of the claim defines a structurally complete invention, and the preamble only states a purpose or intended use of the invention. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble.)
As to claim 6, Mitsubishi teaches that the polyglycidyl compounds can be mixed with other epoxy resins to lower the viscosity of the resin and improve the workability thereof (p 7, lines 8-33), which would result in a composition according to claim 6.
As to claims 7 and 8, Mitsubishi suggests a composition of epoxy resin and polyglycidyl compound meeting claim 6, as set forth above. Mitsubishi fails to characterize a composition of epoxy resin and polyglycidyl compound as a “paint” or adhesive” as recited in claims 7 and 8. However, as set forth above, a claim preamble is not limiting if the body of the claim defines a structurally complete invention, and the preamble only states a purpose or intended use of the invention. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble.) Mitsubishi suggests a composition comprising the recited components of claims 7 and 8, and there is reasonable basis to conclude that a composition of epoxy resin and polyglycidyl compound suggested by Mitsubishi is capable of being a paint or adhesive as presently recited.
Claim Rejections - 35 USC § 103
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al (US 5356961).
As to claims 1-5, Nishimura discloses a polyamine compound obtained by the reaction of epichlorohydrin (a compound having one epoxy group) with a stoichiometric excess of xylylenediamine (col 2, lines 45-61; col 3, lines 5-10). Nishimura teaches that “the preferred xylylenediamine is m-xylylenediamine, but there is usable a xylylenediamine containing p-xylylenediamine to some extent” (col 3, lines 25-27).
Nishimura fails to provide a specific permissible range corresponding to “some extent” of p-xylylenediamine. However, considering that m-xylylenediamine is disclosed as being preferred, one having ordinary skill in the art would have reasonably interpreted Nishimura’s teaching to use “some extent” of p-xylylenediamine to mean an amount less than the amount of m-xylylenediamine, and therefore, within a range of less than 50% of the xylylenediamines. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polyamine compound by reaction of epichlorohydrin and meta-xylylenediamine containing “some extent” of p-xylylenediamine, as disclosed by Nishimura, by utilizing any amount of p-xylylenediamine within a range of less than 50% based on total xylylenediamines, including an amount within the ranges of 1-49%, 1-29% and 15-25% (as recited in claims 1, 2 and 3, respectively), in order to provide a polyamine according to Nishimura’s general formula (I).
In a polyamine formed from reaction of epichlorohydrin and xylylenediamines, as suggested by Nishimura, the total content of meta- and para-xylylenediamines in the amine composition is 100 mass%, and the polyamine (corresponding to a “modified product” as presently recited) does not include any compound other than a reaction product of the xylylenediamines and the epoxy compound, meeting instant claims 4 and 5.
Nishimura fails to characterize the polyamine compound of formula (I) as an “epoxy resin curing agent.” However, given that Nishimura’s polyamine has amine end groups which have reactivity with “an epoxy resin,” and given that it meets the structural limitations recited in claim 1, there is reasonable basis to conclude that Nishimura’s polyamine compound is capable of being an epoxy resin curing agent as presently recited. A claim preamble is not limiting if the body of the claim defines a structurally complete invention, and the preamble only states a purpose or intended use of the invention. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble.)
Alternatively as to the recited preamble, Nishimura discloses subsequently reacting the polyamine compound with a carboxylic acid to form an amidoamine (col 2, lines 43-60). The amidoamine is then combined with an epoxy resin to obtain an epoxy resin composition (col 3, lines 50-65), and in examples, the amidoamine is characterized as a curing agent (see Table 1, col 5). Therefore, alternatively, Nishimura suggests an amidoamine curing agent which corresponds to the presently claimed epoxy resin curing agent.
[NOTE: An amidoamine formed from reacting an amine composition and an epoxy compound, followed by reaction with a carboxylic acid, can be considered “a reaction product an amine composition and an epoxy compound” (it could also be considered “a reaction product of a polyamine and a carboxylic acid”, or, “a reaction product of an amine composition, an epoxy compound and a carboxylic acid”). The presently recited reaction product is not limited to a reaction product of reactants consisting of an amine composition and an epoxy compound (i.e., unrecited reactants beyond the amine composition and the epoxy compound are not excluded from being utilized in the formation of the recited “reaction product”).]
As to claims 6-8, Nishimura suggests an amidoamine curing agent which corresponds to an epoxy resin curing agent as recited in claim 1, as set forth above. Nishimura discloses a composition comprising the amidoamine and an epoxy resin (col 2, lines 40-45 and lines 64-69). Nishimura further teaches that the composition can be utilized as a coating material for decoration or an adhesive (col 1, lines 5-13), meeting the presently recited “paint” and “adhesive” recited in claims 7 and 8, respectively.
Response to Arguments
Applicant's arguments filed 2/18/2026 have been fully considered.
Applicant argues that the structures of the diamines containing meta- and para-linkages discussed in Reyes (secondary reference) are too structurally dissimilar to xylylenediamines to be properly combined with Asai (primary reference) as in the rejection set forth in the final action mailed on 12/23/2025. Applicant’s arguments have been fully considered and are persuasive.
The search has been updated, and new prior art has been found which both anticipates and renders obvious the presently claimed subject matter. New rejections have therefore been made, and Reyes is no longer relied on in any rejection above.
Conclusion
Applicant's amendment (filed on 12/1/2025) 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766