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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 2018/0258329 A1).
Regarding Claims 1 and 4-14, Koch discloses a one-component epoxy structural adhesive comprising at least one epoxy resin, a reactive toughener, one or more epoxy curing agents, and one or more epoxy curing catalysts (paras 0006-0011).
The toughener is made by reacting a 2000 molecular weight polytetrahydrofuran (poly(tetramethylene oxide) diol) and a 2800 molecular weight, hydroxyl-terminated polybutadiene rubber with hexamethylene diisocyanate in the presence of a tin urethane catalyst, followed by chain extension with o,o-diallylbisphenol A and end-capping with cardanol (CNSL) (para 0083). The reactive toughener comprises 5 to 45 wt% of the adhesive composition (para 0047).
In light of the overlap between the claimed composition and that disclosed by Koch, it would have been obvious to one of ordinary skill in the art to use an adhesive composition that is both disclosed by Koch and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 2, Koch discloses all the limitations of the present invention according to Claim 1 above. Koch further discloses the epoxy resin may comprise a mixture of solid and liquid diglycidyl ethers of bisphenol A (para 0079).
Regarding Claim 3, Koch discloses all the limitations of the present invention according to Claim 1 above. Koch further discloses the epoxy resin may be DER 331 (para 0016), which according to page 16 of the present specification corresponds to the claimed epoxy resin (1).
Regarding Claim 15, Koch discloses all the limitations of the present invention according to Claim 1 above. While Koch does not disclose adhesion failure of the lap shear specimens, given that Koch discloses adhesive composition identical to that claimed, the adhesive composition of Koch would inherently exhibit adhesion failure as claimed.
Regarding Claim 16, Koch discloses all the limitations of the present invention according to Claim 1 above. Koch further discloses the adhesive composition bonding two substrates to form an assembly (para 0069).
Regarding Claim 17, Koch discloses all the limitations of the present invention according to Claim 16 above. Koch further discloses the substrates may comprise aluminum, steel, fiberglass, or plastic (para 0072).
Response to Arguments
In light of applicant’s amendment filed 09/15/2025, the Claim Objections and 35 USC 112(b) rejections of record are withdrawn.
Applicant's arguments filed 09/15/2025 have been fully considered but they are not persuasive.
Applicant argues that the low level of toughener (at or below 16%) used in the present invention produces unexpected and improved results.
However, this is not persuasive because the data is not commensurate in scope with the scope of the claims. The data uses specific epoxy resins, reactive tougheners, epoxy curing agents, and epoxy curing catalysts, in specific amounts, while the claims broadly recite any epoxy resin, any epoxy curing agent(s), and any epoxy curing catalyst(s) each in any amounts, and any reactive toughener as claimed. Further there is no data at the lower end of the claimed amount of reactive toughener.
Examiner notes that Example E1 does have the claimed upper limit of toughener (16%), but there is not a proper side-by-side comparative example. CE1 and CE2 compensate for the higher percentage of toughener by changing the amounts of both the solid-liquid epoxy resin mix and the Dyhard 100SF.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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, Callie Shosho can be reached at 571-272-1123. 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.
/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights