DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of claims 1-9 in the reply filed on 5/19/2026 is acknowledged. The traversal is on the ground(s) that the subject matter of all of the claims is sufficiently related that a thorough search for the subject matter of any one Group of claims would encompass a search for the subject matter of the remaining claims. This is not found persuasive because the application is a national stage application.
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).
Groups 1-6 lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yamanaka US 6218482 B1 in view of Qureshi US 4593056.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Qureshi US 4593056 in view of Yamanaka US 6218482 B1.
Regarding claims 1-6, Qureshi teaches a reaction between a diamine hardener and an epoxy compound (Abstract). Qureshi teaches the epoxy compound can be a polyglycidyl derivative of a phenol formaldehyde novolak (Col. 6 Lines 9-10). Qureshi also teaches a commercially available resin is D.E.N 431. It would have been obvious to use D. E.N. 431 as the epoxy compound of Qureshi because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. The Instant specification teaches that D.E.N. 431 has an average functionality of 2.8. This falls within the claimed range of 2.5 to 4. However Qureshi is silent on the type of diamine hardener.
Qureshi teaches the composition can be used in coating applications (Col. 12 Lines 42-45).
Yamanaka teaches an epoxy hardening reaction between N-benzylethylenediamine reacted with an epoxy compound (Col. 13 Lines 54-58; Col. 14 Lines 1-18). The amine N-benzylethylenediamine reads on the limitations of claim 1 where Z is H, A is a divalent alkylene with two carbon atoms (1,2, ethylene), and Y is an aryl group having 6 carbon atoms, phenyl). Yamanaka suggests the epoxy compound is a novolak based epoxy resins (Col. 16, lines 40-41).
Yamanaka also teaches the composition is used in coating applications (Title, Col. 1 Lines 10-15)
It would have been obvious to one of ordinary skill in the art to use the epoxy diamine hardener of Yamanaka as the diamine hardener of Qureshi because Yamanaka teaches a suitable diamine hardener that reacts with novolak epoxy resins for coating applications. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
Regarding claim 7, Qureshi teaches in Table IV, Example 11, Bis(2,3 -epoxycyclopentyl) ether is present in amounts of 100 grams (which has 2 epoxy groups per molecule) and the amine is present in amounts of 114 grams. The molar ratio of amine to epoxy is therefore, 0.333 moles of amine per mole of epoxy group. This overlaps with the claimed range of less than 3 moles.
Regarding claims 8, Qureshi in view of Yamanaka teaches a reaction between D.E.N. 431 and N-benzylethylenediamine. Qureshi in view of Yamanaka does not expressly disclose the resulting structure of the reaction. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore the resulting product of D.E.N. 431 and N-benylethylenediamine will necessarily have the structure of formula (III).
Regarding claim 9, Qureshi in view of Yamanaka teaches a reaction between D.E.N. 431 and N-benzylethylenediamine. Qureshi in view of Yamanaka does not expressly disclose the viscosity of the resulting adduct. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore the adduct will necessarily have the claimed viscosity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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