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 .
Withdrawn Rejections
The 35 U.S.C. §103 rejection of claims 1, 3, 6-7 and 10 as over Kolbe et al. (US 2004/0249037 A1), made of record in the office action mailed 07/07/2025, page 2 has been withdrawn due to Applicant’s amendment in the response filed on 10/06/2025.
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.
Claim(s) 1, 3, 7 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (US 2004/0249037 A1) in view of Harada et al. (JP H08213727).
Regarding claims 1, 3, 7, 31 Kolbe discloses filler particles consisting of inductively excitable materials, such as iron, iron alloys, or iron oxides, in the interior of the particles and a particle surface comprising silicon dioxide (i.e. inorganic material coating) (paras 0015, 0024), where the iron alloys are metals combining two metals and stainless steel which encompasses iron alloys made of Iron and nickel. The filler particles are also surface modified with a monomer, i.e. epoxysilane, and can further react with a polymer (paras 0024 and 0039). The adhesive compositions according to the invention preferably contain filler particles that are surface-modified and are selected from the group comprising iron, iron alloys and iron-containing metal oxides. For example, nanoscale magnetite powder with a silicon dioxide shell may be surface-modified or functionalised with epoxide groups by reaction with 3-glycidoxypropyltrimethoxysilane (para 0024). The filler particles may have a diameter of 2-100 nm (para 0022). The fillers are used in adhesive compositions to facilitate curing through inductively heating the composition by means of an alternating magnetic field (para 0054).
However, the recitation in the claims that the adhesive additive is “for magnetically curing an adhesive” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kolbe disclose adhesive additive as presently claimed, it is clear that the adhesive additive of Kolbe would be capable of performing the intended use, i.e. for magnetically curing an adhesive, presently claimed as required in the above cited portion of the MPEP.
However, Kolbe fails to disclose that the particle surface coating comprises organic surfactant.
Whereas, Harada discloses laminated board in which the end face and the exposed iron based metal part are subjected to rustproof processing without causing any deterioration of characteristics at other parts (abstract). Harada discloses an iron-based metal base material of the metal core-copper clad laminate and on the exposed iron-based metal portion as needed, a portion containing a chemical agent containing an organic surfactant mixture containing an amine-based nonionic surfactant as a main component It is characterized by being subjected to rust prevention treatment. The chemical agent for the partial anticorrosive treatment of the present invention is a chemical agent containing an organic surfactant mixture containing an amine nonionic surfactant as a main component. The amine-based nonionic surfactant as the main component can be preferably polyoxyethylene alkylamine in which 5 to 15 monomers are polymerized. The carbon number of the alkyl group can be preferably 12 to 17. The chemical agent for partial rust prevention treatment of the present invention contains a small amount of sorbitan fatty acid ester and polyhydric alcohols as an auxiliary component of the mixture. The alkyl group of the sorbitan fatty acid ester preferably has 12 to 17 carbon atoms. The polyhydric alcohol is preferably ethylene glycol (page 3 and 5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include organic surfactant mixture containing an amine-based nonionic surfactant as taught by Harada in the particle surface coating of Kolbe motivated by the desire to have rust prevention properties.
As Kolbe in view of Harada discloses magnetic nanoparticle as presently claimed, it therefore would be obvious that magnetic nanoparticle would intrinsically product thermal energy in response to an alternating magnetic field applied thereto for the adhesive substrate to form cross-linkages.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (US 2004/0249037 A1) in view of Harada et al. (JP H08213727) as applied to claim 1, further in view of Mitsunaga et al. (US 2012/0061608).
Regarding claim 2, Kolbe fails to disclose that the magnetic nanoparticle is represented by the claimed formula.
Whereas, Mitsunaga discloses magnetic particle to which a target substance can bind, comprising a core particle having magnetism and a polymer coat layer comprising a polymer shell portion in which a rough coating of polymer is provided on a surface of the core particle (abstract). Mitsunaga discloses ferromagnetic oxide particle is a ferromagnetic iron oxide particle since it has an excellent sensitivity to the magnetic field/magnetic flux. As the ferromagnetic iron oxide for such particle, various kinds of known ferromagnetic iron oxides may be used. Particularly, it is preferred that the ferromagnetic iron oxide is at least one kind of ferrite selected from the group consisting of maghemite (.gamma.-Fe.sub.2O.sub.3), magnetite (Fe.sub.3O.sub.4), nickel zinc ferrite (Ni.sub.1-xZn.sub.xFe.sub.2O.sub.4) and manganese zinc ferrite (Mn.sub.1-xZn.sub.xFe.sub.2O.sub.4) since they have an excellent chemical stability.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include nickel zinc ferrite or manganese zinc ferrite as taught by Mitsunaga as the metal of the magnetic nanoparticle of Kolbe motivated by the desire to have excellent chemical stability.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (US 2004/0249037 A1) in view of Harada et al. (JP H08213727) as applied to claim 1, further in view of Matsushita et al. (JP 2018/073897) or Harano et al. (CN 106716562).
Regarding claim 9, Kolbe fails to disclose that the monomer further comprises a hardener, where the hardener comprises a dicyandiamide.
Whereas, Matsushita discloses mixing the soft magnetic metal particles 212 as the inorganic filler with the resin 210, the magnetic permeability of the matrix material 20M is increased, and thereby the inductance value of the carbon coil 211 is further improved (page 6). Matsushita discloses thermally active latent epoxy resin curing agent: Dicyandiamide (page 16).
Alternatively, Harano discloses magnetic core insulating property and its manufacturing method. it makes the particle surface to form the magnetic core iron-based soft magnetic powder after the compression molding of resin coating thermal curing to manufacture; the iron-based soft magnetic powder is the surface of the powder particles to the iron-based soft magnetic powder of the inorganic insulating coating treatment, the resin coating is formed into lower temperature to heat curing start temperature and not more than the softening temperature of the thermosetting resin of the uncured resin for dry mixing coating (abstract). The iron-based soft magnetic powder particles formed on the surface of the resin film is a latent curing agent for epoxy resin. In particular, wherein the latent curing agent is dicyandiamide (page 3).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include curing agent such as dicyanide in the epoxy monomer of Kolbe motivated by the desire to have improved curing properties to initiate and accelerate the cross-linking process.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (US 2004/0249037 A1) in view of Harada et al. (JP H08213727) as applied to claim 1, further in view of Zhang et al. (US 2016/0279303).
Regarding claim 10, Kolbe fails to disclose that coating comprises polymer and the polymer is polycaprolactone.
Whereas, Zhang discloses iron alloy substrate and a degradable polymer in contact with the surface of the substrate (abstract). The degradable polyester is any one of the followings: polylactic acid, polyglycolic acid, poly(butylene succinate), poly (beta-hydroxybutyrate), polycaprolactone (claim 51).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include organic surfactant such as polycaprolactone as taught by Zhang in the particle surface coating of Kolbe motivated by the desire to have improved toughness.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kolbe et al. (US 2004/0249037 A1) in view of Harada et al. (JP H08213727) as applied to claim 1, further in view of Bosnyak et al. (US 2018/0151885).
Regarding claim 11, Kolbe fails to disclose filler particles further comprises carbon allotrope.
Whereas, Bosnyak discloses composition comprising discrete functionalized carbon nanotubes attached to microfibrillated fibers and a plurality of the discrete carbon nanotubes are opened ended is disclosed. The composition may further comprise electroactive, photoactive, magnetic or catalyst particles (abstract). The nanoparticle is a magnetic particle. The magnetic particle is capable of being manipulated by magnetic fields. The magnetic particle can be paramagnetic or superparamagnetic (para 0011, claim 10). The composition further comprises a nanoparticle (claim 7). The composition further comprises carbon allotrope and are selected from graphene, graphite (claim 26-27).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include graphene or graphite as taught by Bosnyak in the adhesive composition of Kolbe motivated by the desire to have improved strength and flexibility.
Response to Arguments
Applicants arguments filed on 10/06/2025 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788