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 Group I, claims 1-9, in the reply filed on 01/02/2026 is acknowledged. The traversal is on the ground(s) that the special technical feature is over the teachings of Bieber. This is not found persuasive because Group I (claims 1-6 and 9) and Group II (claims 19 and 20) lack unity of invention because even though the inventions of these groups require the technical feature of the curable composition 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 Bieber et al. (EP 2468792 A1, cited in IDS, made of record 05/24/2023). Bieber teaches an adhesive composition [0147] that is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), which reads on a curable composition comprising a non-aromatic epoxy resin, present in an amount of 18.92 parts by weight per 100 parts total weight of reactive components, a non-aromatic curing agent, and a colorant present in an amount of 0.08 wt. %, based on the total weight of the reactive components. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (8.13 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 18.92%. The wt. % of the colorant based on the total weight of the reactive components is based on the calculation (4 * 0.05 + 0.02) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 0.08%. Bieber teaches that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], which suggests using Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition, which would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (22.35 + 8.13 + 9.14 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 65.63%. Bieber teaches that the B-part further comprises 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, and 1.12 Glass beads, that the A-part further comprises 0.42 parts by weight of Calcium nitrate ([0147], Table 3, Example E3), that the Apyral 24 is aluminum trihydrate filler, that the Twaron 3091 is highly fibrillated aramid pulp with a fiber length between 0.7 and 1.1 mm, that the glass beads are glass beads class IV 300 µm ([0134], Table 2), that the pigment, the calcium nitrate, and the aluminum trihydrate are fillers [0107], that the aramid fibers are filler [0106], that the adhesive composition may contain any suitable amount of the filler [0110], and that in preferred embodiments, the adhesive composition contains 0.01 to 50 weight percent filler based on a total weight of the adhesive composition [0110], which suggests using Bieber’s Yellow pigment and Bieber’s Blue pigment to substitute for at least a fraction of Bieber’s 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, 1.12 Glass beads, and 0.42 parts by weight of Calcium nitrate in Bieber’s adhesive composition, which would read on wherein the curable composition comprises colorant present in an amount of 0.08 to 8.7 wt. %, based on the total weight of the reactive components. The wt. % of the colorant based on the total weight of the reactive components is based on the calculations (4 * 0.05 + 0.02) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 0.08% and (4 * (0.05 + 3.56 + 0.91 + 1.12) + 0.02 + 0.42) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 8.5%.
Bieber does not teach a specific embodiment of the curable composition comprising a non-aromatic epoxy resin, present in an amount of 50-95 parts by weight per 100 parts total weight of reactive components. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition. The proposed modification would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (22.35 + 8.13 + 9.14 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 65.63%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018].
Bieber does not teach a specific embodiment of the curable composition comprising a colorant present in an amount of between 0.1 and 10 wt. %, based on the total weight of the reactive components. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Bieber’s Yellow pigment and Bieber’s Blue pigment to substitute for at least a fraction of Bieber’s 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, 1.12 Glass beads, and 0.42 parts by weight of Calcium nitrate in Bieber’s adhesive composition, and to optimize a total amount of Bieber’s Yellow pigment and Bieber’s Blue pigment to be between 0.1 and 10 weight percent, based on the total weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silan Z6040, Bieber’s EDR176, Bieber’s F713, and Bieber’s Ancamine K54. The proposed modification would read on the curable composition comprising a colorant present in an amount of between 0.1 and 10 wt. %, based on the total weight of the reactive components as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing a desired color of Bieber’s adhesive composition, and for optimizing mechanical properties of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), that the B-part further comprises 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, and 1.12 Glass beads, that the A-part further comprises 0.42 parts by weight of Calcium nitrate ([0147], Table 3, Example E3), that the Apyral 24 is aluminum trihydrate filler, that the Twaron 3091 is highly fibrillated aramid pulp with a fiber length between 0.7 and 1.1 mm, that the glass beads are glass beads class IV 300 µm ([0134], Table 2), that the pigment, the calcium nitrate, and the aluminum trihydrate are fillers [0107], that the aramid fibers are filler [0106], that the adhesive composition may contain any suitable amount of the filler [0110], and that in preferred embodiments, the adhesive composition contains 0.01 to 50 weight percent filler based on a total weight of the adhesive composition [0110], which means that a total amount of Bieber’s Yellow pigment and Bieber’s Blue pigment in weight percent, based on the total weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silan Z6040, Bieber’s EDR176, Bieber’s F713, and Bieber’s Ancamine K54, would have affected a desired color of Bieber’s adhesive composition and mechanical properties of Bieber’s adhesive composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Bieber, namely that a cured composition that is the reaction product of the curable composition exhibits an overlap shear value on etched aluminum of at least 30 MPa, and that a cured composition that is the reaction product of the curable composition, upon exposure to an acid bath in accordance with the Acid Bath Test Method, exhibits a ΔE 94 color change of less than 1. However, Bieber renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the curable composition as explained above. Also, Bieber teaches that the adhesive composition has OLS of 31.1±0.8 MPa ([0148], Table 4, Example E3), wherein the OLS is overlap sheer strength of the adhesive composition on non-treated steel strips after the adhesive composition has been allowed to cure [0135, 0136]. Furthermore, the specification of the instant application recites that the curable compositions, upon curing, having strong adhesive properties and are color stable even upon exposure to harsh conditions (e.g., chemicals exposure, heat exposure, UV aging) (p. 3, l. 1-3), that the non-aromatic epoxy resins may be no color or low color and/or transparent resins (p. 3, l. 12-13), that the color of the curable compositions of the present disclosure may be established by the colorants included in the compositions (p. 3, l. 13-14; p. 4, l. 15-16), that the curing agents may include no color or low color and/or transparent curing agents (p. 4, l. 14-15), that the curable compositions of the present disclosure may exhibit color stability in the presence of heat, UV light, and household chemicals, as well as when exposed to chemical anodization or dye infusion processes (p. 6, l. 34-38), and that the cured compositions may have an overlap shear value on an etched aluminum substrate of at least 25 MPa, at least 30 MPa, or at least 35 MPa (p. 7, l. 8-10). Therefore, the claimed physical properties would naturally arise from the curable composition that is rendered obvious by Bieber. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 19 and 20 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/02/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Objections
Claims 1-6 and 9 are objected to because of the following informalities: Claim 1 recites “among” in line 5, which is a misspelling of “amount”. Appropriate correction is required.
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.
Claims 1-3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bieber et al. (EP 2468792 A1, cited in IDS, made of record 05/24/2023).
Regarding claim 1, Bieber teaches an adhesive composition [0147] that is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), which reads on a curable composition comprising a non-aromatic epoxy resin, present in an amount of 18.92 parts by weight per 100 parts total weight of reactive components, a non-aromatic curing agent, and a colorant present in an amount of 0.08 wt. %, based on the total weight of the reactive components. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (8.13 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 18.92%. The wt. % of the colorant based on the total weight of the reactive components is based on the calculation (4 * 0.05 + 0.02) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 0.08%. Bieber teaches that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], which suggests using Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition, which would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (22.35 + 8.13 + 9.14 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 65.63%. Bieber teaches that the B-part further comprises 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, and 1.12 Glass beads, that the A-part further comprises 0.42 parts by weight of Calcium nitrate ([0147], Table 3, Example E3), that the Apyral 24 is aluminum trihydrate filler, that the Twaron 3091 is highly fibrillated aramid pulp with a fiber length between 0.7 and 1.1 mm, that the glass beads are glass beads class IV 300 µm ([0134], Table 2), that the pigment, the calcium nitrate, and the aluminum trihydrate are fillers [0107], that the aramid fibers are filler [0106], that the adhesive composition may contain any suitable amount of the filler [0110], and that in preferred embodiments, the adhesive composition contains 0.01 to 50 weight percent filler based on a total weight of the adhesive composition [0110], which suggests using Bieber’s Yellow pigment and Bieber’s Blue pigment to substitute for at least a fraction of Bieber’s 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, 1.12 Glass beads, and 0.42 parts by weight of Calcium nitrate in Bieber’s adhesive composition, which would read on wherein the curable composition comprises colorant present in an amount of 0.08 to 8.7 wt. %, based on the total weight of the reactive components. The wt. % of the colorant based on the total weight of the reactive components is based on the calculations (4 * 0.05 + 0.02) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 0.08% and (4 * (0.05 + 3.56 + 0.91 + 1.12) + 0.02 + 0.42) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 8.5%.
Bieber does not teach a specific embodiment of the curable composition comprising a non-aromatic epoxy resin, present in an amount of 50-95 parts by weight per 100 parts total weight of reactive components. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition. The proposed modification would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. The parts by weight of non-aromatic epoxy resin per 100 parts total weight of reactive components is based on calculation (4 * (22.35 + 8.13 + 9.14 + 2.54) + 3.47 + 4.86) / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 65.63%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018].
Bieber does not teach a specific embodiment of the curable composition comprising a colorant present in an amount of between 0.1 and 10 wt. %, based on the total weight of the reactive components. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Bieber’s Yellow pigment and Bieber’s Blue pigment to substitute for at least a fraction of Bieber’s 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, 1.12 Glass beads, and 0.42 parts by weight of Calcium nitrate in Bieber’s adhesive composition, and to optimize a total amount of Bieber’s Yellow pigment and Bieber’s Blue pigment to be between 0.1 and 10 weight percent, based on the total weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silan Z6040, Bieber’s EDR176, Bieber’s F713, and Bieber’s Ancamine K54. The proposed modification would read on the curable composition comprising a colorant present in an amount of between 0.1 and 10 wt. %, based on the total weight of the reactive components as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing a desired color of Bieber’s adhesive composition, and for optimizing mechanical properties of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), that the B-part further comprises 3.56 parts by weight of Apyral 24, 0.91 parts by weight of Twaron 3091, and 1.12 Glass beads, that the A-part further comprises 0.42 parts by weight of Calcium nitrate ([0147], Table 3, Example E3), that the Apyral 24 is aluminum trihydrate filler, that the Twaron 3091 is highly fibrillated aramid pulp with a fiber length between 0.7 and 1.1 mm, that the glass beads are glass beads class IV 300 µm ([0134], Table 2), that the pigment, the calcium nitrate, and the aluminum trihydrate are fillers [0107], that the aramid fibers are filler [0106], that the adhesive composition may contain any suitable amount of the filler [0110], and that in preferred embodiments, the adhesive composition contains 0.01 to 50 weight percent filler based on a total weight of the adhesive composition [0110], which means that a total amount of Bieber’s Yellow pigment and Bieber’s Blue pigment in weight percent, based on the total weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silan Z6040, Bieber’s EDR176, Bieber’s F713, and Bieber’s Ancamine K54, would have affected a desired color of Bieber’s adhesive composition and mechanical properties of Bieber’s adhesive composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Bieber, namely that a cured composition that is the reaction product of the curable composition exhibits an overlap shear value on etched aluminum of at least 30 MPa, and that a cured composition that is the reaction product of the curable composition, upon exposure to an acid bath in accordance with the Acid Bath Test Method, exhibits a ΔE 94 color change of less than 1. However, Bieber renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the curable composition as explained above. Also, Bieber teaches that the adhesive composition has OLS of 31.1±0.8 MPa ([0148], Table 4, Example E3), wherein the OLS is overlap sheer strength of the adhesive composition on non-treated steel strips after the adhesive composition has been allowed to cure [0135, 0136]. Furthermore, the specification of the instant application recites that the curable compositions, upon curing, having strong adhesive properties and are color stable even upon exposure to harsh conditions (e.g., chemicals exposure, heat exposure, UV aging) (p. 3, l. 1-3), that the non-aromatic epoxy resins may be no color or low color and/or transparent resins (p. 3, l. 12-13), that the color of the curable compositions of the present disclosure may be established by the colorants included in the compositions (p. 3, l. 13-14; p. 4, l. 15-16), that the curing agents may include no color or low color and/or transparent curing agents (p. 4, l. 14-15), that the curable compositions of the present disclosure may exhibit color stability in the presence of heat, UV light, and household chemicals, as well as when exposed to chemical anodization or dye infusion processes (p. 6, l. 34-38), and that the cured compositions may have an overlap shear value on an etched aluminum substrate of at least 25 MPa, at least 30 MPa, or at least 35 MPa (p. 7, l. 8-10). Therefore, the claimed physical properties would naturally arise from the curable composition that is rendered obvious by Bieber. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 2, the Office recognizes that all of the claimed physical properties are not positively taught by Bieber, namely that the cured composition has a notched izod toughness value of at least 30 J/m. However, Bieber renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the curable composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the cured compositions may have a notched izod toughness value of at least 20 J/m, at least 30 J/m, or at least 40 J/m (p. 7, l. 11-12). Therefore, the claimed physical properties would naturally arise from the curable composition that is rendered obvious by Bieber. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 3, Bieber teaches that the A-part comprises Ancamine K54 ([0147], Table 3, Example E3), wherein the Ancamine K 54 is tris-(dimethylaminomethyl)-phenol that is an accelerator and catalyst ([0134], Table 2), which is a phenol with tertiary amino groups [0058], which reads on the curable composition of claim 1, further comprising an accelerator comprising a tertiary amine as claimed.
Regarding claim 9, Bieber teaches that the B-part comprises MX257 and K-Flex ([0147], Table 3, Example E3), that the MX257 is Kane Ace MX 257 that is a masterbatch of core shell particles, 37%, in a standard DGEBA resin, that the core is made of a neat polybutadiene polymer, that the shell is made of PMMA, that the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester ([0134], Table 2), and that the acetoacetoxy-functionalized low MW polyester is a reactive liquid modifier that can further enhance the impact resistance [0061], which reads on the curable composition of claim 1, further comprising a toughening agent as claimed.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bieber et al. (EP 2468792 A1, cited in IDS, made of record 05/24/2023) as applied to claim 1, and further in view of Elgimiabi et al. (EP 2700683 A1).
Regarding claims 4 and 6, Bieber renders obvious the curable composition of claim 1 as explained above. Bieber teaches that the A-part comprises EDR176 ([0147], Table 3, Example E3), wherein the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine) ([0134], Table 2), that the JEFFAMINE is an amine curing agent [0055], that the curing agent can preferably be a mixture of materials [0057], that the further curing agents may comprise other curing agents typically considered to be secondary curatives [0058], and that the optional secondary curative can be present in the first part of the curable adhesive composition with the epoxy resin and the reactive liquid modifier or in the second part of the curable adhesive composition with the curing agent [0060].
Bieber does not teaches that the curing agent comprises an anhydride-based curing agent and that the anhydride-based curing agent comprises an aliphatic or cycloaliphatic moiety. However, Elgimiabi teaches 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride that is an epoxy curing agent that is conventionally used for curing epoxy resin compositions and forming crosslinked polymer networks [0029], that the epoxy curing agent is present in a thermosettable composition that is present in a structural adhesive film [0006], that the thermosettable composition further comprises an epoxy compound [0006], and that the epoxy compound is optionally a polyglycidyl ethers of aliphatic or cycloaliphatic hydroxyl compounds [0019]. Bieber and Elgimiabi are analogous art because both references are in the same field of endeavor of a curable composition comprising a non-aromatic epoxy resin and a non-aromatic curing agent. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride to substitute for a fraction of Bieber’s EDR176 in Bieber’s adhesive composition. The proposed modification would read on the curing agent comprises an anhydride-based curing agent as claimed and that the anhydride-based curing agent comprises an aliphatic or cycloaliphatic moiety as claimed. One of ordinary skill in the art would have been motivated to do so because Elgimiabi teaches that the 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride is beneficial for being an epoxy curing agent that is conventionally used for curing epoxy resin compositions and forming crosslinked polymer networks [0029], that the epoxy curing agent is beneficial for being useful in a thermosettable composition that is present in a structural adhesive film [0006], that the thermosettable composition further comprises an epoxy compound [0006], and that the epoxy compound is optionally a polyglycidyl ethers of aliphatic or cycloaliphatic hydroxyl compounds [0019], and because Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride would have been beneficial for modifying curing properties of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], that the A-part comprises EDR176 ([0147], Table 3, Example E3), that the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine) ([0134], Table 2), that the JEFFAMINE is an amine curing agent [0055], that the curing agent can preferably be a mixture of materials [0057], that the further curing agents may comprise other curing agents typically considered to be secondary curatives [0058], and that the optional secondary curative can be present in the first part of the curable adhesive composition with the epoxy resin and the reactive liquid modifier or in the second part of the curable adhesive composition with the curing agent [0060].
Regarding claim 5, Bieber renders obvious the curable composition of claim 1 as explained above. Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, and 1.0 parts by weight of Silane Z6040, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, and 1.76 parts by weight of Ancamine K54 ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), and the JEFFAMINE is an amine curing agent [0055], which reads on the wherein the curable composition comprises 2.8 parts by weight of curing agent per 100 parts total weight of reactive components. The parts by weight of curing agent per 100 parts total weight of reactive components is based on the calculation 7.63 / (4 * (27.43 * (1 - 0.37) + 22.35 + 8.13 + 9.14 + 2.54 + 2.54 + 1.0) + 7.63 + 3.47 + 4.86 + 1.76) * 100% = 2.8%. Bieber teaches that the curing agent can preferably be a mixture of materials [0057], that the adhesive composition preferably contains at least 3 weight percent curing agent based on a total weight of the adhesive composition [0057], that the further curing agents may comprise other curing agents typically considered to be secondary curatives [0058], that the optional secondary curative can be present in the first part of the curable adhesive composition with the epoxy resin and the reactive liquid modifier or in the second part of the curable adhesive composition with the curing agent [0060], and that the amount of the secondary curable preferably is up to 6 weight percent based on a total weight of the curable adhesive composition [0060].
Bieber does not teach that the curable composition comprises 10-45 parts by weight of anhydride-based curing agent per 100 parts total weight of reactive components. However, Elgimiabi teaches 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride that is an epoxy curing agent that is conventionally used for curing epoxy resin compositions and forming crosslinked polymer networks [0029], that the epoxy curing agent is present in a thermosettable composition that is present in a structural adhesive film [0006], that the amount of epoxy curing agent in the thermosettable composition is typically comprised between 2 and 15 wt%, based on total weight of the thermosettable composition [0030], that the thermosettable composition further comprises an epoxy compound [0006], and that the epoxy compound is optionally a polyglycidyl ethers of aliphatic or cycloaliphatic hydroxyl compounds [0019]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride to substitute for a fraction of Bieber’s EDR176 in Bieber’s adhesive composition, and to optimize an amount of Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride in Bieber’s adhesive composition to be 10 parts by weight, based on 100 parts by weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silane Z6040, Bieber’s EDR176, Bieber’s F713, Bieber’s Ancamine K54, and Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride. The proposed modification would read on the curable composition comprises 10 parts by weight of anhydride-based curing agent per 100 parts total weight of reactive components as claimed. One of ordinary skill in the art would have been motivated to do so because Elgimiabi teaches that the 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride is beneficial for being an epoxy curing agent that is conventionally used for curing epoxy resin compositions and forming crosslinked polymer networks [0029], that the epoxy curing agent is beneficial for being useful in a thermosettable composition that is present in a structural adhesive film [0006], that the thermosettable composition further comprises an epoxy compound [0006], and that the epoxy compound is optionally a polyglycidyl ethers of aliphatic or cycloaliphatic hydroxyl compounds [0019], because Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride would have been beneficial for modifying curing properties of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], that the A-part comprises EDR176 ([0147], Table 3, Example E3), that the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine) ([0134], Table 2), that the JEFFAMINE is an amine curing agent [0055], that the curing agent can preferably be a mixture of materials [0057], that the further curing agents may comprise other curing agents typically considered to be secondary curatives [0058], and that the optional secondary curative can be present in the first part of the curable adhesive composition with the epoxy resin and the reactive liquid modifier or in the second part of the curable adhesive composition with the curing agent [0060], and because optimizing an amount of Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride in Bieber’s adhesive composition would have been beneficial for optimizing an extent of curing of Bieber’s adhesive composition when it is cured because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, and 1.0 parts by weight of Silane Z6040, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, and 1.76 parts by weight of Ancamine K54 ([0147], Table 3, Example E3), that the curing agent can preferably be a mixture of materials [0057], that the adhesive composition preferably contains at least 3 weight percent curing agent based on a total weight of the adhesive composition [0057], that the further curing agents may comprise other curing agents typically considered to be secondary curatives [0058], that the optional secondary curative can be present in the first part of the curable adhesive composition with the epoxy resin and the reactive liquid modifier or in the second part of the curable adhesive composition with the curing agent [0060], and that the amount of the secondary curable preferably is up to 6 weight percent based on a total weight of the curable adhesive composition [0060], and because Elgimiabi teaches that the 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride is an epoxy curing agent that is conventionally used for curing epoxy resin compositions and forming crosslinked polymer networks [0029], that the epoxy curing agent is present in a thermosettable composition that is present in a structural adhesive film [0006], and that the amount of epoxy curing agent in the thermosettable composition is typically comprised between 2 and 15 wt%, based on total weight of the thermosettable composition [0030], which means that an amount of Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride in Bieber’s adhesive composition in parts by weight, based on 100 parts by weight of Bieber’s MX257, Bieber’s Epon 828, Bieber’s Eponex 1510, Bieber’s DEN 431, Bieber’s Cardura E10P, Bieber’s K-Flex, Bieber’s Silane Z6040, Bieber’s EDR176, Bieber’s F713, Bieber’s Ancamine K54, and Elgimiabi’s 3-methyltetrahydroxyphthalic acid anhydride or 3-methyltetrahdroxyphthalic acid anhydride would have affected an extent of curing of Bieber’s adhesive composition when it is cured.
Response to Arguments
Applicant’s arguments, see p. 9, filed 01/02/2026, with respect to the rejection of claim 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claim 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant’s arguments, see p. 10-16, filed 01/02/2026, with respect to the rejection of claims 1-3 and 9 under 35 U.S.C. 102(a)(1) as being anticipated by Bieber et al. (EP 2468792 A1, cited in IDS, made of record 05/24/2023) have been considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant's arguments filed 01/02/02026 have been fully considered but they are not persuasive. In response to the applicant’s argument that the Examiner goes on to state that one could replace the aromatic epoxy with the non-aromatic epoxy and the justification for doing so is to improve viscosity before curing and mechanical properties after curing (p. 11), the Office states that one of ordinary skill in the art would have found it obvious to use Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition, and that the proposed modification would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. The Office does not state that the justification for doing so is to improve viscosity before curing and mechanical properties after curing. The Office states that one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2), that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018].
In response to the applicant’s argument that there is absolutely not justification for this assertion, since there is no teaching in Bieber to issues with viscosity of mechanical properties (p. 11), the Office’s statement for why one of ordinary skill in the art would have been motivated to make the proposed modification does not relate to viscosity of mechanical properties. The Office’s states that one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition. There is justification for the Office’s assertion because Bieber teaches that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], and that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2).
In response to the applicant’s argument that one of skill in the epoxy art knows that such a substitution, replacement of EPON 828 with a non-aromatic epoxy, is going to drastically affect the properties and that one would have to prepare the compositions and test them to know what the effect of the substitution is (p. 11), Bieber’s teachings provide a motivation for one of ordinary skill in the art to have found it obvious to use Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition. Bieber’s teachings provide a motivation that such a substitution would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition. Specifically, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], and that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2).
In response to the applicant’s argument that Bieber did not prepare any compositions that did not include aromatic epoxy, that if compositions without aromatic epoxy were obvious over Bieber, Bieber would have prepared such compositions, and that however, they are not present in Bieber (p. 11), although Bieber’s examples comprise aromatic epoxy, the rejection of the claims is not based on Bieber’s unmodified examples. They are based on the position that one of ordinary skill in the art would have found it obvious to modify Bieber’s example, that the proposed modification would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed, and based on Bieber’s teaching that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123(II)). Also, one of ordinary skill in the art would have been motivated to make the proposed modification because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition based on the above teachings of Bieber.
In response to the applicant’s argument that aromatic and non-aromatic epoxy resins give very different mechanical properties based on an article by Shree Vallahh Chemical (p. 12-16), Bieber’s teachings provide motivation for one of ordinary skill in the art to have found it obvious to make the proposed modification. Specifically, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], and that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2).
In response to the applicant’s argument that one of skill in the art is not taught, motivated or has an expectation of success in doing what the Examiner suggest, namely to replace the aromatic epoxy with a non-aromatic epoxy, and that rather such a replacement is likely to have adverse effects upon the cured compositions (p. 16), Bieber provides motivation for one of ordinary skill in the art to have found it obvious to use Bieber’s Eponex 1510, Bieber’s Cardura E10P, and Bieber’s F713 to substitute for Bieber’s 22.35 parts by weight of Epon 828 and Bieber’s 9.14 parts by weight of DEN 431 in Bieber’s adhesive composition, which would read on the curable composition comprising a non-aromatic epoxy resin, present in an amount of 66.62 parts by weight per 100 parts total weight of reactive components as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying viscosity characteristics before curing and mechanical properties after curing of Bieber’s adhesive composition because Bieber teaches that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], and that the adhesive composition [0147] is prepared by mixing A and B parts at a 1:4 volume ratio [0146], wherein the B-part comprises 27.43 parts by weight of MX257, 22.35 parts by weight of Epon 828, 8.13 parts by weight of Eponex 1510, 9.14 parts by weight of DEN 431, 2.54 parts by weight of Cardura E10P, 2.54 parts by weight of K-Flex, 1.0 parts by weight of Silane Z6040, and 0.05 parts by weight of Yellow pigment, and the A-part comprises 7.63 parts by weight of EDR176, 3.47 parts by weight of Eponex 1510, 4.86 parts by weight of F713, 1.76 parts by weight of Ancamine K54, and 0.02 parts by weight of Blue pigment ([0147], Table 3, Example E3), wherein the MX257 is a masterbatch of core shell particles, 37 %, in a standard DGEBA resin that is Epon 828 or equivalent, the Epon 828 is standard DGEBA-epoxy resin, the Eponex 1510 is hydrogenated bisphenol A, the DEN 431 is epoxy novolac, the Cardura E10P is glycidyl ester of VersaticTM acid 10, the K-Flex is K-Flex XM B301 that is acetoacetoxy-functionalized low MW polyester, the Silane Z6040 is γ-glycidyloxypropyltrimethoxysilane, the EDR176 is Jeffamine EDR 176 that is 3,3’-ethylenedioxybis(propylamine), the F713 is Grilonit F713 that is liquid polyTHF diglycidyl ether, and the Ancamine K54 is tris-(dimethylaminomehyl)-phenol that is an accelerator and catalyst ([0134], Table 2). One of ordinary skill in the art would have had a reasonable expectation of success in making the proposed modification and that it would not have adverse effects upon the cured composition because Bieber teaches that that the epoxy resins can be a single material or a mixture of materials selected to provide the desired viscosity characteristics before curing and to provide the desired mechanical properties after curing [0017], and that the portion of the epoxy resin molecule that is not an oxirane group can be aromatic, aliphatic, or a combination thereof and can be linear, branched, cyclic, or a combination thereof [0018], which means that Bieber permits all the epoxy resins to be aliphatic, linear, cyclic, or a combination thereof, and which means that Bieber permits the absence of aromatic epoxy resins.
In response to the applicant’s argument that the limitation of claim 10, the resistance to exposure to an acid bath without color change is not a property that Bieber discusses or even contemplates (p. 16), the Office recognizes that all of the claimed physical properties are not positively taught by Bieber, namely that a cured composition that is the reaction product of the curable composition, upon exposure to an acid bath in accordance with the Acid Bath Test Method, exhibits a ΔE 94 color change of less than 1. However, Bieber renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the curable composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the curable compositions, upon curing, having strong adhesive properties and are color stable even upon exposure to harsh conditions (e.g., chemicals exposure, heat exposure, UV aging) (p. 3, l. 1-3), that the non-aromatic epoxy resins may be no color or low color and/or transparent resins (p. 3, l. 12-13), that the color of the curable compositions of the present disclosure may be established by the colorants included in the compositions (p. 3, l. 13-14; p. 4, l. 15-16), that the curing agents may include no color or low color and/or transparent curing agents (p. 4, l. 14-15), and that the curable compositions of the present disclosure may exhibit color stability in the presence of heat, UV light, and household chemicals, as well as when exposed to chemical anodization or dye infusion processes (p. 6, l. 34-38). Therefore, the claimed physical properties would naturally arise from the curable composition that is rendered obvious by Bieber. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
In response to the applicant’s argument that Eligmiabi contains not teachings to overcome the fundamental lack of teaching in Bieber, and that claims 4-6 are patentable over the combination of Bieber and Eligmiabi for at least the reasons given above (p. 17), Bieber does not have a lack of teaching regarding claim 1 because Bieber renders obvious claim 1 as explained in the rejection of claim 1 that is set forth in this Office action and as explained above in the Office’s response to the applicant’s arguments against the rejection of claim 1. Bieber in view of Elgimiabi renders obvious claims 4-6 as explained in the rejection of the claims that is set forth in this Office action.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/DAVID T KARST/ Primary Examiner, Art Unit 1767
Prosecution Insights