DETAILED ACTION
Pending Claims
Claims 1-4, 6, and 9-20 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Response to Amendment
The objection to claims 5, 7, and 8 under 37 CFR 1.75(c), as being in improper form, has been rendered moot by the cancellation of these claims.
The objection to claims 4, 6, 9-16, and 20 under 37 CFR 1.75(c), as being in improper form, has been overcome by amendment.
The rejection of claims 2, 3, and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph (indefinite), has been overcome by amendment.
The rejection of claims 1-3 and 17-19 under 35 U.S.C. 102(a)(1) as being anticipated by Vedage et al. (US Pat. No. 9,546,243) has been overcome by amendment.
The rejection of claims 1-3 and 17-19 under 35 U.S.C. 102(a)(2) as being anticipated by Vedage et al. (US Pat. No. 9,546,243) has been overcome by amendment.
The rejection of claims 1-3 under 35 U.S.C. 102(a)(1) as being anticipated by Bagga et al. (US Pat. No. 4,701,378) has been overcome by amendment.
The rejection of claims 1-3 under 35 U.S.C. 102(a)(2) as being anticipated by Bagga et al. (US Pat. No. 4,701,378) has been overcome by amendment.
The rejection of claims 1-3 under 35 U.S.C. 102(a)(1) as being anticipated by Bagga et al. (US Pat. No. 4,659,779) has been overcome by amendment.
The rejection of claims 1-3 under 35 U.S.C. 102(a)(2) as being anticipated by Bagga et al. (US Pat. No. 4,659,779) has been overcome by amendment.
The rejection of claims 17-19 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bagga et al. (US Pat. No. 4,701,378) has been overcome by amendment.
The rejection of claims 17-19 under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bagga et al. (US Pat. No. 4,701,378) has been overcome by amendment.
The rejection of claims 17-19 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bagga et al. (US Pat. No. 4,659,779) has been overcome by amendment.
The rejection of claims 17-19 under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bagga et al. (US Pat. No. 4,659,779) has been overcome by amendment.
The rejection of claims 1-3 on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 9,546,243 has been overcome by amendment.
The rejection of claims 17-19 on the ground of nonstatutory double patenting as being unpatentable over claims 19-24 of U.S. Patent No. 9,546,243 in view of Bagga et al. (US Pat. No. 4,701,378) and Bagga et al. (US Pat. No. 4,659,779) has been overcome by amendment.
Claim Objections
Claims 3, 4, 19, and 20 are objected to because of the following informalities:
For improved clarity, claim 3 should state:
The composition according to claim 2, wherein the amine comprises one or more of 3,3',3"-Imino-tris-(N,N-dimethylpropylamine), 1,8-Diazabicyclo(5.4.0)undec-7-ene (DBU), triethylene diamine (TEDA), 1-(3-aminopropyl)imidazole, 2-methylimidazole, 2-ethyl-4-methylimidazole, [(dimethylamino)methyl]phenol, bis-[(dimethylamino)methyl]phenol, and
For improved clarity, claim 4 should state:
The composition according to claim 3, wherein the amine is selected from [(dimethylamino)methyl]phenol, bis-[(dimethylamino)methyl]phenol,
For improved clarity, claim 19 should state:
The method according to claim 17, wherein the composition is a latent curing agent for an epoxy resin, or wherein the composition is used as an accelerator for a curing agent
For improved clarity, claim 20 should state:
The method according to claim 19, wherein the composition is used as a latent curing accelerator for: structural adhesives, , electrical encapsulation, compositions for reinforcement and/or dampening, cured in place pipe, crash durable adhesives, filament winding, transfer molding powders, prepreg with solid or liquid epoxy, sheet molding compound, coatings on concrete, coatings on wood, coatings on metal, resin transfer molding, or EV battery pack adhesives.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 14, the claim includes the limitation: “about 1:4 to about 4:1, e.g., about 1:3 to about 3:1, about 2:1 to about 1:2, or about 1:1”. The phrase "e.g." (for example) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (JP 2021-038314 A1).
Regarding claims 1-3 and 17-20, Maeda et al. disclose: (1) a latent curing accelerator composition (paragraphs 0031-0054) comprising: an amine (paragraphs 0032-0034), and an encapsulant system (paragraphs 0046-0054);
(2) wherein the amine is selected from at least one of: (a) alkyl or aryl substituted tertiary amines; (b) tertiary amines with greater than two peralkylated nitrogen atoms; (c) tertiary amines with greater than two permethylated nitrogen atoms; (d) N,N-dimethyl polyamines bearing at least one primary and one secondary amine; (e) bridged or fused bicyclic diamines; and/or (f) imidazole optionally substituted with alkyl, aryl, alkyl aryl, alkyl ether, alkylamino, or at least one halogen (paragraphs 0032 & 0034); (3) wherein the amine comprises one or more of 3,3',3"-Imino-tris-(N,N-dimethylpropylamine), 1,8-Diazabicyclo(5.4.0)undec-7-ene (DBU), triethylene diamine (TEDA), 1-(3-aminopropyl)imidazole, 2-methylimidazole, 2-ethyl-4-methylimidazole, [(dimethylamino)methyl]phenol, bis-[(dimethylamino)methyl]phenol, tris- (dimethylaminomethyl)phenol, and mixtures of bis- and tris-(dimethylamino)methyl- substituted phenols (paragraph 0034);
(17) a method for curing a substance through use of a latent curing accelerator composition comprising an amine and an encapsulant system (paragraph 0088), the method comprising the step of combining the substance with the latent curing accelerator composition and heating the resulting mixture (paragraphs 0088 & 0091); (18) wherein the substance is an epoxy resin (paragraph 0088); (19) wherein the composition is a latent curing agent for an epoxy resin, or wherein the composition is used as an accelerator for a curing agent for epoxy resin (paragraph 0088); and (20) wherein the composition is used as a latent curing accelerator for: structural adhesives, composites, electrical potting, electrical encapsulation, compositions for reinforcement and/or dampening, cured in place pipe, crash durable adhesives, filament winding, transfer molding powders, prepreg with solid or liquid epoxy, sheet molding compound, coatings on concrete, coatings on wood, coatings on metal, resin transfer molding, or EV battery pack adhesives (paragraph 0112).
Maeda et al. fail to disclose: (1-3 & 17-20) an encapsulant system comprising: a polyphenol resin, wherein the polyphenol resin is a phenolic novolac resin, and an additional excipient, wherein the additional excipient is a functional polymeric compound selected from a polyamide resin, a polybutadiene resin, a polyalkylene glycol, and an acrylic resin. Rather, they contemplate the use of multiple resin “shells” (see paragraph 0047). These include phenolic resins and nylon resins (see paragraphs 0047, 0049 & 0052). The phenolic resins are condensation products of phenolic compounds and aldehyde compounds (see paragraph 0049), which are also known as phenolic novolac resins; and the nylon resins are polyamide resins. These phenolic and nylon resin “shells” are presented as equivalent resin “shells” for their microcapsule-type latent curing agent. In light of this, it has been found that combining equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the microcapsule-type latent curing agent of Maeda et al. with the instantly claimed encapsulant system because: (a) Maeda et al. contemplate the use of multiple resin “shells”, including phenolic resins and nylon resins; (b) the phenolic resins of Maeda et al. are condensation products of phenolic compounds and aldehyde compounds, which are also known as phenolic novolac resins; (c) the nylon resins of Maeda et al. are polyamide resins; (d) these phenolic and nylon resin “shells” of Maeda et al. are presented as equivalent resin “shells” for their microcapsule-type latent curing agent; and (e) it has been found that combining equivalents known for the same purpose is prima facie obvious.
Regarding claim 14, the teachings of Maeda et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (14) wherein the weight ratio of the polyphenol to the additional excipient is about 1:4 to about 4:1. However, the obvious combination of equivalent “shells” would have obviously embraced combinations satisfying the instantly claimed weight ratio, including a 1:1 equal parts ratio.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the instantly claimed weight ratio of polyphenol and excipient in the microcapsule-type latent curing agent of Maeda et al. because: (a) the obvious combination of equivalent “shells” in the teachings of Maeda et al. would have obviously embraced combinations satisfying the instantly claimed weight ratio; and (b) these include embodiments having a 1:1 equal parts ratio.
Regarding claims 15 and 16, the teachings of Maeda et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (15) wherein the curable epoxy system does not gel after 4 weeks under accelerated aging conditions; and (16) wherein the curable epoxy system gives a lap shear of at least 500 psi. However, the skilled artisan would have expected the teachings of Maeda et al. to obviously embrace embodiments capable of satisfying these future intended use properties because the teachings of Maeda et al. obviously satisfy all of the material/chemical limitations of the claimed invention.
Therefore, the skilled artisan would have expected the teachings of Maeda et al. to obviously embrace embodiments capable of satisfying the instantly claimed future intended use properties because: the teachings of Maeda et al. obviously satisfy all of the material/chemical limitations of the claimed invention.
Claims 1-3, 6, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (JP 2021-038314 A1) in view of Ming et al. (US 2013/0090431 A1).
Regarding claims 1-3 and 14-20, the teachings of Maeda et al. are as set forth above and incorporated herein. As discussed above, the phenolic resins of Maeda et al. are condensation products of phenolic compounds and aldehyde compounds (see paragraph 0049). The teachings of Ming et al. support the notion that these resins are also known as phenolic novolac resins (see paragraph 0025).
Regarding claim 6, the teachings of Maeda et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (6) wherein the polyphenol resin has a molecular weight between about 5,000 D and about 30,000 D.
Ming et al. disclose a similar latent material derived from an amine and a phenolic resin, which is used for the curing of epoxy resins (see Abstract; paragraphs 0008-0009 & 0013-0028). They demonstrate that the instantly claimed molecular weight range is recognized in the art as a suitable molecular weight for the phenolic resin in this type of latent material (see paragraph 0027). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a phenolic resin having the instantly claimed molecular weight in the microcapsule-type latent curing agent of Maeda et al. because: (a) Ming et al. disclose a similar latent material derived from an amine and a phenolic resin, which is used for the curing of epoxy resins; (b) Ming et al. demonstrate that the instantly claimed molecular weight range is recognized in the art as a suitable molecular weight for the phenolic resin in this type of latent material; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 13, the teachings of Maeda et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (13) wherein the weight ratio of the amine to the encapsulation system is about 1:0.3 to about 1:10; or about 1:0.3 to about 1:2; or about 1:0.5 to about 1:1.5; or about 1:0.8, or about 1:1.1, or about 1:1.4.
As discussed above, Ming et al. disclose a similar latent material derived from an amine and a phenolic resin, which is used for the curing of epoxy resins (see Abstract; paragraphs 0008, 0013-0028). They demonstrate that the instantly claimed amine to resin ratio is recognized in the art as a suitable weight ratio for this type of latent material (see paragraph 0028). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the instantly claimed weight ratio in the microcapsule-type latent curing agent of Maeda et al. because: (a) Ming et al. disclose a similar latent material derived from an amine and a phenolic resin, which is used for the curing of epoxy resins; (b) Ming et al. demonstrate that the instantly claimed amine to resin ratio is recognized in the art as a suitable weight ratio for this type of latent material; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 4 and 9-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
March 13, 2026