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 without traverse of Group I, claims 1-15, in the reply filed on 21 November 2025 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 21 November 2025.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities: claim 3 has an open parenthesis in the clause in line 6 beginning with “e.g.,” without a closed parenthesis. 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.
Claims 1-15 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.
Claim 1 (from which claims 2-15 depend) recites “an encapsulant system comprising an additional excipient . . . “. The term “additional excipient” in the absence of any other components render the claim unclear as to whether other components are required in the encapsulant system.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitations ‘tertiary amines” and “imidazole optionally substituted . . .”, and the claim also recites “(e.g., mono tertiary amines”), “e.g., alkylamino substituted imidazoles . . .” and “e.g., 2-methylimidazole” which are narrower statements of the ranges/limitations. Claim 3 (from which claim 4 depends) recites “tris-(dimethylaminomethyl)phenol” and also recites “(e.g., 2,4,6-tris-(dimethylaminomethyl)phenol . . . )”, which is a narrower statement. Claim 4 likewise has a similar further narrowing limitation as claim 3. Claim 5 (from which claims 6, 7, and 11-15 depend) recites “a functional polymeric compound,” and also recites “e.g., a polymeric compound containing one or more carboxy and/or hydroxy groups,” a narrower statement of the claim. Claim 14 recites “accelerated aging conditions” and also recites “(e.g., storage for 4 weeks at 40 degrees C”), which is a narrower statement of the claim. Claim 15 recites “a lap shear of at least 500 psi,” and also recites “e.g., between about 500 psi and 1700 psi”.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 recites a structure formula with “m” and “n” which appear to indicate number of repeating units; however, neither the specification and claims define m or n, and as such, the limitations of the structure are indeterminate.
Claims 13 and 15 each recite ranges in which the endpoints of the ranges are “about” some quantity; the specification does not provide any suggestion for what values are “about” these endpoint limitations; these are especially indeterminate since these quantities are used to delineate a range, and therefore introduce uncertainty into the recited range.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-10, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,994,475 (“Roth”).
As to claims 1-3 and 5-10, Roth teaches a latent curing agent (1:25-30) comprising an amine and a functional polymer. As an example, Example II..1, 10:35-45, teaches a combination of 2-ethyl-4-methylimidazole and a microgel, the microgel being an acrylic polymer having carboxyl groups (8:55-9:15). This microgel is a functional polymer as required by claim 5, an acrylic resin as required by claims 6 and 7, and has a structure according to claim 8 (having units from methacrylic acid, ethyl acrylate, methyl methacrylate, which meet the formula where R1 is methyl or hydrogen, and R2 is hydrogen or C1-2 alkyl, is formed by free radical polymerization of acrylic monomers as required by claims 5-10. It is therefore presumed to meet the recitation of an encapsulant system. Since the 2-ethyl-4-methylimidazole is the same as recited (see claim 3), it is presumed to be an accelerator.
As to claim 13, Roth, Example II.1, teaches 5.95 g of the amine with 100 g of an emulsion of the microgel polymer, which has a solid content of 13.8 % (9:10-16), which is calculated as providing a ratio of amine to encapsulation system (microgel) of 1:2.3.
As to claim 14, while Roth does not state that the composition is nongelling at the recited temperature over the recited time frame, Roth teaches storage stability. Further, since Roth teaches the same composition, it is presumed to have the same storage stability.
Claim(s) 1-10, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0343228 (“Liu”).
As to claims 1-10, Liu teaches a latent catalyst (accelerator) (abstract). Liu teaches catalysts formed from an amine, specifically exemplified by 2,4,6-tris(dimethylaminomethyl)phenol, which is an amine according to claims 1-4 (para. 0077) mixed with ethylene acrylic acid copolymer (para. 0076). The ethylene acrylic acid polymer is a carboxy functional polymeric compound as required by claim 5, an acrylic resin as required by claims 6 and 7, having a structure according to the formula of claim 8 where R2 is hydrogen and R1 is H, and is formed by radical polymerization of ethylene (vinyl) and acrylic (acrylic acid) with unsaturated monomers having carboxy groups (acrylic acid) as required by claims 9 and 10. As such, it is presumed that this polymer meets the recitation of an encapsulant system with a functional component.
As to claim 13, Liu teaches Catalyst 1 in which the DMP-30 and Primacor 5980i are mixed at a 2:1 amine:COOH equivalent ratio. Based on the structure and weight of 2,4,6-tris(dimethylaminomethyl)phenol and the carboxylic acid content of Primacor 5980i (Tables 1 and 2), it is calculated that the amine and encapsulant (polymer) are present in an approximately 1:2.5 ratio.
As to claim 14, while Liu does not discuss lack of gelation at accelerated aging conditions, Liu teaches an curable epoxy system with the catalyst that can last months without appreciable change in viscosity; see Table 3. Given the identity of the composition with that claimed, and the teaching of long storage stability, it is reasonable to expect that the epoxy resin composition meets the recited characteristic.
Claim(s) 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,726,222 (“Sawaoka”).
As to claims 1-3, Sawaoka teaches a microcapsule curing agent that is storage stable at room temperature (abstract), thus a latent curing agent. Sawaoka teaches that the curing agent includes accelerators (3:65-67), and exemplifies imidazoles such as 2-methylimidazole as required by claims 2 and 3 (10:10-16), and thus contemplates amine curing accelerators as required by claims 1 and 2. Sawaoka teaches a coating, thus encapsulant system, that is a thermoplastic polymer (B) (abstract; 10:10-26, teaching 2-methylimidazole coated with polyetherimide). The limitation “functional or non-functional” is construed to include all excipients; thus the thermoplastic polymer meets the recitation of additional excipient.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 5, 6, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,726,222 (“Sawaoka”) in view of EP 3246349 A1 (“Momcilovic”).
The discussion of Sawaoka with respect to claim 1 is incorporated by reference.
As to claims 5, 6, and 12, Sawaoka does not discuss whether the excipient (polymer) is functional. However, Sawaoka teaches that the thermoplastic polymer coating may preferably be polyamide (5:29-34). While not explicitly stated, it is known that thermoplastic polyamides are typically a product of dicarboxylic acids and diamines, and it is therefore known that polyamides have carboxyl end units, as known from Momcilovic, para. 0043. As such, it would be an obvious modification to use an amine curing accelerator in conjunction with a polyamide encapsulant, and it is obvious to use functional polyamide having carboxyl groups, as is known to be typical for polyamide.
As to claim 14, while not exemplified with polyamide, Sawaoka teaches the use of encapsulated curatives in epoxy resins, in which no gelation is observed after storing at 40 degrees C for months (10:37-43). As such, it would be an obvious modification to obtain epoxy resins having the recited stability with the curing agent composition of Sawaoka.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,994,475 (“Roth”).
The discussion of Roth with respect to claim 6 is incorporated by reference. While not exemplified, Roth teaches the microgel polymer may also be formed from butadiene (2:60-65), and therefore butadiene polymers are contemplated by Roth. Note that applicant’s discussion of polybutadienes includes copolymers (see specification, para. 0034), and therefore functionalized polybutadiene as the encapsulating system is an obvious modification suggested by Roth.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0343228 (“Liu”) in view of US 2013/0056153 (“Czaplicki”).
The discussion of Liu with respect to claim 6 is incorporated by refence. Liu teaches using the catalyst (accelerator) in epoxy adhesive compositions (para. 0072), but does not discuss lap shear strength. Czaplicki teaches structural epoxy adhesives, including using a curing accelerator (catalyst) (para. 0024), teaching such epoxy adhesives can achieve lap shear typically greater than 10 MPa (1450 psi) (para. 0011). As such, it is well within the skill of a person of ordinary skill in the art to obtain an epoxy adhesive with the latent accelerator having lap shear strength in the recited range.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-13, 15, and 16 of copending Application No. 18/129,386 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites all of the limitations of claims 1, 5, and 6. Furthermore, because copending claim 1 recites that the functional polymeric compound may be polybutadiene or polyamide, the additional limitations of claims 11 and 12 are an obvious selection within the scope of claim 1.
Copending claims 2-4, 9-13, 15, and 16 recite the additional limitations of claims 2-4, 7-10, and 13-15, respectively in the same order.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764