DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of claims 1-12 in the reply filed on 11/06/2025 is acknowledged. The traversal is on the ground(s) that although the claimed subject matter may be classified in different classes, Applicant respectfully submits that no unreasonable search or examination burden exists because multiple searches would likely yield a limited number of references (if any). This is not found persuasive because the field of epoxy polymer compositions is a completely separate search field from the field of electric motors and various modifications to them. Searching the field of electric motors in addition to the field of polymer compositions would result in a significant search burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tong US 20220153987, in view of Moser US 20160068627 and Konczol, L., et al., Journal of Applied Polymer Science, Vol. 54,815-826 (1994).
Regarding claims 1-3 and 5, Tong teaches a curable composition comprising an epoxy composition and a multi-functional thiol compound (Abstract) and Tong teaches the epoxy composition comprises an epoxy group (Paragraph [0029]). The multi-functional thiol compound has a structure of:
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(Paragraph [0040-0047]), where R1 is from 2-12, and R2 is either an H or CH3, and n is an integer from 1-20. This reads on the claimed structure (IV) where R7 is a substituted hydrocarbyl and overlaps with the claimed range of 1-20 carbon atoms. The thiol is a primary thiol which reads on the claimed “primary thiol.” This reads on the claimed “coupling agent.”
Tong teaches either the “first part” or “second part” meaning the epoxy resin or the separate functional thiol compound can comprise an optional crosslinker (Paragraph [0058]). It would have been obvious to select the first part of the composition comprises an optional crosslinker because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. The optional crosslinker reads on the claimed “curing agent” for the epoxy resin.
Tong is silent on the incorporation of a polyhydric alcohol. Tong also teaches that the composition can comprise coupling agents (Paragraph [0058]).
In resin compositions coupling agents are also known as adhesion promoters.
Moser also teaches a curable epoxy resin composition used in electronic applications which comprises a curing agent (Paragraph [0001]). Moser teaches that the curable composition can be applied to a metal substrate (Paragraph [0079]). Moser teaches also teaches the composition can comprise adhesion promoters (Paragraph [0046]). Moser also teaches that the adhesion promoter can be pyrogallol (Paragraph [0046]). This reads on the claimed polyhydric alcohol.
Tong teaches that the curable composition can be used in electronic applications (Paragraph [[0002] and [0091]). Tong also teaches that the curable composition can be applied to metal surfaces (Paragraph [0092]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Moser and Tong and to use the adhesion promoter/coupling agent pyrogallol as taught in Moser as the coupling agent/adhesion promoter of Tong as this represents a suitable adhesion promoter/coupling agent for usable in applications similar to Tong. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. This reads on the claimed “polyhydric alcohol.”
Tong also teaches the first part or the second part can comprise an additive such as a toughener (Paragraph [0058]), but is silent on the type of toughener. Konczol teaches that there is an advantage of adding polycaprolactone polysiloxane block copolymers to epoxy resins (Abstract). Konczol teaches that the addition of such polymers increases the toughness of the epoxy resins without adversely affecting thermal or mechanical properties (Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing to select a polycaprolactone polysiloxane block copolymer as the toughener for the epoxy resin of Tong to take advantage of its ability to improve toughness without adversely affecting thermal or mechanical properties. This reads on the claimed polycaprolactone polysiloxane block copolymer.
Tong teaches that the curable composition can be applied to a metal substrate (Paragraph [0094]). Tong is silent about the process of first applying the claimed “coupling agent” then the epoxy composition following the application of the “coupling agent.”
However, when a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The product-by-process limitation in question appears to contribute two implied structural elements to the article (a) that the composition needs to be located on a metal substrate and (b) that at least some of the coupling agent must be in contact with the metal substrate. As stated above, Tong teaches that the composition can be applied to metal surfaces (Paragraph [0092]). Tong also teaches the first and second part of the composition are mixed together prior to application (Paragraph [0090]). Prior to application onto a metal substrate, it is improbable that 100% of the first some of the second part of the composition will remain unreacted and be in contact with the metal substrate. This reads on the implied structural element (b).
Regarding claims 8 and 10, Tong teaches the epoxy composition comprises, tougheners, coupling agents (adhesion promoters) and optionally crosslinkers (Paragraph [0058]). The claim as written specifies the name we assign to the combination of epoxy and polyhydric alcohol and the combination of curing agent and copolymer. The components mapped in the rejection above satisfy the compositional limitations of the first and second component. Therefore, Tong reads on the limitations of claims 8 and 10.
Regarding claims 9, the limitations as written are optional, as the limitations are conditional upon the curing agent either being an anhydride or an amine.
Tong teaches the composition optionally comprises a crosslinker (Paragraph [0047]). Crosslinker in epoxy resins are also called curing agents. Tong teaches the crosslinker can be a multifunctional thiol like a polyether thiol GPM-800 (Paragraph [0047-0048]). It would have been obvious to select the GPM-800 because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claim 11, Tong teaches the curable composition can be coated onto a metal substrate (Paragraph [0093]). However, Tong is silent about the curable composition on the metal substrate being a composite. It is not necessary for Tong to define the resulting material as a composite, as the result is necessarily a composite material called a polymer-metal composite.
Claims 4 is rejected under 35 U.S.C. 103 as being unpatentable over Han
KR 20100068900 A in view of Konczol, L., et al., Journal of Applied Polymer Science, Vol. 54,815-826 (1994).
Regarding claim 4, Han teaches a composition comprising an epoxy resin a hardener and a coupling agent (Abstract). Han teaches that the coupling agent is cysteine (Abstract). Han does not specify whether the cysteine is L-cysteine or D-cysteine, however this effectively describes a genus made up of only two species therefore it would have been obvious for the cysteine used to be L-cysteine. This reads on the claimed “L-cysteine.” The hardener can be a phenol aralkyl type phenol resin, which comprises more than one OH group (Page 7). This reads on the claimed polyhydric alcohol. Han also teaches the composition comprises more than one curing agent (Page 4). Han also teaches the curing agent can be an amine (Page 4). It would have been obvious to use an amine curing agent as a second curing agent of Han as this is referenced by Han as a suitable embodiment of this composition. This amine curing agent reads on the claimed “curing agent.” Han also teaches the composition can be used on a metal substrate (Page 4). Han teaches that cysteine specifically improves the adhesion of the composition to a metal substrate (Page 4).
Han is silent on the incorporation of a polycaprolactone polysiloxane block copolymer. Konczol teaches that there is an advantage of adding polycaprolactone polysiloxane block copolymers to epoxy resins (Abstract). Konczol teaches that the addition of such polymers increases the toughness of the epoxy resins without adversely affecting thermal or mechanical properties (Abstract). Han teaches that the attribute of toughness in the composition is desirable (Page 4). It would have been obvious to one of ordinary skill in the art at the time of filing to include the polycaprolactone polysiloxane into the composition of Han as an additive for the advantage of the increased toughness without affecting the thermal or mechanical properties. This reads on the claimed polycaprolactone polysiloxane block copolymer.
Han is silent about the process of first applying the claimed “coupling agent” then the epoxy composition following the application of the “coupling agent.”
However, when a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The product-by-process limitation in question appears to contribute two implied structural elements to the article (a) that the composition needs to be located on a metal substrate and (b) that at least some of the coupling agent must be in contact with the metal substrate. As stated above, Han teaches that the composition can be applied to metal surfaces (Page 4). Han also teaches that the incorporation of cysteine specifically improves he adhesion of the composition to the metal substrate (Page 4). It would have been obvious for the cysteine to be in contact with the metal substrate for the advantage of the cysteine improving adhesion to the metal substrate. This reads on the implied structural element (b).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tong US 20220153987, in view of Moser US 20160068627 and Konczol, L., et al., Journal of Applied Polymer Science, Vol. 54,815-826 (1994) in further view of Rao US 20070228846.
Regarding claim 6 and 7, Tong relates to a thermally conductive gap filler epoxy composition useful in electronic applications including in vehicles (Paragraph [0002], [0008]). Rao teaches the use of a thermally conductive epoxy resin to fill voids (i.e. gaps) between an electric motor’s stator winding coil and a ceramic substrate (Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing to use Tong’s composition in a similar application to coat stator coils of an electric motor, as this reference shows this to be a viable economic outlet for thermally conductive insulating resins
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tong US 20220153987, in view of Moser US 20160068627 and Konczol, L., et al., Journal of Applied Polymer Science, Vol. 54,815-826 (1994) in further view of Wen CN 110982485.
Regarding claim 12, Tong teaches the epoxy resin can be a bisphenol A resin (Paragraph [0030]). Tong teaches the first part of the composition can comprise a plasticizer (Paragraph [0080]). However Tong is silent on the type of plasticizer.
Wen teaches a heat conducting epoxy resins used in electronic applications (Abstract). Wen teaches that the plasticizer used in the composition is polyethylene glycol (Page 4-5). This reads on the claimed “polyethylene glycol.”
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Tong and Wen to use the polyethylene glycol in the composition of Tong because polyethylene glycol is a plasticizer identified by Wen as being suitable for use in applications similar to Tong. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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/LILY K SLOAN/Examiner, Art Unit 1762
/MARK KOPEC/Primary Examiner, Art Unit 1762