DETAILED ACTION
Pending Claims
Claims 1-15 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.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 4-6, 8, 10, and 14 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 claims 5, 6, 8, and 10, 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 5 recites the broad recitation “a molecular weight of at least 120 g/mol”, and the claim also recites “preferably of at least 130 g/mol, more preferably of at least 140 g/mol” which is the narrower statement of the range/limitation;
claim 6 recites the broad recitation “an amine hydrogen equivalent of at least 48 g/eq”, and the claim also recites “preferably of at least 50 g/eq, and more preferably of at least 52 g/eq” which is the narrower statement of the range/limitation;
claim 8 recites the broad recitation “an amount in the range of from 20 to 90 wt.-%”, and the claim also recites “preferably from 30 to 80 wt.-%, more preferably from 40 to 70 wt.-%” which is the narrower statement of the range/limitation; and
claim 10 recites the broad recitation “an amount of from 30 to 95 wt.-%”, and the claim also recites “preferably from 40 to 90 wt.-%, more preferably from 50 to 85 wt.-%” which is the narrower statement of the range/limitation.
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.
Regarding claim 4 and further regarding claim 5, claims 4 and 5 recite the limitation "the curable shimming precursor" according to claim 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 is drawn “a two-part curable composition precursor”.
Regarding claim 14, claim 14 recites the limitation "the curable shimming composition" in step IV of the method. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bieber et al. (US 2013/0255879 A1).
Regarding claims 1-5, 7, 8, 11-13, and 15, Bieber et al. disclose: (1) a two-part curable composition precursor (Abstract; Table 3 in paragraphs 0156-0157) comprising:
(a) a first part (A) comprising at least one multifunctional epoxy resin having an epoxy functionality of at least three (Table 3 in paragraphs 0156-0157: see “DEN 431”; see also Table 2 in paragraph 0144); and
(b) a second part (B) comprising a prepolymer obtained from (i) an amine-based epoxy curing agent and (ii) at least one epoxy resin (Table 3 in paragraphs 0156-0157: see “EDR176”, “Eponex 1510”, and “F713”; see also paragraph 0154 and Table 2 in paragraph 0144);
(4) wherein the amine-based epoxy curing agent is selected from polyetheramines and/or polyamidoamines (Table 3 in paragraphs 0156-0157: see “EDR176”; see also paragraph 0154 and Table 2 in paragraph 0144);
(5) wherein the amine-based epoxy curing agent exhibits a molecular weight of at least 120 g/mol (Table 3 in paragraphs 0156-0157: see “EDR176”; see also paragraph 0154 and Table 2 in paragraph 0144);
(7) wherein in part (B), the amine-based epoxy curing agent is not a cycloaliphatic amine-based epoxy curing agent (Table 3 in paragraphs 0156-0157: see “EDR176”; see also paragraph 0154 and Table 2 in paragraph 0144);
(8) wherein the prepolymer is present in part (B) in an amount in the range of from 20 to 90 wt.-% (Table 3 in paragraphs 0156-0157: see “EDR176”, “Eponex 1510”, and “F713”, which account for approximately 88% of the part);
(11) wherein the composition precursor is a shimming composition precursor and/or adhesive composition precursor (Abstract; Table 3 in paragraphs 0156-0157; see also paragraph 0131);
(12) a curable composition, obtained by combining part (A) and part (B) of the curable composition precursor (Abstract; Table 3 in paragraphs 0156-0157); (13) a bonded assembly, comprising at least two substrates and the cured composition disposed between bonding surfaces of the at least two substrates (paragraph 0133); and
(15) a method for bonding two substrates comprising providing the curable composition, and contacting the two substates with the curable composition (paragraphs 0129-0133).
The exemplary embodiments of Bieber et al. fail to disclose: (1) a prepolymer obtained from (i) a first amine-based epoxy curing agent and a second amine-based epoxy curing agent distinct from the first amine-based epoxy curing agent and (ii) at least one epoxy resin; (2) wherein in part (B), the second amine-based epoxy curing agent exhibits a higher molecular weight than the first amine-based epoxy curing agent; (3) wherein in part (B), the second amine-based epoxy curing agent exhibits a higher amine hydrogen equivalent weight than the first amine-based epoxy curing agent. However, the general teachings of Bieber et al. contemplate using a mixture of amines to form their reaction product (see paragraph 0040). This combination of amines would have obviously embraced amines varying in molecular weight and amine hydrogen equivalent weight (associated with molecular weight).
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 amine/epoxy reaction product of Bieber et al. with the instantly claimed first-amine and second-amine because: (a) the exemplary embodiments of Bieber et al. feature a reaction product of a single amine and an epoxy resin; (b) the general teachings of Bieber et al. contemplate using a mixture of amines to form their reaction product; and (c) this combination of amines in Bieber et al. would have obviously embraced amines varying in molecular weight and amine hydrogen equivalent weight (associated with molecular weight).
Regarding claim 6, the exemplary embodiment of Bieber et al. includes a reaction product of Jeffamine EDR-176, which has an amine hydrogen equivalent weight of approximately 44 g/eq. Accordingly, this amine fails to: (6) exhibit an amine hydrogen equivalent of at least 48 g/eq. However, the general teachings of Bieber et al. embrace various amines, including other polyether amines, having a higher amine hydrogen equivalent weight of at least 48 g/eq (see paragraphs 0036, 0037 & 0040).
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 amine/epoxy reaction product of Bieber et al. with the instantly claimed amine (having an amine hydrogen equivalent of at least 48 g/eq) because: (a) the exemplary embodiment of Bieber et al. includes a reaction product of Jeffamine EDR-176, which has an amine hydrogen equivalent weight of approximately 44 g/eq; (b) the general teachings of Bieber et al. embrace various amines, including other polyether amines; and (c) the amines of Bieber et al. embrace materials having a higher amine hydrogen equivalent weight of at least 48 g/eq.
Regarding claims 9 and 10, the exemplary embodiment of Bieber includes a minor amount of DEN 431, which is a multi-functional epoxy novolac resin. This embodiment fails to disclose: (9) wherein the at least one multifunctional epoxy resin is a trifunctional epoxy resin; and (10) wherein the at least one multifunctional epoxy resin is contained in part (A) in an amount of from 30 to 95 wt.-%, based on the total weight of part (A). However, the general teachings of Bieber et al. embrace various multifunctional epoxy resins, including tri-functional epoxy resins (see paragraphs 0022-0023). Furthermore, these teachings embrace any relative amount of these multifunctional epoxy resins, including tri-functional resins, in the part A.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Bieber et al. with a trifunctional epoxy resin because: (a) the exemplary embodiment of Bieber includes DEN 431, which is a multifunctional epoxy novolac; and (b) the general teachings of Bieber et al. embrace various multifunctional epoxy resins, including tri-functional epoxy resins. Furthermore: (c) the general teachings embrace any relative amount of these multifunctional epoxy resins, including tri-functional resins, in the part A.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Bieber et al. (US 2013/0255879 A1) in view of Chen et al. (WO 2019/005800 A1).
Regarding claim 14, the teachings of Bieber et al. are as set forth above and incorporated herein. Bieber et al. disclose: (14) method of bonding an aircraft assembly comprised of a first and second substrate (paragraphs 0131-0133: see “assembly of aircraft vehicles” in paragraph 0131), the method comprising:
(I) mixing the curable composition precursor to provide a curable composition (paragraph 0132);
(II) dispensing the curable composition onto a bonding surface of a substrate (paragraph 0133; see also paragraph 0129);
(III) mating the first and second substrates whereby the curable composition is disposed therebetween (paragraph 0133);
(IV) optionally, securing the first and second substrates to each other using at least one mechanical fastener extending through the curable composition (optional step not required); and
(V) allowing the curable composition to cure, thereby obtaining a bonded aircraft assembly (paragraph 0133; see also paragraph 0123).
Bieber et al. fail to explicitly disclose: (14) method of bonding an aircraft assembly comprised of a skin and a substructure.
Chen et al. disclose a related two-part curable composition (see Abstract; page 5, lines 10-17; page 6, lines 11-13), also used in aerospace applications (see page 5, lines 6-9). The teachings of Chen et al. demonstrate that “skins” are recognized in the art as suitable aircraft materials to be bonded to other aircraft materials (see page 5, lines 6-7). 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 bond a “skin” and another substrate in the method of Bieber et al. because: (a) the method of Bieber et al. is used in the assembly of aircraft vehicles; (b) Chen et al. disclose a related two-part curable composition, also used in aerospace applications; (c) the teachings of Chen et al. demonstrate that “skins” are recognized in the art as suitable aircraft materials to be bonded to other aircraft materials; and (d) 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.
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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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 10, 2026