DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/2/2026. In particular, claim 1 has been amended to include the limitations of claim 6 and new claims 16-17 have been added. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7, 10-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshitake (US 2015/0284525) in view of Arita (WO 2019/123941).
The rejection is adequately set forth in the office action mailed on 1/15/2026 and is incorporated here by reference.
Regarding claim 16, Arita teaches the support film includes release paper and subjected to release treatment (¶ 117).
Regarding claim 17, Arita teaches the support film is peeled off afer laminating by heat curing (¶ 118). This corresponds to the claimed heating and separating of claim 17.
Claim(s) 1-5, 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barriau (US 2015/0064380) in view of Arita (WO 2019/123941).
The rejection is adequately set forth in the office action mailed on 1/15/2026 and is incorporated here by reference.
Regarding claim 16, Arita teaches the support film includes release paper and subjected to release treatment (¶ 117).
Regarding claim 17, Arita teaches the support film is peeled off afer laminating by heat curing (¶ 118). This corresponds to the claimed heating and separating of claim 17.
Response to Arguments
Applicant's arguments filed 4/2/2026 have been fully considered but they are not persuasive.
Applicant argues that the combination of Yoshitake and Aria is improper because the rejection assumes a structurally different epoxy resin, developed for a different purpose and operating in a different system can be substituted into Yoshitake’s formulation with the expectation that is will perform in a similar manner.
This is not persuasive because Yoshitake teaches the composition can be used as a coating (¶ 1, 48) which is a layered product and Yoshitake teaches adhesive properties are desirable (¶ 3, 8) and the epoxys of Arita improve adhesions (¶ 8). Thus, both Arita and Yoshitake contain similar uses of adhesion and layered products (laminates).
Yoshitake teaches a composition that includes a brominated epoxy and a bisphenol-type epoxy resin (abstract). It is noted the aromatic structures of the epoxies of Arita are bisphenol structures (¶17).
Applicant states that Yoshitake discloses the systems are highly sensitive to the specific epoxy resin structures employed on pg. 9 of the Remarks filed on 4/2/2026. This is not persuasive because Applicant failed to cite to the relevant portion of Yoshitake and the Examiner was unable to find this section.
Applicant argues that Yoshitake’s system is a carefully tuned system in which both epoxy structures and relative proportions are critical. This is not persuasive because Yoshitake is open to a wide variety of second epoxy compounds, including bisphenol epoxy compound and/or aliphatic epoxy compound (abstract) and where the relative proportion is 99:1 to 99:1 (abstract). The teaching of a wide range of relative proportion meets the claimed range of 90:10 to 10:90 and the genus of bisphenol epoxy compound and/or aliphatic epoxy compound indicates a robustness of the composition with respect to the second epoxy compound. Yoshitake does not state that these features are critical.
Applicant argues that a person of ordinary skill in the art would not view the substitution of an entirely different epoxy resin (such as Arita’s epoxy) as a routine or predictable modification. This is not persuasive. The reactivity of the epoxy resin remains at the epoxide group, present in both epoxy compounds at the terminus of the polymer chain. Additionally, Arita teaches the reaction of the epoxy compound uses a curing accelerator such as amines (¶ 63) and can have a filler present (¶ 64). Yoshitake teaches curing agents (corresponding to Arita’s curing accelerator) include amine compounds (¶98-105) and that fillers can be present (¶ 107). Thus, the same curing agents can be used in the presence of the same filler agents. This provides evidence for the predictability of the composition.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that the instant specification explains that the preferred ratio of 10:90 to 90:10 facilitates phase separation of the cured product resulting in a sea island structure that balances the adhesiveness and stress relaxation ability, exerts high adhesive strength over a wide temperature range, and reduces molding shrinkage rate before and after curing. This is not persuasive because a sea island structure is not claimed.
In response to applicant's argument that the instant invention provides the performance benefits discussed above, which are not claimed, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the instant invention provides improved simultaneous properties of excellent flexibility and high adhesion and can undergo thermal expansion which can facilitate removing the cured resin after use. This is not persuasive because these properties are not present in the claims. Alternatively, it appears that Applicant is presenting a position of unexpected results, however, this is not clear. If unexpected results are alleged, the requirements of MPEP 716.02 must be met, including MPEP 716.02(d) where the data must be commensurate in scope with the claimed invention and MPEP 716.02(b) where the burden is on the Applicant to explain the data. In this case, no data has been discussed and the claims are not commensurate given the large genus of the claimed epoxy resin and the finite number of species shown in the examples.
Applicant argues that the combination of Arita and Barriau is improper because the rejection assumes a structurally different epoxy resin, developed for a different purpose and operating in a different system can be substituted into Barriau’s formulation with the expectation that is will perform in a similar manner.
This is not persuasive because Barriau teaches the composition can be used as a coating (¶ 120, 126) which is a layered product and Barriau teaches adhesive properties are desirable (¶ 150) and the epoxies of Arita improve adhesions (¶ 8). Thus, both Arita and Barriau contain similar uses of adhesion and layered products (laminates).
Applicant argues that the relative equivalent weights and structures taught in Barriau are jointly tailored to control critical performance parameters and Applicant points to the viscosity, melt behavior, cure kinetics, and expansion behavior. This is not persuasive. Barriau teaches a composition of different epoxy resins, one having an epoxy equivalent weight of at most 280 g/eq and the other having an epoxy equivalent weight of more than 300 g/eq (abstract). Arita teaches an epoxy equivalent weight of 150 to 900 g/eq (¶ 16) falling in the scope of the requirements in Barriau.
Applicant argues that substituting an epoxy with a different backbone, architecture, and functionality is not a routine design choice. This is not persuasive because Applicant has not explained how the epoxy resins in Arita are different from those of Barriau. Rather, Barriau teaches preferred epoxy resins derived from bisphenol A and bisphenol F epoxy resins (¶25) but then lists other preferred examples (¶ 28, 36). A preferred embodiment is not controlling, rather, all disclosures “including unpreferred embodiments” must be considered. See MPEP 2123 and In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). In this case, the broader teaching includes epoxy resins having the above mentioned epoxy equivalent weight. Additionally, Barriau does not indicate the identity of the epoxy resin is critical, but focuses on the properties of the epoxy resin. As Arita meets the epoxy equivalent weight discussed in Barriau, it is a suitable epoxy resin.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With regards to the alleged lack of expectation of success, Barriau teaches adding the epoxy resins to a hardener and curing accelerator which includes amines (¶40-43) and that a filler may be present (¶ 69) and Arita teaches the reaction of the epoxy compound uses a curing accelerator such as amines (¶ 63) and can have a filler present (¶ 64). Thus, the elements of Arita can be used in the composition of Barriau with no change in their respective functions.
Applicant argues that the instant specification explains that the preferred ratio of 10:90 to 90:10 facilitates phase separation of the cured product resulting in a sea island structure that balances the adhesiveness and stress relaxation ability, exerts high adhesive strength over a wide temperature range, and reduces molding shrinkage rate before and after curing. This is not persuasive because a sea island structure and benefits derived therefrom are not claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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