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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/22/2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barriau (US 2015/0064380) in view of Arita (WO 2019/123941) as evidenced by the Expancel Data Sheet.
Barriau teaches a composition comprising (a) a first epoxy resin having an epoxy equivalent weight of at most 280 g/eq, (b) a second epoxy resin having an epoxy equivalent weight of at least 300 g/eq, (c) a thermally activated hardener, and (d) a thermally activated propellant (abstract). Barriau teaches the propellant includes hollow plastic microspheres such as acrylonitrile (meth)acrylate copolymers (¶ 52, 72) which have a nitrile and carboxyl group and meets claims 8-9. Barriau teaches the first epoxy resin is present in a n amount of 10-55 wt% (¶ 23) and the second is used in an amount of 5-35 wt% (¶ 33) which gives a ratio of 10:35 to 55:5 and overlaps the range in claim 6. The thermally activated hardener of Barriau corresponds to the claimed curing agent. The thermally activated propellant (blowing agent) is used in ana mount of 05-6 wt% (¶ 49) which overlaps the range in claim 10. Barriau teaches the compositions form cured products (¶ 72).
Barriau teaches an example of a thermally activated propellant which includes Expancel (¶ 53) including Expancel 909 DU80 (¶ 146) which has a particle size of 18-24 microns as shown by the Expancel Data Sheet. This particle size meets the range of 5-50 microns in claim 1.
The epoxy equivalent weights of Barriau overlap the claimed ranges.
Barriau does not explicitly recite an epoxy resin according to the claimed formula (1).
Arita teaches a composition and laminate including
PNG
media_image1.png
92
568
media_image1.png
Greyscale
(¶10) where Ar includes phenyl, naphthyl and diphenyldimethylmethane (¶17), R3 and R4 are glycidyl ethyl groups and n is 11-16 (¶ 15) which overlaps the claimed range of 6-15. The rest of the variables of formula 1 of Arita meet the limitations of claimed formula 1 when m2 is 0. Also see ¶26 of Arita which show examples where claimed variables R3 and R4 are hydroxy groups and R5 and R6 are hydrogen atoms which meets claim 3.
It would have been obvious to one of ordinary skill in the art to use the epoxy compound of Arita because it improves the adhesive force and the deformation mode of the cured product is elastic deformation, has a high elongation (¶ 8, 22), and is capable of withstanding a difference in thermal expansion of the substrate (¶13).
Arita teaches adhesiveness and that the cured product used in a laminate which can have a metal or plastic substrate (¶93) where a first substrate is metal and the second substrate is plastic (claim 12) which meets claims 11, 13-15.
Barriau teaches expansion temperatures 120-220˚C, preferably 150-240˚C (¶ 56, 119) and curing starts at above 80˚C (¶ 39). Thus, Barriau teaches curing at 80˚C (¶ 39) and expansion at 150-240˚C (¶ 56, 119) which meets the limitations of claim 19.
Barriau does not explicitly state the cured product is in a sea island configuration. However, Barriau teaches two different epoxy components with different viscosities (abstract) which would necessarily form a sea island configuration when blended together and cured. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Alternatively, one of ordinary skill in the art would have instantly envisaged a sea island configuration because the genus of configurations is finite, homogeneous and sea-island. A genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. See MPEP 2105, In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
Response to Arguments
Applicant's arguments filed 7/22/2026 have been fully considered and are persuasive in part.
Regarding Yoshitake in view of Arita, Applicant notes that Yoshitake teaches the size of the thermally expandable graphite is 20-200 mesh (¶134) which corresponds to 74-841 microns. Additionally Yoshitake teaches away from particle sizes outside this range (¶ 135). Thus, Yoshitake teaches away from the claimed range of 5-50 microns. Accordingly the rejection of Yoshitake in view of Arita is withdrawn.
Regarding Barriau in view of Arita, Applicant argues Barriau does not disclose the average particle diameter of 5-50 microns. However, Barriau teaches using Expancel 909 DU80 (¶ 146) which has a particle size of 18-24 microns as shown by the Expancel Data Sheet. This meets the claimed range.
Applicant argues that the claim requires epoxy resin (A) to have a epoxy equivalent of 800-5000 g/eq which higher than Arita’s examples and more narrow than the range taught by Barriau. However, the range of at least 300 g/eq overlaps the claimed range and criticality has not been established. Therefore, the obviousness position presented remains proper.
Applicant argues that the claim narrows n1 to 6-15. However, Arita teaches n is 11-16 (¶ 15) which overlaps the claimed range of 6-15 and criticality has not been established. Therefore, the obviousness position presented remains proper.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
Prosecution Insights