DETAILED ACTION
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 1-8, 10 in the reply filed on 1/23/2026 is acknowledged. Claims 9, 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1/23/2026.
Claim Objections
Claim 10 objected to under 37 CFR 1.75 as being a substantial duplicate of claim1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-6, 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feng et al (US 2014/0121299).
Claim 1 recites “at least one epoxy-group terminated polyoxazolidinone, derived from at least one polyisocyanate compound and at least one aliphatic polyepoxide compound, …… wherein a molar ratio of the epoxy groups of the polyepoxide compound to the isocyanate groups of the polyisocyanate compound is 50:1 to 2.4:1,” it is noted that “derived from” is a product-by-process limitation, based on the claimed molar ratio, the claimed “at least one epoxy-group terminated polyoxazolidinone” is a mixture of aliphatic polyepoxide compound and epoxy-group terminated polyoxazolidinone.
Claims 1, 3, 10: Feng teaches a composition comprising an epoxy resin of oxazolidone compound, an epoxy resin and a hardener, a solvent [0021-0024, 0060]. The epoxy oxazolidone compound can be example XQR-19 [0090-0095], which is formed from 170g of PAPI 27 (1.27 mole of NCO), and 870g of DER 736 (4.58 mole of epoxy group). In example 1, 7.04g of XQR-19 is corresponding to 0.031 mol of epoxy and 0.0086 mol of NCO, 47.57g of DER 383 has 0.26 mol of epoxy. Therefore, this mixture equals with a reaction product from 0.0291 mol of epoxy and 0.0086 mol of NCO, the molar ratio of epoxy: NCO is 33.8. (detailed calculation is available upon request). In example 1, the mixture of XQR-19 and DER 736 is present more than 50wt% based on the solid content of the composition. Feng further teaches the amount of solvent can be up to 50wt% based on the total weight of the composition [0061].
Claim 2: the solvent can be methyl ethyl ketone etc. [0060].
Claim 4: the hardener can be dicyandiamide etc. [0051].
Claim 5: PAPI 27 is a polymeric methylene diphenyl diisocyanate.
Claim 6: 7.04g of XQR-19 having epoxy equivalent weight of 313 and 47.57g of DER 383 having EEW of 181, the mixture has an EEW of 191.4.
Claim 8: the hardener is present in an amount of 10-50 wt% [0053], the amount of solvent can be up to 50wt% based on the total weight of the composition [0061].
Claims 1, 3-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hess et al (EP0296450).
In setting forth this rejection a machine translation of EP0296450 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claim 1, 3-5, 8, 10: Hess teaches a composition comprising 100g of an oxazolidone epoxy resin and 35g of phthalic anhydride which reads on both solvent and hardener [0029]. The oxazolidone epoxy resin is derived from bisepoxides and diisocyanate in a molar ratio of 1.4:1 to 2.5:1 [0007, 0012]. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 6: the oxazolidone epoxy resin has an epoxy equivalent weight of 460-711 (table 1).
Claim 7: the oxazolidone epoxy resin has an oxazolidinone weight content of 17.2wt% (detailed calculation is available upon request).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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