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 .
The amendment dated 05/07/2026 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections over claims 1 – 9, 11, 12, 14, 15 in view of Haag et al. (US 2019/0010373) alone are maintained. However, the rejection of claim 13 in further view of Munzinger et al. WO 2019/081581 are withdrawn based on persuasive argument.
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 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 – 9, 11 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Haag et al. (US 2019/0010373)
In regards to claim 1, Haag teaches one-component epoxy polyurethane and/or urea tougheners, an epoxy resin and epoxy hardener (abstract). The admixture comprises rubber-modified epoxy resins at 0 to 40% or from 12 to 40% A/B), tougheners at 55 – 85% C), optional core-shell rubbers at 0 to 15% D), epoxy curing agents E), such that A-D is 65 to 97%, and A-E is at least 60% [0009]. Curing agents includes adipic dihydrazide, isophthalic dihydrazide (i.e., aromatic dihydrazide), stearic dihydrazide etc. according to components B1 and B2 of the claim [0049]. The epoxy compounds have multiple epoxide groups per molecule according to component A of the claim [0018]. Multiple curing agents such as the adipic dihydrazide and isophthalic dihydride can be used, since they are taught as equivalents, and it would be obvious to use them at equal amounts and thus provide a ratio of 1:1 according to the claimed ratio. According to KSR, combining prior art elements useful for the same purpose to be used for the same purpose is obvious. The polyurethane epoxy compound is crosslinked and cured which provides a thermosetting epoxy component of the claim [0047, 0048].
In regards to claims 2, 3, Haag teaches the composition having the claimed limitation as previously discussed.
In regards to claim 4, Haag teaches the composition which can comprise a catalyst such as imidazole, imidazoline thus providing the accelerant of the claim [0050, 0051].
In regards to claim 5, Haag teaches the composition wherein the catalyst is a component F that can be present at calculated minor amounts, since component A to E can be present at 65 to 100%, or 65 to 97%, the balance of component F (i.e., imidazole or imidazoline catalyst) would be present at minor amounts, such that the amount of the catalyst per mole of the epoxy resin would overlap the claimed range [0009].
In regards to claims 6, 7, Haag teaches the composition having core shell rubbers at 0 to 15% according to the limitation D of the claim.
In regards to claim 8, Haag teaches the composition having the ingredients in the claimed amounts and would be expected to exhibit similar properties as claimed.
In regards to claim 9, Haag teaches the composition having the epoxy resin at 0 to 40% as previously stated and which overlaps the claimed range.
In regards to claims 11, 12, Haag teaches a method of bonding two substrates using the epoxy adhesive composition wherein the adhesive is heated to temperatures of at least 160℃ and up to 210℃ to cure the adhesive, and thus provides a heat-stable surface as claimed [0012 – 0016, 0068]. The adhesive can be used to bond a variety of surfaces together thus allowing for bonding similar or different surfaces [0069]. The rate of heating and/or the amount of time it takes to cure the adhesive is a parameter that would be routinely optimized by persons of ordinary skill in the art and would vary based on temperature. Since the same adhesive composition is being heated at similar temperatures it appears that the amount of time taken to cure the adhesive would be similar to the time claimed.
Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
There is no evidence that providing multiple heating steps further improves curing or bonding.
In regards to claim 13, Haag teaches the composition and method. While Haag does not particularly recite the means of heating as claimed, the use of induction curing of similar adhesive is known in the art in view of Koch et al. US 2022/0204820 and would have been obvious for the composition of Haag.
In regards to claim 14, Haag teaches the method as previously stated.
In regards to claim 15, Haag teaches the adhesive bonded article obtained from the process as previously discussed.
In regards to claim 16, Haag teaches the composition which would be expected to exhibit similar properties as claimed.
In regards to claim 17, Haag teaches the method which does not require additional metal joining techniques of the claim.
In regards to claim 18, Haag teaches the composition comprises catalyst such as aliphatic urea which provides the claimed accelerator [0050].
In regards to claim 19, Haag teaches the composition which can comprise dicyandiamide as preferred curing agent, but which can be replaced with other ingredients [0049].
In regards to claim 20, Haag teaches the composition comprising the epoxy resin in amounts overlapping the claimed range.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argue that Haag does not teach the use of multiple curing agents according to the aromatic dicarboxylic dihydrazide and dihydrazide such as adipic, glutaric, pimelic dihydrazide etc., of the claims. The argument is not persuasive.
KSR allows for the combinations of prior art elements useful for the same purpose. The use at equivalent amounts would thus be obvious.
Applicant argues that the claimed composition having the combination of the epoxy compounds demonstrates unexpectedly improved results. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims recite aromatic curing agent b1, the inventive examples are drawn to isophthalic dihydrazide which does not support the breadth of the claims allows for myriads of compounds.
While the claims recite dihydrazide b2, the inventive examples recite adipic dihydrazide which does not support the breadth of the claims which allows for various compounds.
While the claims recite ratios of b1/b2 of from 0.15 to 20, the inventive examples require a ratio calculated to be from about 1.11 to 10 which does not support the breadth of the claims.
The result is not persuasive.
The ZSF values are inconsistent between the inventive and comparative examples. In one embodiment R2 recites 26.4 which is higher than 9.4 of E3, 23.6 of E7 and 15.6 of E8. In another embodiment R5 is 4.47 which is higher than the values for E1 to E8.
Thus, applicant fails to provides inventive examples that are commensurate in scope with the claims and supports a demonstration of unexpected results sufficient to rebut the case of obviousness.
Applicant argues that Haag fails to teach multiple heating steps of the claims which allows for cooling in between, i.e., a two-step curing method. The argument is not persuasive.
The general teaching of heating to the curing temperatures is taught by Haag. Also, applying multiple heating steps does not appear to be inventive, as applicant has provided no evidence to demonstrate improvement in curing or bonding from such steps.
Applicant argues that Munzinger does not teach induction curing. The argument is persuasive as a Munzinger was improperly applied. Munzinger has been removed thus mooting the argument.
The arguments against double patenting based on U.S. Patent No. 11,891,507 for failing to recite aromatic dihydrazide has been considered and found to be persuasive. Therefore, the rejections are withdrawn.
Applicant argues that Haag does not recite the lap shear strength of the newly added claim 16. The argument is not persuasive.
Haag teaches similar composition which would be expected to exhibit similar properties.
Applicant argues that the newly added claims which excludes dicyandiamide is not taught by Haag. The argument is not persuasive.
While dicyandiamide is useful as curing agent, there are other ingredients suitable and useful in the alternative.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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