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 .
Claim Rejections - 35 USC § 112
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.
Claim 14 is 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.
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 14 recites the broad recitation 10 min to 6 hours, and the claim also recites 10 mins to 2 hours 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.
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 – 15 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]. Since epoxy compounds have multiple epoxide groups per molecule according to component A of the claim [0018]. When multiple curing agents are used such as the adipic dihydrazide and isophthalic dihydride, since they are taught as equivalents, 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.
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 Munzinger et al. WO 2019/081581 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 9, 11 – 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 17 of U.S. Patent No. 11,891,507 in view of Haag et al. (US 2019/0010373). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches the epoxy adhesive composition having the claimed limitations and which is applied to a surface at temperatures overlapping the claimed range and at time periods overlapping the claimed range. The patent does not recite the presence of aromatic dihydrazide. However, Haag recites the use of aromatic dicarboxylic dihydrazide such as isophthalic dihydrazide in amounts that would be suitable for use in the patented composition. Haag teaches they are useful interchangeably with adipic dihydrazide and thus both can be used together at similar amounts which provides a ratio of 1:1.
While the amount of time it takes to heat it up to 160℃ is not particularly recited, the rate of heating is a parameter that would be routinely optimized by persons of ordinary skill in the art. Ratios of the curing agents would also be obvious since the patent teaches one or more of the curing agents each of which ae suitable which makes their combination at equal amounts suitable.
In regards to claim 13, the use of induction curing of the adhesive is known in the art in view of Munzinger et al. WO 2019/081581 and would have been obvious.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771