DETAILED ACTION
This communication responds to the Amendment filed June 02, 2026. Claim 5 was cancelled. Claim 1-4 and 6-20 are pending in the present application.
The rejections of the claims under 35 USC 102 and 35 USC 103 set forth in the Office Action dated March 09, 2026 are WITHDRAWN due to Applicant’s amendments.
It is noted that amended claim 1 is not just claim 5 as previously presented, therefore a new obviousness-type double patenting rejection of claim 1 is made.
This Office action is final.
Allowable Subject Matter
Claims 17-19 are allowable. Claim 1 would be allowable except for the non-statutory double patenting rejection of the instant claim 1 as set forth in this Office action. Claim 2-4, 6-16 and 20 are objected to as allowable except for the non-statutory double patenting rejection of instant claim 1.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 1-4 and 6-20 contain allowable subject matter in view of the closest prior art reference Park et al. ( KR-10-2021-0071563 A).
Park et al. teach a two component resin composition (abstract) in which a main component comprising a polyol resin and a curing agent part comprising a compound containing an isocyanate group (claim 6) are mixed and cured to form a resin layer ([0003],[0036]), wherein each of the main component and the curing agent includes a filler such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077], claim 9). Park et al. further teach the composition has a thermal conductivity of about 3 W/mk or more (claim 12, [0080], [0109]) and the resin layer exhibit a V-0 rating in the UL94V test [0110]. Park et al. do not disclose the use of halogen or phosphorus based flame retardants in the examples, therefore the content of halogen and phosphorus will be 0%.
Park et al. teach an ester polyol is used as the polyol resin [0039], wherein the ester polyol is carboxylic acid polyol or a caprolactone polyol ([0041]-[0042] represented by represented by formulas 2 and 3, respectively:
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wherein, in formula 2 and 3, X is a unit derived from a carboxylic acid, and Y is a unit derived from a polyol, which is a triol unit or a diol unit, n and m can be any numbers, for example, n is a number in the range of 2 to 10, m is a number in the range of 1 to 10, and R1 and R2 are each independently an alkylene having 1 to 14 carbon atoms ([0048]-[0049]). Park et al. teach the use of a mixture of diols an triols to tailor desired properties [0058]-[0060], and the use of the carboxylic acid derived units from fatty acid compounds, alicyclic compounds and aliphatic compounds having two or more carboxyl groups to tune desired properties [0053]-[0057]. Furthermore, Park et al. teach “ the polyol-derived unit of Y in the above chemical formula 3 is a unit derived from a polyol containing three or more hydroxyl groups, such as a triol unit, a structure in which the Y moiety is branched in the structure [0051]-[0052]. Additionally, Park et al. teach that an adhesive strength of about 200 gf/10 mm or more with respect to polyethylene terephthalate provides appropriate shock resistance and vibration resistance [0092].
However, Park et al. do not disclose or fairly suggest the claimed curable composition and the claimed two-component curable composition, wherein the curable composition comprises the claimed combination of the thermally conductive filler component and the polyol component comprising a specific first polyol having at least one hydrocarbon group having 3 or more carbons, that results in a cured product having adhesion force to polyester of 100 gf/cm or less. One person of ordinary skill in the art would not be motivated to modify Park et al. to reduce the adhesive strength to 100 gf/cm or less without relying on the teachings of the present disclosure (i.e. impermissible hindsight).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 of copending Application No. 18/276,358 in view of Park et al. (KR-10-2021-0071563 A).
Claims 1 and 5 of the ‘358 copending application teach a curable composition comprising a polyol component and a filler, wherein the curable composition is capable of forming a cured body having an adhesion force to a polyester surface of 100 gf/cm or less. Both claims’ sets teach a two component composition comprising a polyol component and filler and a curing agent component and filler, capable of forming a cured body having adhesion force to polyester surface of 100 gf/cm or less.
The difference between the claims of the ‘358 copending application and the present claims are that the cured product is silent on the properties of flame retardancy of grade V-0 or more, gravity specific of 3 or less, a thermal conductivity of 2 W/mK or more, a combined content of halogen or phosphorus elements of 0.3 wt.% or less and the thermally conductive filler.
However, Park in the same field of endeavor (curable composition) teach a two component resin composition (abstract) in which a main component comprising a polyol resin and a curing agent part comprising a compound containing an isocyanate group (claim 6) are mixed and cured to form a resin layer ([0003],[0036]), wherein each of the main component and the curing agent includes a filler such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077], claim 9). Park et al. further teach the composition has a thermal conductivity of about 3 W/mk or more (claim 12, [0080], [0109]) and the resin layer (which correspond to the cured product) exhibit a V-0 rating in the UL94V test [0110]. Furthermore, Park et al. do not disclose the use of halogen or phosphorus based flame retardants in the examples, therefore the content of halogen and phosphorus will be 0%. In view of the substantially identical composition of Park et al., which includes same reaction components including 70 wt.% or more of fillers such as aluminum oxide (alumina), aluminum hydroxide ([0075]-[0077]) and considering that the curable composition of Park et al. is used in a similar application as the present invention, then the curable composition of Park will possess the claimed property of specific gravity. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the thermally conductive filler of Park et al. in the present claims to improve the insulation properties of the composition. Further, it would be obvious to one of ordinary skill in the art to form a curable composition having the claimed properties as Park et al. demonstrates these properties as being suitable for similar curable compositions. This represents the use of a suitable range of properties in a similar curable composition application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendment
Applicant’s arguments, see pages 6-10, filed 6/02/2026, with respect to the rejection of the claims over Park et al. have been fully considered and are persuasive. Therefore the rejection has been withdrawn.
Regarding the obviousness-type double patenting rejection of claims 1-2, 17 and 20 over claims 1-2 and 17-18 of copending Application 18/276,358 in view of Park et al., it is noted that amended claim 1 is not just claim 5 as previously presented, and a new double patenting rejection is appropriate.
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 OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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