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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/09/2026 has been entered.
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kokkot (U.S PG Pub 202000172775A1), Kuroda (U.S PG Pub 20190284455A1A1), and Schoenfeld (U.S PG Pub 20030196753A1).
Regarding claim 1 & 6, Kokkot discloses a one-component thermosetting epoxy resin with the formulas as claimed in instant claim 6 [0019 & 0027], with an index value as claimed [0028]. Kokkot further discloses a latent hardener that is dicyandiamide (table 1) and an accelerator (Table 1; [0033]), as well as a toughness improver (table 1; [0032]). Kokkot has also disclosed the above components being present in the amounts as claimed (table 1). Kokkot has disclosed the adhesive being used in the automotive industry [0003]. Kokkot has not explicitly disclosed the formulation containing HEMs, however, this is known in the art from Kuroda.
Kuroda, drawn also to the art of a liquid thermally expandable curable resin composition (Abstract), which contains an epoxy resin (Abstract; [0013]), discloses the composition containing heat expandable microspheres [0015], which have an initial expansion temperature of between 70C to 135C (see Matsumoto Microsphere examples in [0071]). Kuroda also discloses a maximum temperature (as in instant claim 2) of between 60C to 170C [0072]. Kuroda has not explicitly disclosed the diameter as claimed, however, the microspheres as disclosed by Kuroda are similar or same as the microspheres mentioned in the instant specification (Matsumoto Microspheres – see instant specification pg. 8, lines 1-7). Thus, it can be reasonably expected that the microspheres of Kuroda would have the same or similar properties to the microspheres as instantly claimed.
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Kokkot, with the HEMs, as disclosed by Kuroda, to arrive at the instant invention, in order to achieve reliable adhesion, and reduced risk of peeling or falling due to adhesion failure [0067].
In the event the applicant does not agree with the similarities between the HEMs as disclosed by Kuroda, and as instantly claimed in the instant specification, it is further known from Schoenfeld, drawn also to an epoxy adhesive (Abstract), which contains an expanding agent such as thermally expandable microspheres [0040], which expand when heated and are useful in maintaining maximum structural integrity by complete filling of a gap or cavity wherein the adhesive is used [0040]. Schoenfeld discloses that the HEMs to have average particle size between 5 to 100 microns (which forms an overlapping range and thus obviates the instant range – MPEP 2144.05 (I)) [0040], and also discloses that the type and amount of the expanding agent is elected based on the needed expansion of the curable adhesive. Thus, Schoenfeld also discloses that the type and weight range of the HEMs is a result effective variable, which has an effect on the expansion volume of the adhesive [0040].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Kokkot and Kuroda, with the mean particle size being in the range as claimed, as disclosed by Schoenfeld, to arrive at the instant invention, in order to maintain maximum structural integrity by complete filling of a gap or cavity wherein the adhesive is used.
Regarding claims 2, 4-5, see Kokkot as modified by Kuroda and Schoenfeld above in claim 1 rejection for the specific microballoon/microsphere limitations.
Regarding claim 3, Kokkot and Kuroda have not explicitly disclosed the weight range of the HEMs, however, as already mentioned above, Schoenfeld discloses that type and weight range of the HEMs is a result effective variable, which has an effect on the expansion volume of the adhesive [0040]. Thus, it is within the purview of an ordinarily skilled artisan to routinely optimize the weight range of the HEMs to have a weight range as instantly claimed, in order to obtain needed expansion of the adhesive (MPEP 2144.05(II)).
Regarding claims 6-11, the specific limitations have been disclosed by Kokkot as modified by Kuroda (see claim 1 rejection above and further see table 1 and examples of Kokkot). Specifically see table 1 and [0032]. See [0032] for type of latent hardener. See [0033] for the type of cure accelerator (instant claim 8). See Table 1 epoxy based reactive diluent (epoxy Novolac resin in the weight range as claimed) (instant claim 9). See Table 1 and [0032] for filler and weight range (instant claim 10). Further, see [0032] for shell type toughener polymer (instant claim 11).
Regarding claims 12-15, Kokkot as modified by Eagle disclose the instantly claimed method steps (see claims 1-7 of Kokkot). Specifically see claims
1-3 and 4 & 7. See as well [0023] – that the ultimate bond strength is achieved after 15 minutes i.e. the bonding is performed for 15 minutes (overlapping with the range of 10min to 6 hrs as in instant claim 13).
Regarding claim 16, the limitations as pertaining to the operation of the rheometer, measuring plate, and deformation, are intended use recitations and material and article worked upon recitations, and do not patentably distinguish the claimed epoxy adhesive from the epoxy adhesive of the prior art (MPEP 2114 & 2115).
Regarding claims 17-19, Kokkot has disclosed the adhesive having a viscosity as claimed [0022]. Kokkot discloses a viscosity of 74K to 1 million cP at STP, and this translates to 74 Pa*s to 1000 Pa*s, which overlaps and encompasses the instantly claimed range and thus obviates it. The courts have held 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) (MPEP 2144.05(I)).
Regarding claims 20-22, Kokkot as modified by Kuroda and Schoenfeld, disclose the limitations as pertaining to the HEMs. Kuroda discloses the HEMs being liquids (hydrocarbons) encapsulated by thermoplastic resin shells [0069-0070]. Kuroda has also disclosed an expansion of greater than 150% after heating for 30 mins [0109], thus disclosing an overlapping range, which obviates the range (MPEP 2144.05(I)).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 as pertaining to the disclosure of Eagle have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. A new grounds of rejection is made in view of Kokkot, Kuroda, and Schoenfeld.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US-20210309889-A1, US-20080169062-A1, US-20050032447-A1, US-20060219350-A1 – all drawn to adhesive and epoxy adhesives, with heatable expanding agents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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