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.
Response to Amendment
The Amendment filed 03/12/2026 has been entered. Claims 1-2, 4-7, 10-18 remain pending in the application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (‘Large-Area Crystalline Zeolitic Imidazolate Framework Thin Films’ – see NPL cited in IDS and provided by applicant).
Regarding claim 18, Chen, drawn also to the art of dispersed colloidal solutions with MOF nanoparticles (metal-organic framework nanoparticles) (Abstract), discloses a coordination polymer in a colloidal solution, wherein the coordination polymer is a MOF of a transition metal (zinc, cobalt) and an imidazole (Abstract). Chen also discloses the coordination polymer to be ZIF-8 (as in Shimomura) (pg. 14125, paragraph 1, lines 1-17). Chen also discloses that the colloidal solution is applied by a spray coating method (pg. 14125, paragraph 1, lines 1-17) and that it shows good adhesion to various substrates (i.e. being used as an adhesive) (pg. 14126, lines 17-23 & pg. 14127 second column, lines 22-35).
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) 1-2, 4-7, 10-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Connell et al (U.S PG Pub 20070116961A1), Shimomura (JP2022111762A), and Chen (‘Large-Area Crystalline Zeolitic Imidazolate Framework Thin Films’ – see NPL cited in IDS and provided by applicant).
Regarding claim 1 & 12, Connell, drawn to the art of anisotropically conductive adhesives and epoxy adhesive [0002; Abstract], discloses an adhesive that comprises a colloidal solution [0020 & 0026-0028] of a coordination polymer [0024] in a dispersion medium [0022], wherein the coordination polymer comprises a transition metal and an azole [0024]. Connell discloses zinc imidazole [0024] to be present as a thermally activated curing agent and discloses the composition comprising a dispersion medium (solvent – MEK [0022]). Further, the disclosure of the core shell type polymers [0020] and electroconductive particles [0026-0028] being present in the composition meets the limitation of colloidal solution. A colloidal solution, as defined by Dictionary.com, is ‘a substance made up of a system of particles with linear dimensions in the range of about 10-7 (1nm) to 5*10-5 (500nm) dispersed in a continuous gaseous, liquid, or solid medium whose properties depend on the large specific surface area’. Thus, the core-shell type polymer and electroconductive particles in a medium as disclosed by Connell meet the limitations of the colloidal solution.
The zinc imidazole of Connell is not expressly linked together in polymer formation, but whether a monomeric structure or polymer are present one would likely expect both to function as curing agents and the courts have held that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties (See MPEP 2144.09). The foregoing appears to render obvious the claimed invention; however, in an effort to further advance prosecution and definitively address the claimed merits, the explicit recitation of the claimed azole is disclosed below in the prior art.
Shimomura, drawn also to the art of an adhesive composition containing an epoxy resin (Abstract), discloses the composition comprising ZIF-8 (i.e. a coordination polymer of zinc and imidazole) as a curing agent in the composition ([0009-0010]; [0036]) and discloses the particle size to be between 280nm and 75nm [0047].
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive composition of Connell, with the coordination polymer as disclosed by Shimomura, to arrive at the instant invention, in order to obtain a thermosetting composition that has excellent properties at relatively low temperatures [0013].
Regarding the limitations of the adhesive being capable of forming an adhesive layer in which crystal particles of the coordination polymer are agglomerated, the fact that the coordination polymer is present in the adhesive of both Connell and Connell as modified by Shimomura, and is present not as a catalyst or a component that is later removed, but as a curing agent, would mean that the coordination polymer would take part in any curing reaction and be present in the final reaction product. Thus, given that the coordination polymer is present in the final reaction product, it can be reasonably expected that the coordination polymer is present in the final reaction product and forms crystal particles that agglomerate.
In the event the applicant does not agree with the above explanation, it is further known from Chen, for a colloidal solution to be a part of an adhesive/film-forming composition, wherein the colloidal solution has a coordination polymer in a dispersion medium wherein the coordination polymer is a transition metal and an azole.
Chen, drawn also to the art of dispersed colloidal solutions with MOF nanoparticles (metal-organic framework nanoparticles) (Abstract), discloses a coordination polymer in a colloidal solution, wherein the coordination polymer is a MOF of a transition metal (zinc, cobalt) and an imidazole (Abstract). Chen also discloses the coordination polymer to be ZIF-8 (as in Shimomura) (pg. 14125, paragraph 1, lines 1-17). Chen also discloses that the colloidal solution is applied by a spray coating method (pg. 14125, paragraph 1, lines 1-17) and that it shows good adhesion to various substrates (i.e. being used as an adhesive) (pg. 14126, lines 17-23 & pg. 14127 second column, lines 22-35).
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive of Connell and Shimomura, with the coordination polymer as disclosed by Chen, to arrive at the instant invention, in order to be able to be able to form inexpensive and convenient spray-coted thin, compact, uniform MOF films (pg. 14128, Conclusion section).
Regarding claim 2, Connell discloses the transition metal in the curing agent being zinc [0024]. Further, Connell as modified by Shimomura discloses zinc as the transition metal (see ([0009-0010]; [0036] of Shimomura).
Regarding claims 4-7, Connell discloses the azole being an imidazole or methylimidazole [0024]. Connell as modified by Shimomura also discloses the azole being a kind of imidazole (see ([0009-0010]; [0036] of Shimomura).
Regarding claim 10-11, Connell discloses applying the adhesive between adherends and heating at a temperature of 160oC [0039], and also discloses that the amount of heat required for polymerization will depend on the particular polymerization composition used and the desired application of the polymerized product [0034]. The heating temperature disclosed by Connell falls within the instantly claimed range and thus anticipates the instant range. Further, the given that the temperature is within the heating temperature range as instantly claimed, it would also mean that the heating temperature is a temperature lower than the decomposition temperature of the coordination polymer.
Regarding claim 13, Connell discloses a solvent being MEK [0022].
Regarding claims 14-15, Connell discloses the transition metal in the curing agent being zinc and the azole being an imidazole or methylimidazole [0024]. Further, Connell as modified by Shimomura also discloses the azole being an imidazole or methylimidazole and the transition metal being zinc (see ([0009-0010]; [0036] of Shimomura).
Regarding claims 16-17, Connell as modified by Shimomura discloses the particle diameter of the curing agent to be between 1 to 150 nm, as Shimomura discloses the coordination polymer to have a particle diameter of 75nm (ZIF-7). The particle diameter disclosed by Connell anticipates the instantly claimed range as it is within the instantly claimed range.
It would have been obvious to an ordinarily skilled artisan to have modified the adhesive composition of Connell, with the coordination polymer particle diameter as disclosed by Shimomura, to arrive at the instant invention, in order to obtain a thermosetting composition that has excellent properties at relatively low temperatures [0013].
Response to Arguments
Applicant’s arguments, see Amendment, filed 03/12/2026, with respect to the rejection(s) of claim(s) 1 & 12 under 35 U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Connell, Shimomura, and Chen.
Applicant argues that given both Connell and Shimomura disclose the coordination polymer as a curing agent and disclose a lesser weight range than a majority (i.e. less than 50% of the composition), that the coordination polymer would not form crystal particles that agglomerate in the final product of an adhesive layer.
Examiner disagrees. While applicant has pointed to the ‘low’ weight range of the coordination polymer in the compositions of Connell and Shimomura, it is noted that no weight range specifically is claimed in the instant claim 1. Further, as pointed out above in the rejection of claim 1, it is noted that the coordination polymer is present as a curing agent, thus as a component that remains a part of the final reaction product rather than as a catalytst that can be recovered or removed. Thus, as such, with the way the instant claim 1 is recited, the teachings of Connell and Shimomura are entirely enough to meet the instant limitations, especially since no specific weight range for the components has been claimed. Finally, in the interest of providing compact prosecution, the teaching of Chen are incorporated to teach a composition of an adhesive that is entirely a colloidal solution in a dispersion medium, wherein the coordination polymer is a transition metal and azole.
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 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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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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