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 filed 7/15/20206 has been entered. Claims 1-10 and 19 have been canceled. Claims 11-18 and 20 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 11-18 and 20 are 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. Claim 11 recites the limitation “the second inorganic particles” in line 10. There is insufficient antecedent basis for this limitation in the claim given that the claim recites “a second set of inorganic particles comprising a second surface functionality” (emphasis added) but not “second inorganic particles” as claimed.
Dependent claims 12-18 and 20 do not remedy the above and hence are indefinite for the same reasons.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is further noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
Hence, it is noted that the claimed “is formed from a reaction” limitations as recited in instant claims 11 and 13 are process limitations in the product claims, and thus only the final structure(s) implied by the reaction(s) have been considered with respect to the claimed product.
Claim Rejections - 35 USC § 103
Claims 11-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Phonthammachai (US2013/0005856A1) in view of Ghanbaralizadeh (A novel method for toughening epoxy resin through CO2 fixation reaction) or Ke (Critical transition of epoxy resin from brittleness to toughness by incorporating CO2-sourced cyclic carbonate), for generally the same reasons as recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, Phonthammachai teaches a nanocomposite having individual surface-functionalized, nano-sized silica particles dispersed in a polymer matrix and a method of making the nanocomposite via a solvent-free one-pot synthesis process comprising a step of curing a substantially homogeneous mixture of surface-functionalized nano-sized silica particles, a polymerizable resin, and a curing agent, such as in a mold as in the examples, to produce a molded nanocomposite having a desired shape, wherein the nanocomposite can also be used to coat a fiber for fiber reinforcement for use in the field of structural components of automotive, aerospace, submarine, military, electronic, sporting good and energy industries (Abstract, Examples, Paragraphs 0105). Phonthammachai teaches that in one embodiment, the surface-functionalized nano-sized silica particles are produced according to Scheme 1 as shown in Paragraph 0046 wherein the resulting silica particles have amino groups linked to a surface of the inorganic silica particles and are formed from the reaction between in-situ sol-gel synthesized nano-sized silica particles and an aminosilane such as 3-aminopropyl trimethoxysilane (APTMS) as utilized in the examples and shown in Scheme 1, in the presence of a polymerizable resin as a diluent and under vigorous stirring at a temperature between about 20°C to about 60°C, or about 40°C to about 60°C, with working examples conducted at 50°C (as in instant claims 7-8 and 10) and specifically utilizing a diglycidyl ether of bisphenol A (i.e., D.E.R.® 332 from Dow) as the polymerizable resin (as in instant claims 11 and 15) with diethyltoluenediamine as an amine curing agent (as in instant claim 16), and APTMS as the aminosilane resulting in silica/epoxy nanocomposites having amino-surface-functionalized nano-sized silica particles uniformly mono-dispersed within the cured epoxy resin matrix (as in instant claim 11) in a content of the silica nanoparticles of 1wt%, 2wt%, 3wt%, and 4wt% (as in instant claim 18; Paragraphs 0046, 0078-0081, Examples).
Phonthammachai also teaches that the epoxy matrix material may be an epoxy-containing monomer, oligomer, polymer or any combination thereof, with suitable epoxy matrix materials recited in Paragraphs 0059-0060, including derivatives thereof (Paragraphs 0058-0060); and although Phonthammachai further teaches that the organosilane coupling agent may comprise an epoxide group with suitable organosilanes as recited in Paragraph 0036 including both epoxysilanes and aminosilanes, wherein the recited silane compounds may be used alone or in combination of two or more thereof, thereby providing a teaching and/or suggestion that the composite may comprise functionalized particles having different functional groups (Paragraphs 0033-0036), Phonthammachai does not teach that the epoxy-based polymer matrix of the polymer composite further comprises inorganic particles comprising a surface functionality that is at least one reactive cyclic carbonate group linked to a surface of a second set of inorganic particles formed from a reaction between an inorganic particle and a cyclic carbonate silane-containing group as now recited in amended claim 1, nor that the epoxy-based polymer matrix further comprises cyclic carbonate groups formed between a reaction of the epoxy-based polymer matrix and a cyclizing compound as in instant claim 13, particularly carbon dioxide as in instant claim 14. However, as discussed in the prior office action, Phonthammachai does teach that the incorporation of inorganic filler particles is one known strategy for improving toughness and other mechanical properties of epoxy-based composites (Paragraphs 0002-0004 and 0053), such that one skilled in the art would have been motivated to combine said strategy with other known strategies for improving toughness and/or other mechanical properties of the epoxy/silica composite material. More specifically, each of Ghanbaralizadeh and Ke teaches that epoxy resins can be toughened by incorporating cyclic carbonate groups via reaction of epoxy groups with carbon dioxide wherein upon reaction of the incorporated cyclic carbonate groups of the CO2-modified epoxy compound (e.g., an epoxy derivative) with an amine curing agent (as in Phonthammachai), urethane linkages are incorporated into the cured epoxy network thereby improving the toughness of the epoxy resin, with Ghanbaralizadeh specifically modifying diglycidyl ether of bisphenol A (e.g., epoxy resin utilized in the examples of Phonthammachai) while Ke modifies an epoxy diluent monomer of ethylene glycol diglycidyl ether (e.g., similar to the propylene glycol-diglycidyl ether taught by Phonthammachai as a suitable aliphatic epoxy resin in Paragraph 0059) that is mixed with unmodified diglycidyl ether of bisphenol A (Entire documents, particularly Abstract and Experimental sections of each reference); and given that each of Ghanbaralizadeh and Ke are directed to the same field of endeavor as Phonthammachai, wherein Phonthammachai is also concerned with improving toughness of an epoxy resin/composite, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate cyclic carbonate groups into the curable epoxy/silica composition taught by Phonthammachai by reacting a portion of the epoxide groups of the epoxy resin and/or the epoxy-functional filler particles taught by Phonthammachai with CO2 as a cyclizing compound to further improve the toughness properties of the epoxy/silica composite, wherein the reacted portion of the epoxy resin would read upon and render obvious the claimed “epoxy-based polymer matrix further comprises cyclic carbonate groups formed between a reaction of the epoxy-based polymer matrix and a cyclizing compound” as recited in instant claim 13, particularly “wherein the cyclizing compound is carbon dioxide” as recited in instant claim 14, and similarly, the reacted portion of the epoxy-functional filler particles (e.g., formed by reacting the filler particles with an epoxysilane and then reacting the epoxy group with carbon dioxide as in Ghanbaralizadeh or Ke) would read upon the claimed “second set of inorganic particles comprising a second surface functionality, wherein the second surface functionality is at least one reactive cyclic carbonate group linked to a surface of the second inorganic particles” as recited in instant claim 11, given that the resulting surface functionality or final structure would be the same as the claimed “second surface functionality is formed from a reaction between an inorganic particle and a cyclic carbonate silane-containing group” of instant claim 11. Hence, the Examiner takes the position that the instantly claimed invention as recited in amended claims 11, 13, and 14 as well as instant claims 15-16 and 18 (the limitations of which are discussed above) would have been obvious over the teachings of Phonthammachai in view of Ghanbaralizadeh or Ke given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claim 12, Phonthammachai teaches that the method comprises a step of functionalizing the surface of the nano-sized silica particles by coupling functional groups, particularly amine groups, that can react with the resin matrix, utilizing organo-silane coupling agents, with suitable organo-silane coupling agents recited in Paragraph 0036 including various aminosilane such as aminopropyl trimethoxysilane as utilized in the examples as well as aminopropyl triethoxysilane (Paragraphs 0032-0036); and given that Phonthammachai specifically teaches that in one embodiment, the organo-silane is an organo-silane compound having the formula (Y-R)nSiXm, where Y is a chemical moiety capable of chemically reacting with the functional group of the matrix, particularly an amine group; R is a C3-6-alkyl group; X is a C1-6-alkoxy group (i.e., C1=methoxy, C2=ethoxy), and n and m are integers such that the sum of n+m is 4 (Paragraph 0037), with working examples specifically utilizing 3-aminopropyl) trimethoxysilane (APTMS) having a formula (I) as shown in Paragraph 0037, and with aminopropyltriethoxysilane specifically recited in Paragraph 0036, the claimed invention as recited in instant claim 12 would have been obvious over Phonthammachai in view of Ghanbaralizadeh or Ke, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or further given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results wherein the other claimed aminosilanes as recited in instant claim 12 are known, functionally-equivalent aminosilanes in the art to those as taught by Phonthammachai.
With respect to instant claim 17, Phonthammachai teaches that suitable amine curing agents include those as recited in Paragraph 0066 such as phenylenediamine which clearly encompasses the claimed m-phenylenediamine as recited in instant claim 17 given that a “phenylenediamine” compound has the two amine groups positioned at the 1,2 (ortho) or 1,3 (meta) or 1,4 (para) position. Hence, the claimed invention as recited in instant claim 17 would have been obvious over the teachings of Phonthammachai in view of Ghanbaralizadeh or Ke, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or further given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results wherein the other claimed amine curing agents as recited in instant claim 17 are known, functionally-equivalent amine curing agents in the art to those as taught by Phonthammachai.
With respect to instant claim 20, as noted above, Phonthammachai teaches that the curable mixture of surface-functionalized nano-sized silica particles, epoxy resin, and curing agent, may be placed or fed into a designed mold shape to produce a cured, molded nanocomposite having a desired shape; and that the nanocomposite material can also be used to coat a fiber for fiber reinforcement, for use in the field of structural components of automotive, aerospace, submarine, military, electronic, sporting good and energy industries (Paragraphs 0008 and 0106), thereby clearly teaching a “reinforced thermoset composite”; and although Phonthammachai does not specifically teach that the shape is tubular and/or that the resulting shaped composite is a “pipe” as recited in instant claim 20, given that a tubular shape or a pipe is an obvious shape or form for a molded reinforced composite article in the art, particularly with respect to the above industries taught by Phonthammachai (e.g., exhaust pipes in the automotive industry, oil and gas pipelines in the energy industry, etc.), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the claimed composite being in the form of a “pipe”, the claimed invention as recited in instant claim 20 would have been obvious over the combined teachings of Phonthammachai in view of Ghanbaralizadeh or Ke.
Claims 11-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Phonthammachai in view of Ghanbaralizadeh or Ke, as presented above, and further evidenced by Michalewich (US2024/0325826A1) and/or Kathalewar (Effect of incorporation of surface treated zinc oxide on non-isocyanate polyurethane based nano-composite coatings).
The teachings of Phonthammachai in view of Ghanbaralizadeh or Ke are discussed in detail above, and incorporated herein by reference, wherein it is again noted that each of Ghanbaralizadeh and Ke provides a clear teaching and/or suggestion of incorporating cyclic carbonate groups into the epoxy resin taught by Phonthammachai to thereby incorporate urethane linkages into the cured epoxy network thereby improving the toughness of the epoxy resin as discussed in detail above, and although the Examiner is of the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify a portion of the epoxy groups of the epoxy resin and/or the epoxy-functionalized filler particles taught by Phonthammachai to provide the cyclic carbonate groups, the Examiner further notes that it is well established in the art that cyclic carbonate groups may be incorporated into a resin matrix via cyclic carbonate functional oligomers and/or prepolymers and/or via cyclic carbonate functional silica/filler particles, as evidenced by Michalewich (Entire document, particularly Paragraphs 0037-0041 and Claim 20) and/or Kathalewar (Entire document, particularly Introduction and Fig. 2) which also provides evidence that it is known in the art that cyclic carbonate-functional inorganic filler particles may be formed from a reaction between an inorganic particle and a cyclic carbonate silane-containing group as instantly claimed. Hence, the claimed invention as recited in amended claims 11-18 and 20 would have been obvious over the teachings of Phonthammachai in view of Ghanbaralizadeh or Ke as discussed in detail above, and further evidenced by Michalewich and/or Kathalewar, given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive and/or moot with respect to the obviousness rejection over Phonthammachai in view of Ghanbaralizadeh or Ke as restated above with respect to the amended claims, and particularly as further evidenced by Michalewich and/or Kathalewar. Specifically, on page 10 of the response through the first two lines of page 11, the Applicant argues that Phonthammachai does not teach or suggest a polymer composite including an aminosilane compound on a first set of inorganic particles and a reactive cyclic carbonate group on a second set of inorganic particles as recited in amended claim 11, and that although Ghanbaralizadeh and Ke are cited as teaching that epoxy resins can be toughened by incorporating cyclic carbonate groups via reaction of epoxy groups with carbon dioxide, “neither of Ghanbaralizadeh nor Ke teach or suggest a polymer composite including an aminosilane compound on a first set of inorganic particles and a reactive cyclic carbonate group on a second set of inorganic particles” and “[t]hus, neither Ghanbaralizadeh nor Ke remedy the deficiencies of Phonthammachai” (see paragraph bridging pages 10-11). However, the Examiner first notes that the Applicant appears to be arguing the references separately and not as applied by the Examiner in the rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Phonthammachai as the primary reference provided a clear teaching and/or suggestion that that the composite may comprise functionalized particles having different functional groups, as discussed above, including amine functionality resulting from reaction with an aminosilane and epoxy functionality resulting from reaction with an epoxysilane, and given again that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to convert a portion of the epoxy groups of Phonthammachai, e.g., epoxy groups of the epoxy resin and/or epoxy groups of the epoxy-functionalized inorganic filler particles, to reactive cyclic carbonate groups as taught by each of Ghanbaralizadeh and Ke in order to improve toughness of the epoxy composite, the Examiner maintains her position that the claimed invention would have been obvious over the teachings of Phonthammachai in view of Ghanbaralizadeh or Ke. Further, although the Examiner is of the position that the claimed “formed from a reaction between an inorganic particle and a cyclic carbonate silane-containing group” is a process limitation in the product claim wherein the resulting structure would be the same as the inorganic particle first being modified with the epoxysilane as in Phonthammachai and then the epoxy group thereof further reacted with carbon dioxide to form the cyclic carbonate group as in Ghanbaralizadeh or Ke, the Examiner further notes that it is well established in the art that cyclic carbonate functionalized filler particles are known to be produced alternatively by reacting the filler particle with a cyclic carbonate-containing silane wherein the epoxysilane is first modified with the carbon dioxide to form a cyclic carbonate-containing silane that is then reacted with the inorganic particle as evidenced by Kathalewar, and are also known in the art to be a functionally-equivalent source of cyclic carbonate functionality in a resin composition such that given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results, the claimed invention would have been further obvious over the teachings of Phonthammachai in view of Ghanbaralizadeh or Ke as discussed in detail above.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 7/15/2026.
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 MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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