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
Claim 37 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.
Claim 37 recites “a mono-functional epoxy resin reactive diluent is present in the composition”. Parent claim 1 already requires the composition to comprise “vii) a mono-functional epoxy diluent to increase the flexibility of the composition”. Claim 37 is indefinite because it is unclear if the claim requires an additional monofunctional epoxy resin diluent or if the claim is met by the presence of the component (vii) of claim 1. For examination purposes, the examiner considers the presence of the component (vii) to meet the requirements of claim 37 (i.e., the claim is interpreted as not requiring an additional diluent).
Claim Rejections - 35 USC § 103
Claim(s) 1, 29-31, 34-36, and 40-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view of Brandys et al. (US 2002/0076566), Czaplicki (WO 2013/068819), and Kassa et al. (US 2007/0090560).
Regarding claims 1, 29, and 40-41:
Czaplicki ‘382 discloses thermosetting structural adhesives comprising (i) an epoxy/elastomer adduct (toughener), (ii) a phenoxy resin, (iii) a core/shell polymer, (iv) a curing agent, a liquid epoxy, and a filler [abstract; 0001; 0010-0014; 0018; 0028-0031]. The amount of phenoxy resin is 3-20% by weight, although higher percentages are within the scope of the invention, and the amount of core/shell polymer is 5-30% by weight [0019; 0052]. The curing agent is thermally activated and the amount thereof is 0.001-7% by weight [0026-0027; 0057]. The adhesive is nonreactive (stable) at room temperature [0051].
Czaplicki ‘382 teaches up to 5% by weight of blowing agent [0044]. The expanded volume is 50-400% greater [0006].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of the components, including over amounts falling within the presently claimed range to provide a structural adhesive according to Czaplicki ‘382, and thereby arrive at the claimed invention.
Czaplicki ‘382 teaches liquid monofunctional epoxy resins can be added to adjust the flow properties of the adhesive (i.e., as a diluent) [0029-0031].
Czaplicki ‘382 is silent with regard to a monofunctional epoxy diluent that increases flexibility.
Such materials were known in the art to have utility. For example, Brandys discloses epoxy adhesive compositions for use with dissimilar substrates [abstract; 0003; 0011; 0083]. The reference teaches reactive monofunctional epoxy diluents can be used to control the viscosity of the composition and also impart flexibility to the cured composition [0058].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a monofunctional epoxy diluent to increase the flexibility of the adhesive as known in the art. The examiner notes the present limitation that the diluent is “for use with dissimilar substrates” is an intended use of the adhesive. Additionally, the increased flexibility that is suggested by Brandys would impart the implied structural/property features of the presently claimed invention.
Czaplicki ‘382 discloses examples wherein the adhesive is applied to oily metal surfaces [0123]. The examiner submits the prior art adhesive has the same property of adhesively bonding to oily surfaces as presently claimed because the adhesive is otherwise the same as presently claimed.
Czaplicki ‘382 discloses the adhesive is provided in an extruded form or can be provided on a carrier material (i.e., extrudate form) [0058-0061].
Czaplicki ‘382 discloses example cured bondline thicknesses of 0.3 mm [0066; 0122].
Czaplicki ‘382 is silent with regard to the overall uncured thickness of the adhesive.
One skilled in the art recognized the thickness of an adhesive depends on its final use. For example, Czaplicki WO ‘819 discloses structural adhesives (abstract; p1). The adhesives are activatable (curable) and foamable (p3). The reference teaches the dimensions of the curable adhesive can be set depending upon a desired end use and further teaches an example range of thicknesses of 0.3-15 mm (p20).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the uncured thickness of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) dimensions for a given end use.
Czaplicki ‘382 is silent with regard to the density of the adhesive composition.
One skilled in the art recognized the claimed density were conventional values. For example, Kassa discloses shaped expandable material that adheres to structures [0004; 0010-0011]. The adhesive comprises epoxy resin and phenoxy resin [0019; 0021]. The uncured density of the adhesive is in the range of 0.2 g/cc or greater and less than 4.0 g/cc, typically less than 2.0 g/cc [0080]. The use of an expandable material provides a lower post-cure density, which helps lower the density of final articles containing the material [0060; 0081].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the uncured density of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) density and weight for a given end use.
Regarding claims 30-31:
Czaplicki ‘382 teaches a metal oxide [0043].
Regarding claim 42:
Czaplicki ‘382 teaches a flame retardant [0050].
Claim(s) 32-33 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view of Brandys et al. (US 2002/0076566), Czaplicki (WO 2013/068819) and Kassa et al. (US 2007/0090560) as applied above, and further in view of Czaplicki et al. (US 2005/0020703).
Regarding claims 32-33:
Czaplicki ‘382 discloses structural adhesives as previously explained. The reference teaches the use of metal oxides as a blowing agent accelerator [0043].
Czaplicki ‘382 is silent with regard to calcium oxide.
This material was known in the art to have utility. For example, Czaplicki ‘703 discloses an epoxy-based structural foam having adhesive properties [abstract; 0001; 0014]. The reference teaches calcium oxide is a useful blowing agent accelerator [0015].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use calcium oxide as the metal oxide to provide accelerated foaming properties as known in the art.
Regarding claim 37:
Czaplicki ‘382 teaches liquid monofunctional epoxy resins can be added to adjust the flow properties of the adhesive (i.e., as a diluent) [0029-0031]. Brandys teaches reactive monofunctional epoxy diluents [0058]. The core/shell comprises butadiene [0023-0025].
Claim(s) 38 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view of Brandys et al. (US 2002/0076566), Czaplicki (WO 2013/068819) and Kassa et al. (US 2007/0090560) as applied above, and further in view of Aspin (US 2010/0108259).
Regarding claim 38:
Czaplicki ‘382 discloses structural adhesives as previously explained. The adhesive comprises sulfones in amounts of 1-20% by weight [0032-0033].
Czaplicki ‘382 is silent with regard to polyethersulfones.
These materials were known in the art to have utility. For example, Aspin discloses thermoplastic toughened epoxy adhesives [abstract; 0001]. The thermoplastic toughener includes polyethersulfone [0020].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add polyethersulfone to the adhesive of Czaplicki ‘382 to provide improved toughness as known in the art.
Regarding claim 43:
Czaplicki ‘382 teaches a flame retardant [0050].
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view Ashida et al. (US 5,290,857), Brandys et al. (US 2002/0076566), Czaplicki (WO 2013/068819) and Kassa et al. (US 2007/0090560).
Regarding claim 44:
Czaplicki ‘382 discloses thermosetting structural adhesives comprising (i) an epoxy/elastomer adduct (toughener), (ii) a phenoxy resin, (iii) a core/shell polymer, (iv) a curing agent, a liquid epoxy, and a filler [abstract; 0001; 0010-0014; 0018; 0028-0031]. The amount of core/shell polymer is 5-30% by weight [0019; 0052]. The curing agent is thermally activated and the amount thereof is 0.001-7% by weight [0026-0027; 0057]. The adhesive is nonreactive (stable) at room temperature [0051].
Czaplicki ‘382 teaches up to 5% by weight of blowing agent [0044]. The expanded volume is 50-400% greater [0006].
Czaplicki ‘382 is silent with regard to graphite filler.
This material was known in the art to have utility. For example, Ashida discloses an epoxy resin adhesive (abstract; 1:7+). The reference teaches fillers are added to the adhesive to reduce costs, adjust viscosity, etc., which include silica and graphite (11:15+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add graphite as a known filler to reduce cost, adjust viscosity, and provide other known properties of such filler.
Czaplicki ‘382 teaches liquid monofunctional epoxy resins can be added to adjust the flow properties of the adhesive (i.e., as a diluent) [0029-0031].
Czaplicki ‘382 is silent with regard to a monofunctional epoxy diluent that increases flexibility.
Such materials were known in the art to have utility. For example, Brandys discloses epoxy adhesive compositions for use with dissimilar substrates [abstract; 0003; 0011; 0083]. The reference teaches reactive monofunctional epoxy diluents can be used to control the viscosity of the composition and also impart flexibility to the cured composition [0058].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a monofunctional epoxy diluent to increase the flexibility of the adhesive as known in the art. The examiner notes the present limitation that the diluent is “for use with dissimilar substrates” is an intended use of the adhesive. Additionally, the increased flexibility that is suggested by Brandys would impart the implied structural/property features of the presently claimed invention.
Czaplicki ‘382 discloses examples wherein the adhesive is applied to oily metal surfaces [0123]. The examiner submits the prior art adhesive has the same property of adhesively bonding to oily surfaces as presently claimed because the adhesive is otherwise the same as presently claimed.
Czaplicki ‘382 discloses the adhesive is provided in an extruded form or can be provided on a carrier material (i.e., extrudate form) [0058-0061].
Czaplicki ‘382 discloses example cured bondline thicknesses of 0.3 mm [0066; 0122].
Czaplicki ‘382 is silent with regard to the overall uncured thickness of the adhesive.
One skilled in the art recognized the thickness of an adhesive depends on its final use. For example, Czaplicki WO ‘819 discloses structural adhesives (abstract; p1). The adhesives are activatable (curable) and foamable (p3). The reference teaches the dimensions of the curable adhesive can be set depending upon a desired end use and further teaches an example range of thicknesses of 0.3-15 mm (p20).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the uncured thickness of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) dimensions for a given end use.
Czaplicki ‘382 is silent with regard to the density of the adhesive composition.
One skilled in the art recognized the claimed density were conventional values. For example, Kassa discloses shaped expandable material that adheres to structures [0004; 0010-0011]. The adhesive comprises epoxy resin and phenoxy resin [0019; 0021]. The uncured density of the adhesive is in the range of 0.2 g/cc or greater and less than 4.0 g/cc, typically less than 2.0 g/cc [0080]. The use of an expandable material provides a lower post-cure density, which helps lower the density of final articles containing the material [0060; 0081].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the uncured density of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) density and weight for a given end use.
Claim(s) 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view Ashida et al. (US 5,290,857), Brandys et al. (US 2002/0076566), Czaplicki (WO 2013/068819) and Kassa et al. (US 2007/0090560) as applied to claim 44 above, and further in view of Aspin (US 2010/0108259).
Regarding claim 45:
Czaplicki ‘382 discloses structural adhesives as previously explained. Czaplicki teaches a substituted urea curing agent [0027]. The adhesive comprises sulfones in amounts of 1-20% by weight [0032-0033].
Czaplicki ‘382 is silent with regard to polyethersulfones.
These materials were known in the art to have utility. For example, Aspin discloses thermoplastic toughened epoxy adhesives [abstract; 0001]. The thermoplastic toughener includes polyethersulfone [0020].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add polyethersulfone to the adhesive of Czaplicki ‘382 to provide improved toughness as known in the art.
Claim(s) 46 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view Ashida et al. (US 5,290,857), Brandys et al. (US 2002/0076566), Czaplicki et al. (US 2005/0020703), and Czaplicki (WO 2013/068819).
Regarding claim 46:
Czaplicki ‘382 discloses thermosetting structural adhesives comprising (i) an epoxy/elastomer adduct (toughener), (ii) a phenoxy resin, (iii) a core/shell polymer, (iv) a curing agent, a liquid epoxy, and a filler [abstract; 0001; 0010-0014; 0018; 0028-0031]. The amount of phenoxy resin is 3-20% by weight, although higher percentages are within the scope of the invention and the amount of core/shell polymer is 5-30% by weight [0019; 0052]. The core/shell polymer comprises butadiene [0023-0025]. The curing agent includes a substituted urea and the amount thereof is 0.001-7% by weight [0026-0027; 0057]. The filler includes silica [0046]. Czaplicki teaches up to 5% by weight of blowing agent [0044]. The adhesive is nonreactive (stable) at room temperature [0051]. The expanded volume is 50-400% greater [0006].
Czaplicki ‘382 is silent with regard to graphite filler.
This material was known in the art to have utility. For example, Ashida discloses an epoxy resin adhesive (abstract; 1:7+). The reference teaches fillers are added to the adhesive to reduce costs, adjust viscosity, etc., which include silica and graphite (11:15+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add graphite as a known filler to reduce cost, adjust viscosity, and provide other known properties of such filler.
Czaplicki ‘382 is silent with regard to fumed silica filler.
This material was known in the art to have utility. For example, Czaplicki ‘703 discloses an epoxy-based structural foam having adhesive properties [abstract; 0001; 0014]. The reference teaches fillers include fumed silica, which also provide nucleating and thixotropic properties [0020; 0022].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use fumed silica as a known filler that also provides nucleating and thixotropic properties.
Czaplicki ‘382 teaches liquid monofunctional epoxy resins can be added to adjust the flow properties of the adhesive (i.e., as a diluent) [0029-0031].
Czaplicki ‘382 is silent with regard to a monofunctional epoxy diluent that increases flexibility.
Such materials were known in the art to have utility. For example, Brandys discloses epoxy adhesive compositions for use with dissimilar substrates [abstract; 0003; 0011; 0083]. The reference teaches reactive monofunctional epoxy diluents can be used to control the viscosity of the composition and also impart flexibility to the cured composition [0058].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a monofunctional epoxy diluent to increase the flexibility of the adhesive as known in the art. The examiner notes the present limitation that the diluent is “for use with dissimilar substrates” is an intended use of the adhesive. Additionally, the increased flexibility that is suggested by Brandys would impart the implied structural/property features of the presently claimed invention.
Czaplicki ‘382 discloses the adhesive is provided in an extruded form or can be provided on a carrier material (i.e., extrudate form) [0058-0061]. Czaplicki ‘382 discloses example cured bondline thicknesses of 0.3 mm [0066; 0122].
Czaplicki ‘382 is silent with regard to the overall uncured thickness of the adhesive.
One skilled in the art recognized the thickness of an adhesive depends on its final use. For example, Czaplicki WO ‘819 discloses structural adhesives (abstract; p1). The adhesives are activatable (curable) and foamable (p3). The reference teaches the dimensions of the curable adhesive can be set depending upon a desired end use and further teaches an example range of thicknesses of 0.3-15 mm (p20).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the uncured thickness of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) dimensions for a given end use.
Regarding claim 48:
Czaplicki ‘382 teaches a metal oxide [0043].
Claim(s) 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al. (US 2011/0098382) in view Ashida et al. (US 5,290,857), Brandys et al. (US 2002/0076566), Czaplicki et al. (US 2005/0020703), and Czaplicki (WO 2013/068819) as applied to claim 46 above, and further in view of Kassa et al. (US 2007/0090560).
Regarding claim 47:
Czaplicki ‘382 discloses structural adhesives as previously explained.
Czaplicki ‘382 is silent with regard to the density of the adhesive composition.
One skilled in the art recognized the claimed density were conventional values. For example, Kassa discloses shaped expandable material that adheres to structures [0004; 0010-0011]. The adhesive comprises epoxy resin and phenoxy resin [0019; 0021]. The uncured density of the adhesive is in the range of 0.2 g/cc or greater and less than 4.0 g/cc, typically less than 2.0 g/cc [0080]. The use of an expandable material provides a lower post-cure density, which helps lower the density of final articles containing the material [0060; 0081].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the density of the adhesive of Czaplicki ‘382, including over values within the claimed range, to provide the desired initial and final (after expansion) density and weight for a given end use.
Response to Arguments
Applicant's arguments filed 8/5/2025 have been fully considered but they are not persuasive.
Applicant argues Czaplicki US ‘382 (Czaplicki #1) does not address the need for flexibility during adhesion of dissimilar materials, nor does the reference disclose a monofunctional epoxy resin that provides such flexibility (p6).
Czaplicki US ‘382, however, does teach the desirability of flexibility generally [0016]. Additionally, the reference teaches liquid monofunctional epoxy resins can be added to adjust the flow properties of the adhesive (i.e., as a diluent) [0029-0031]. While the reference is silent with regard to a monofunctional epoxy diluent that increases flexibility, newly cited Brandys demonstrates it was known in the art to provide reactive monofunctional epoxy diluents can be used to control the viscosity of the composition and also impart flexibility to the cured composition [0058]. Therefore, one skilled in the art would have been motivated to use such diluents to provide increased flexibility. The examiner notes the present limitation that the diluent is “for use with dissimilar substrates” is an intended use of the adhesive. The increased flexibility that is suggested by Brandys would impart the implied structural/property features of the presently claimed invention.
Applicant argues Czaplicki WO ‘819 (Czaplicki #2) only discloses flexibility in reference to a pre-cured material rather than a post-cured material (p7). Applicant argues the thicknesses disclosed in the reference are irrelevant to the claimed material because the reference does not disclose a monofunctional epoxy diluent for imparting flexibility and the disclosed bondline thicknesses are for post-cured material (p7).
The examiner notes the rejections do not rely on Czaplicki WO ‘819 to teach flexibility. Instead, the rejections rely on Brandys’ teaching of monofunctional epoxy diluents that impart flexibility. Furthermore, the examiner maintains one of ordinary skill would have been motivated to adjust the thickness of the adhesive to provide the dimensions desired for a given end use. The examiner also respectfully disagrees that the thicknesses disclosed by Czaplicki WO ‘819 refer to post-cure thicknesses. The reference discloses a heat-activatable adhesive tape (abstract). Page 20 discloses: “In one preferred embodiment the adhesive is in the form of a tape, strip or film produced by extrusion. The preferred dimensions of the tape, strip or film will depend upon the use to which it is to be put however tapes for structural bonding in the automobile and aerospace industries typically have a thickness of from 0.3 to 15 mm and a width of from 10 to 100 mm.” There is no indication these refer to thicknesses after the tape has been heat-activated. Regardless, however, the discloses values demonstrate thicknesses typically used and known to one of ordinary skill in the art. Therefore, the examiner maintains the rejections.
Applicant argues Kassa does not disclose the use of dissimilar material or post-cure flexibility (p7). Applicant argues the reference’s teachings about density are therefor inapplicable (p7).
The examiner notes the rejections do not rely on Kassa to teach flexibility or dissimilar materials. Instead, the rejections rely on Brandys’ teaching of monofunctional epoxy diluents that impart flexibility. Furthermore, the examiner maintains one of ordinary skill would have been motivated to adjust the density of the uncured adhesive to provide the post-expansion density and weight desired for a given end use.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787