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 § 103
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.
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.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (U.S. Pub. 2009/0277678).
Regarding claim 18; Kuwabara discloses an epoxy resin (abstract, surface mount adhesive) composition, comprising: an epoxy resin (abstract, epoxy resin); a curing agent (abstract, curing agent); a first filler (abstract, first filler) having a specific gravity of greater than 0.5 (para [0014], first filler has a specific gravity of 1.5-3); and a second filler (abstract, second filler), the second filler having a greater specific gravity than first filler (abstract, second filler having 1.1-3 times that of first filler) comprising a different filler than the first filler (para [0066]-[0067], first filler talc second filler alumina [0016]), and a total wt percent of the first filler and the second filler that is from greater than 0 to less than 50 wt percent based on a total wt percentage of the epoxy resin composition, the total wt percentage of the epoxy resin composition being 100 wt percent (para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1). Kuwabara lists of suitable first filler (para [0039]) and second filler (para [0043]) materials substantially overlaps with the presently disclosed list of suitable first filler (para [0036]-[0037]) and second filler (para [0047]-[0048]) materials. Specifically, Kuwabara’s first filler materials include talc, calcium sulfate, carbon black, and mica, which overlaps with the presently disclosed first filler materials. Additionally, Kuwabara’s second filler materials include alumina, quartz, titanium dioxide, and silica, which overlaps with the presently disclosed second filler materials. It would have been obvious to a person having ordinary skill in the art to have selected first and second filler materials that meet the claimed loose bulk density properties based on the teachings that distinct fillers having different properties may be used, motivated by the desire to optimize the properties of the epoxy resin composition based on the selection of the specific filler materials.
Regarding claim 19; Kuwabara discloses an epoxy resin of claim 18 as discussed. Kuwabara further discloses herein the epoxy resin composition comprises: from about 40 to about 45 wt percent of the first filler based on the total wt percent of the epoxy resin composition; and from about 5 to about 10 wt percent of the second filler based on the total wt percent of the epoxy resin composition (para [0045], weight ratio of first filler to second filler is 1:3 to 3:1 and para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1).
Regarding claim 20; Kuwabara discloses an epoxy resin of claim 18 as discussed. Kuwabara further discloses wherein the first filler is talc (para [0066], first filler talc) and second filler is aluminum oxide (para [0084], alumina is used as second filler). Kuwabara does not disclose the loose bulk density of the second filler is less than about 0.2 g/cm3. However, Kuwabara discloses a first filler with bulk density of 0.48 (para [0070], Table 2 0.48); it would have been obvious to a person having ordinary skill in the art to infer that the second filler can have a bulk density of 0.2 g/cm3; through routine experimentation. See KSR obviousness rational (E) in MPEP 2141.
Claims 1-10 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Amogreentech Co. Ltd. (U.S. Pub. 2023/0038099) in view of Kuwabara et al. (U.S. Pub. 2009/0277678).
Regarding claim 1; Amogreentech discloses a rotor (para [0034], rotor) of an electric motor (para [0034], motor), comprising: a magnet (para [0035], permanent magnet synchronous motor in which a permanent magnet is inserted into the rotor); and an epoxy resin composition disposed over the magnet (Fig 3 disclosing the epoxy resin labeled 142 disposed over the magnet coil labeled 132 and para [0002], electromagnetic force generated by the stator coil), the epoxy resin composition comprising: an epoxy resin (para [0053], curable resin may be an epoxy resin); a curing agent (para [0059], curing agent); a first filler (para [0058], first heat dissipation filler and para [0048], first dissipation filler may include talc), the second filler comprising a different filler than the first filler (para [0054], second heat dissipation filler and para [0054], second heat dissipation filler may be aluminum hydroxide), and a total wt percent of the first filler and the second filler is specified weight percent based on a total wt percent of the epoxy resin composition (para [0058], 65 wt percent of first heat dissipation filler and para [0059], aluminum hydroxide at 55 wt percent), the total wt percent of the epoxy resin composition being 100 wt percent (para [0058]-[0059] disclosing the epoxy compositions). Although Amogreentech does not disclose wherein the first and second filler are between 0-50 weight percent of the composition; it would have been obvious to a person having ordinary skill in the art to infer that such a composition can be made through routine experimentation, depending on final properties desired (para [0060], Table 1 disclosing properties of the composition) through routine experimentation. See KSR obviousness rational (E) in MPEP 2141. Amogreentech further does not disclose first filler having a loose bulk density of greater than 0.5 g/cm3; and a second filler having a loose bulk density of 0.5 g/cm3 or less. However, as detailed above, Kuwabara suggests an epoxy resin composition (abstract) that discloses the use of an epoxy resin (abstract) a curing agent (abstract) and a first filler (abstract) and a second filler (abstract) wherein the first filler has a bulk density greater than 0.5 g/cm3 (abstract, specific gravity of 1.7-4.5) and second filler has a bulk density of 0.5 g/cm3 or less (para [0070], Table 2 bulk density 0.48) and wherein the first and second filler are between 0-50 weight percent of the composition (para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1). As both Amogreentech and Kuwabara disclose making an epoxy resin composition, it would have been obvious to a person having ordinary skill in the art to use the filler compositions as disclosed by Kuwabara in the composition disclosed by Amogreentech, as it provides for enhanced properties (Kuwabara, para [0045], dispensing properties and storage stability of the surface mount adhesive are significantly improved).
Regarding claim 2; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed. Kuwabara further discloses herein the epoxy resin composition comprises: from about 20 to about 30 wt
percent of the epoxy resin based on the total wt percent of the epoxy resin composition and from about
20 to about 30 wt percent of the curing agent based on the total wt percent of the epoxy resin composition (para [0050]-[0055], curing agent is 30-100 parts by weight of the epoxy resin and weight ratio of base resin to filler is 1.5:1 to 3:1).
Regarding claim 3; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed. Kuwabara further discloses wherein the epoxy resin composition comprises: from about 40 to about 45
wt percent of the first filler based on the total wt percent of the epoxy resin composition; from about 5 to about 10 wt percent of the second filler based on the total wt percent of the epoxy resin composition; or combinations thereof (para [0045], weight ratio of first filler to second filler is 1:3 to 3:1 and para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1).
Regarding claim 4; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed. Kuwabara further discloses wherein the epoxy resin composition further comprises a polyhydric alcohol
(para [0047], bisphenol A epoxy resins).
Regarding claim 5; Amogreentech in view of Kuwabara discloses a rotor of claim 4 as discussed.
Kuwabara further discloses wherein the epoxy resin composition comprises from greater than 0 to about 2 wt percent or less of the polyhydric alcohol based on a total wt percent of the epoxy resin composition (para [0063], liquid epoxy bisphenol A/F mixed resin and para [0084], weight ratio of base resin to fillers was set at 2:1).
Regarding claim 6; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed.
Kuwabara further discloses wherein the first filler of the epoxy resin composition comprises talc (para
[0070], first filler used was talc).
Regarding claim 7; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed.
Kuwabara further discloses the second filler of the epoxy resin composition comprises aluminum oxide
(para [0067], second filler alumina).
Regarding claim 8; Amogreentech in view of Kuwabara discloses a rotor of claim 1 as discussed.
Kuwabara further discloses an amount of the second filler in the epoxy resin composition is from greater
than 0 to about 10 wt percent based on the total wt percent of the epoxy resin composition; a weight ratio of the first filler to the second filler is from about 4:1 to about 9:1; or combinations thereof (para [0045], weight ratio of first filler to second filler is 1:3 to 3:1 and para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1).
Regarding claim 9; Amogreentech discloses an article (fig 3 disclosing an article), comprising: a metal substrate (Fig 3 disclosing a metal substrate labeled 132 and para [0033], wound coil 132 and para
[0059], wound coil formed of copper); a material disposed on the metal substrate (fig 3 part labeled
142 disposed on the substrate labeled 132 and para[0056], heat transfer filling composition 142), the material comprising: an epoxy resin composition comprising: an epoxy resin (para [0053], curable resin
may be an epoxy resin); a curing agent (para [0059], curing agent); a first filler (para [0058], first heat
dissipation filler and para [0048], first dissipation filler may include talc), the second filler comprising
a different filler than the first filler (para [0054], second heat dissipation filler and para [0054], second
heat dissipation filler may be aluminum hydroxide), and a total wt percent of the first filler and the second filler is specified weight percent based on a total wt percent of the epoxy resin composition (para [0058], 65 wt percent of first heat dissipation filler and para [0059], aluminum hydroxide at 55 wt percent), the total wt percent of the epoxy resin composition being 100 wt percent (para [0058]-[0059] disclosing the epoxy compositions). Although Amogreentech does not disclose wherein the first and second filler are between 0-50 weight percent of the composition; it would have been obvious to a person having ordinary skill in the art to infer that such a composition can be made through routine experimentation, depending on final properties desired (para [0060], Table 1 disclosing properties of the composition) through routine experimentation. See KSR obviousness rational (E) in MPEP 2141. Amogreentech further does not disclose first filler having a loose bulk density of greater than 0.5 g/cm3; and a second filler having a loose bulk density of 0.5 g/cm3 or less. However, Kuwabara discloses an epoxy resin composition (abstract) that discloses the use of an epoxy resin (abstract) a curing agent (abstract) and a first filler (abstract) and a second filler (abstract) wherein the first filler has a bulk density greater than 0.5 g/cm3 (abstract, specific gravity of 1.7-4.5) and second filler has a bulk density of 0.5 g/cm3 or less (para [0070], Table 2 bulk density 0.48) and wherein the first and second filler are between 0-50 weight percent of the composition (para [0055], weight ratio of base resin to filler is 1.5:1 to 3:1). As both Amogreentech and Kuwabara disclose making an epoxy resin composition, it would have been obvious to a person having ordinary skill in the art to use the filler compositions as disclosed by Kuwabara in the composition disclosed by Amogreentech, as it provides for better properties (Kuwabara, para [0045], dispensing properties and storage stability of the surface mount adhesive are significantly improved).
Regarding claim 10; Amogreentech in view of Kuwabara discloses an article of claim 9 as discussed. Kuwabara further discloses wherein the epoxy resin composition further comprises a polyhydric alcohol (para [0047], bisphenol A epoxy resins).
Regarding claim 14; Amogreentech in view of Kuwabara discloses an article of claim 9 as discussed. Amogreentech further discloses wherein the metal substrate comprises copper (Fig 3 disclosing a metal substrate labeled 132 and para [0033], wound coil 132 and para [0059], wound coil formed of copper).
Regarding claim 15; Amogreentech in view of Kuwabara discloses an article of claim 9 as discussed. Amogreentech further discloses wherein the metal substrate comprises a component of an electric motor (para [0035], electric motor).
Regarding claim 16; Amogreentech in view of Kuwabara discloses an article of claim 15 as discussed. Amogreentech further discloses wherein the component of the electric motor comprises a rotor or a component thereof (para [0034], motor comprises a rotor).
Regarding claim 17; Amogreentech in view of Kuwabara discloses an article of claim 9 as discussed. Kuwabara further discloses wherein the epoxy resin of the epoxy resin composition is derived from a compound selected from the group consisting of bisphenol A (para [0047], bisphenol A epoxy resin).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Amogreentech Co. Ltd. (U.S. Pub. 2023/0038099) in view of Kuwabara et al. (U.S. Pub. 2009/0277678) and Sumitomo Bakelite Co. Ltd. (U.S. Pub. 2019/0256647).
Regarding claim 11; Amogreentech in view of Kuwabara discloses an article of claim 10 as discussed. Neither Amogreentech nor Kuwabara disclose wherein the polyhydric alcohol is selected from the group consisting of ethylene glycol, propylene glycol, polyethylene glycol, polypropylene glycol, and
combinations thereof. However, Sumitomo discloses an epoxy resin composition (abstract) that discloses wherein the polyhydric alcohol is selected from the group consisting of ethylene glycol, propylene glycol, polyethylene glycol, polypropylene glycol, and combinations thereof (para [0064], epoxy resin can include polyolefin glycol as a low stress agent). As Amogreentech, Kuwabara and Sumitomo all disclose the use of epoxy compositions; it would have been obvious to a person to use the polyolefin glycol disclosed by Sumitomo in the composition disclosed by Amogreentech and Kuwabara, through routine experimentation, as it provides for a better property (Sumitomo, para [0064], epoxy resin can include polyolefin glycol as a low stress agent).
Regarding claim 12; Amogreentech in view of Kuwabara discloses an article of claim 9 as discussed. Neither Amogreentech nor Kuwabara disclose wherein the material disposed on the metal substrate further comprises a sulfur-containing coupling agent disposed on the metal substrate; and the epoxy resin composition is disposed on the sulfur-containing coupling agent. However, Sumitomo discloses an epoxy resin composition (abstract) that discloses a sulfur-containing coupling agent (para [0060], coupling agent such as mercaptosilane) disposed on the metal substrate; and the epoxy resin composition is disposed on the sulfur-containing coupling agent (para [0060], epoxy resin composition of the present invention can include a coupling agent). As Amogreentech, Kuwabara and Sumitomo all disclose the use of epoxy compositions; it would have been obvious to a person to use the coupling agent disclosed by Sumitomo in the composition disclosed by Amogreentech and Kuwabara, through routine experimentation, as it provides for a better properties (Sumitomo, para [0061], content of the coupling agent it is possible for improvement of the mechanical strength).
Regarding claim 13; Amogreentech in view of Kuwabara in further view of Sumitomo discloses an article of claim 12 as discussed. Neither Amogreentech, Kuwabara nor Sumitomo further discloses
sulfur-containing coupling agent comprises L-cysteine. However, Sumitomo discloses the use of amino
compounds as a coupling agent (for example para [0060], aminosilane); it would have been obvious to a person having ordinary skill in the art to use L-cystiene; through routine experimentation. See KSR obviousness rational (E) in MPEP 2141.
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.
Claims 9-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/429,646. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in scope. Specifically, the present claims are directed to an epoxy resin composition and a laminate comprising an epoxy layer and a metal layer, wherein the epoxy resin includes a first filler having a loose bulk density of greater than 0.5 g/cm3 and a second filler having a loose bulk density of less than 0.5 g/cm3. The claims of ‘646 are directed to an epoxy resin composition and epoxy coated substrate (claims 12-15), which can be a part of a vehicle (claim 14), wherein the epoxy rein includes a first filler having a density of greater than 0.2 g/cm3 and a second filler having a density of less than 0.2 g/cm3. As set forth in U.S. Pub. 2025/0250471, the U.S. Pub. Of U.S. Application No. 18/429,646, the claimed first filler having a density of greater than 0.2 g/cm3 encompasses a filler having a density of greater than 0.5 g/cm3 [0047]. Further, while US ‘646 does not specifically claim a metal substrate, claim 14 does state that the substrate can be part of a vehicle and the specification does not limit the substrate to a specific material [0117]. Thus, it would have been obvious to one of ordinary skill in the art to have used a metal part of a vehicle as the substrate for the epoxy composition of US ‘646, motivated by the desire to a metal vehicle part that can be subjected to high mechanical stresses [0002].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781