DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/22/2026 has been entered.
3. Claims 1, 7-15 are pending. Claim 1 is are under examination on the merits. Claim 1 is amended. Claims 2-3, 5-6 are cancelled. Claim 4 is previously cancelled. Claims 7-15 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claim 1 has been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 102/103
6. 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.
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.
7. Claim 1 is rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Balijepalli et al. (US Pub. No. 2017/0349795 A1, hereinafter “’795”) as further evidence by Eriko Sato (US Pub. No. 2020/0339782 A1, hereinafter “’782”), and Okamoto et al. (US Pub. No. 2018/0265659 A1, hereinafter “’659”).
Regarding claim 1: ‘795 discloses an adhesive composition (Page 3, [0001]) comprises: based on the two weight of the adhesive composition, a. 27.3 wt % of the preferred epoxy mixture (Page 3, [0026]), 22.1 wt % of a urethane toughener (Page 3, [0027]), c. 13.0 wt % of a CTBN-epoxy adduct toughener (Page 3, [0028]),14.2 wt % of a core shell rubber toughener (Page 3, [0029]), e. 0.7 wt % of a modified epoxy resin (Page 3, [0030]), f. 4.3 wt % of a hardener (Page 3, [0031]), g. 5.0 wt % of a blocked tertiary amine catalyst (Page 3, [0032]), h. 3.0 wt % of glycidyl ester of neodecanoic acid (Page 3, [0033]), i. 3.9 wt % of a fumed silica (Page 3, [0034]), j. 0.4 wt % of ethylene/vinyl acetate powder (Page 3, [0035]), and k. 6.0 wt % of calcium oxide (Page 3, [0036]), and l. 0.1 wt % of a colorant (Page 3, [0037]). ‘795 discloses the core-shell rubber particles include a cross-linked rubber core, in most cases being a cross-linked copolymer of butadiene, and a shell which is preferably a copolymer of styrene, methyl methacrylate, glycidyl methacrylate and optionally acrylonitrile (Page 2, [0018]). The core-shell rubber is preferably dispersed in a polymer or an epoxy resin, wherein the preferred core-shell rubbers include those sold by Kaneka Corporation under the designation Kaneka Kane Ace™, including the Kaneka Kane Ace 15 and 20 series of products, including Kaneka Kane Ace MX 153, Kaneka Kane Ace MX 154 (Page 2, [0018]). As further evidenced, ‘782 discloses MX-153 (polybutadiene rubber: 333%, bisphenol A type liquid epoxy resin, average particle diameter: 100 nm), and MX-154 (polybutadiene rubber: 40%, bisphenol A type liquid epoxy resin, average particle diameter: 100-200 nm) (Page 8, [0094]). ‘659 also discloses MX-154 (Page 12, [0242]) “Product name” KANE ACE MX-154, “component” 60% by mass of bisphenol A type epoxy resin (bifunctional epoxy resin, epoxy equivalent: 189 g/eq) and 40% by mass of butadiene-based core-shell type rubber particles (volume average particle diameter: 100 nm), “supplier” KANEKA CORPORATION (Page 12, [0243]). ‘795 is silent with regard to a light-shielding film of black color, wherein the light-shielding film has an elastic modulus at -30°C of 2,500 MPa or more and 3,800 MPa or less and an elastic modulus at 20°C of 500 MPa or more and 2,600 MPa or less.
However, since ‘795 discloses the identical or substantially identical composition comprising a resin, an inorganic particle, an organic particle, and a colorant, wherein the organic particle is a core-shell particle which has a surface layer portion and a center portion, and an elastic modulus of the surface layer portion is higher than an elastic modulus of the center portion as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. an elastic modulus, would inherently/implicitly be achieved by ‘795 (i.e., the light-shielding film has an elastic modulus at -30°C of 2,500 MPa or more and 3,800 MPa or less and an elastic modulus at 20°C of 500 MPa or more and 2,600 MPa or less). If there is any difference between the product of ‘795 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
It is submitted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Response to Arguments
8. Applicant’s arguments with respect to claim 1 has been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
07/28/2026
bijan.ahvazi@uspto.gov
Prosecution Insights