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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6 and 10 in the reply filed on 4/13/2026 is acknowledged.
Claims 7-9 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/13/2026.
Newly submitted claims 11 and 12 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Group 1 and claims 11 and 12 are related as intermediate-final product.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 11 and 12 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed 3/12/2024; 6/26/2025 and 5/26/2026 have been fully considered. Initialed copies of said IDSs are enclosed herein.
Drawings
The drawings filed 12/6/2023 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, there is no disclosure which describes to a skilled artisan how to obtain the claimed composition “wherein a detection time of an exothermic peak in differential scanning calorimetry that performs holing at 120C is 15 minutes or longer”
As set forth in MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” They are set forth and analyzed herein:
A) The breadth of the claims-the claims are considered extremely broad; the claims cover any composition comprising any epoxy resin, any epoxy resin curing agent, any polymer component, and any inorganic filler in any relative amounts with regards to one another.
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(C) The state of the prior art-the state of the prior art is considered low; after a full search of the invention, the examiner could not find any reference teaching a remotely similar composition characterized by an exothermic peak similar to that claimed. Applicant’s three IDSs also contain no such documents.
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(D) The level of one of ordinary skill;-the level of ordinary skill in the art is considered low. Specifically, the examiner takes the position that one of ordinary skill in the art would not be aware of what variables could be controlled/altered in order to satisfy the claimed requirement that the composition have “ a detection time of an exothermic peak in differential scanning calorimetry that performs holing at 120C is 15 minutes or longer”
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(E) The level of predictability in the art-the level of predictability in the art is considered low; a search of the prior art, the Global Dossier, and applicant’s submitted prior art contains no guidance with regards to how to obtain a composition meeting the claimed exothermic peak limitation. Furthermore, applicant’s specification provides no guidance to one of ordinary skill in the art on how to obtain the claimed composition satisfying the exothermic peak limitation.
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(F) The amount of direction provided by the inventor- applicant’s specification provides no guidance to one of ordinary skill in the art on how to obtain the claimed composition satisfying the exothermic peak limitation.
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(G) The existence of working examples-the specification contains 11 examples which are all similar to one another; they contain the same combination of epoxy resins in the same amounts, they contain two specific polymer components in amounts of 30 pbw, and they all contain the same curing agent in the same amount. Thus, the examples do not agree in scope with the pending claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-Given the factors set forth above, the quantity of experimentation needed to make the invention based upon the disclosure is considered to be high.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787
Prosecution Insights