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 § 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 1-4, 6, and 8-10 rejected under 35 U.S.C. 103 as being unpatentable over Sakauchi (CN 109486363 A, hereinafter referring to the attached ESPACENET translation). Bench (Technical Guide to 3-mercaptopropyltrimethoxysilane, pp. 1-12) is cited as an evidentiary reference.
Regarding claims 1-3, 6, and 8, Sakauchi teaches a curable resin composition ([0002]) containing an epoxy resin which preferably has two or more epoxy groups ([0047]-[0048]), and which preferably contains a solid epoxy resin ([0049]) which may be a bisphenol A-based epoxy resin ([0051]). The composition further contains a silica ([0110]) which may contain a surface treatment including KBM573, which is an N-phenyl-3-aminopropyltrimethoxysilane ([0015]), which reads on the claimed “silica treated with phenylaminosilane.” The composition may further contain a curing accelerator ([0130]) such as 2,4-diamino-6-[2’-methlimidazolyl-(1’)]-ethyltriazine isocyanuric acid adduct ([0133]), which is an adduct containing amines, and which therefore reads on the claimed “amine adduct latent curing agent.”
Sakauchi teaches that the epoxy resin may contain a liquid epoxy resin, and that solid and liquid epoxy resins may be utilized together ([0056). Importantly, Sakauchi merely indicates that the liquid epoxy resin may preferably contain two or more epoxy groups (i.e., two or more groups are not required, [0053]). Patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize a monofunctional aromatic liquid epoxy resin as the liquid epoxy resin within Sakauchi, which reads on the claimed “reactive diluent” and the claimed limitation requiring that “the reactive diluent is an epoxy compound having only one glycidyl group.”
Sakauchi further teaches that the liquid epoxy resin is preferably aromatic ([0053]). The liquid epoxy resin of Sakauchi therefore reads on the claimed “reactive diluent” having an aromatic ring of claim and 6.
Sakauchi further teaches the incorporation of magnesium oxide treated with alkoxysilane compounds ([0101]) and teaches that said alkoxysilane compound may be 3-mercaptopropyltrimethoxysilane (MPTS, [0104]). Magnesium oxide, having been coupled with 3-mercaptopropyltrimethoxysilane, would contain terminal thiol groups (c.f. Bench p. 1, where it is indicated that the trimethoxysilyl group of 3-mercaptopropyltrimethoxysilane reacts with inorganics to form a product with terminal thiol groups suitable for organic chemistry), and therefore read on the claimed “thiol curing agent” because the instant Specification states that a “thiol curing agent” is not particularly limited as long as it contains one or more -SH groups ([0032]). Importantly, MPTS reacts with hydroxyl groups to form the functionalized magnesium hydroxide, and there are two hydroxide functional groups on a single molecule of Mg(OH)2. Therefore, the functionalized thiol-containing magnesium-based curing agent of Sakauchi will contain two thiol groups per molecule, which reads on the claimed limitation requiring “two or more SH groups.”
Sakauchi is silent regarding the claimed viscosity characteristic; nevertheless, Sakauchi as applied above contains a composition which meets all of the claimed compositional limitations, including all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed viscosity characteristic will therefore necessarily be present in Sakauchi as applied above.
The 3-mercaptopropyltrimethoxysilane treated magnesium oxide does not contain an ester group and therefore meets the limitation of claim 8.
Regarding claim 4, as described above, Sakauchi teaches the use of 2,4-diamino-6-[2’-methlimidazolyl-(1’)]-ethyltriazine isocyanuric acid adduct ([0133]). Sakauchi also teaches the alternative use of 2-undecylimidazolium as a curing accelerator ([0133]), which has a melting point of about 82°C, which falls within the claimed range of “70 to 150°C,"
Regarding claim 9, The claim is recognized as reciting an intended use limitation. 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 (see MPEP 2111.02.II.). Therefore, Sakauchi meets the limitations of claim 9 because it meets the limitations of claims 1-7, as described above.
Regarding claim 10, Sakauchi teaches the formation of a cured layer of the inventive resin composition ([0148]).
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed June 29, 2026, with respect to the rejection(s) of claims 1-10 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of Sakauchi.
As described above, Sakauchi contains both monofunctional epoxy resin components and a thiol curing agent having two -SH groups, inter alia.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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