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 .
Status of Claims
Claims 1-17, 21, and 22 are pending in the current application.
Claims 1-3, and 5 are amended in the current application.
Claims 21 and 22 are newly added in the current application.
Claims 18-20 are canceled in the current application.
Response to Arguments
Applicant's amendments and remarks filed June 17, 2026 have been fully considered.
Applicant requests withdrawal of the rejections under 35 USC 112(b) set forth in the previous office action.
The rejections under 35 USC 112(b) set forth in the previous office action are withdrawn due to the present claim amendments.
Applicant argues that Chiba’s epoxy resins do not include an aliphatic epoxy resin.
This is not persuasive for the following reasons. The grounds of rejection have been updated to reflect the present claim amendments. Chiba teaches an epoxy resin can be any compound having at least one epoxy group in the molecule, and can have three epoxy groups that may be used alone or in combination (Chiba, [0016]-[0019]). Chiba teaches the epoxy resin can include another epoxy resin (A2) that includes n-butyl glycidyl ether and/or dicyclopentadiene-type epoxy resins that are aliphatic epoxy resins (Chiba, [0017]). Dicyclopentadiene-type epoxy resins are specific aliphatic epoxy resins preferred by the present invention and as required by new claim 21 (See spec as originally filed, [0034]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried dicyclopentadiene-type epoxy resins from the finite number of (A2) epoxy resins disclosed by Chiba with a predictable and reasonable expectation of success (MPEP 2143).
Applicant argues that Chiba makes no mention of storage stability, whereas the present claims are based on improving storage stability.
This is not persuasive for the following reasons. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Regardless, Chiba does in fact discuss that storage stability is an important characteristic known in the art and a balance between curability and storage stability can be controlled by adjusting compounds within the resin composition (Chiba, [0006], [0033], [0036], [0039]).
Additionally, it is noted that the features upon which applicant relies (i.e., storage stability-related properties) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Chiba discloses examples of optional epoxy resins, suggests preferred epoxy resins that include novolac and bisphenol type epoxy resins, and does not provide any aliphatic epoxy resin examples.
This is not persuasive for the following reasons. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP 2123, II. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123, I. Chiba provides a broader disclosure that states that another epoxy resin (A2) can be added and includes n-butyl glycidyl ether and/or dicyclopentadiene-type epoxy resins that are aliphatic epoxy resins (Chiba, [0017]). In view of the foregoing, Chiba is considered to provide sufficient teaching, suggestion, and motivation to include aliphatic epoxy resins within the composition with a predictable and reasonable expectation of success.
Applicant argues that Deguchi does not disclose an aliphatic epoxy resin as claimed.
This is not persuasive for the following reasons. Note that while Deguchi does not disclose all the features of the presently claimed invention, Deguchi is used as a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the other applied prior art establishes a prima facie case of obviousness over the presently claimed invention. Deguchi teaches that it is well known and well within the abilities of those skilled in the art to form curable resin compositions comprising a polyfunctional epoxy component having three glycidyl (epoxy) groups, a cyanic acid ester (a cyanate ester), and a curing agent; where the polyfunctional epoxy component can include compounds such as compound (a-2) having a 4-amino-3-methylphenol-type epoxy structure (Deguchi, Abstract, [0027]-[0037]). Deguchi is combined with Chiba, where Chiba teaches the epoxy resin can include another epoxy resin (A2) that includes n-butyl glycidyl ether and/or dicyclopentadiene-type epoxy resins (i.e., aliphatic epoxy resins) (Chiba, [0017]).
Applicant asserts the claimed invention demonstrates unexpected results as evidenced by the inventive examples in the specification as originally filed and the additional experimental data provided on pages 16-17 of the remarks filed June 17, 2026.
This is not persuasive for the following reasons. It is noted that “the arguments of counsel cannot take the place of evidence in the record,” see MPEP 2145, I. It is the examiner’s position that the arguments provided by the applicant regarding the additional experimental data provided on pages 16-17 of the remarks filed June 17, 2026 must be supported by a declaration or an affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Regarding the evidence provided in the specification as originally filed, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. In the present application, the inventive examples 1-3 of Table 1 of the specification as originally filed only utilize 1 specific type of 4-amino-3-methylphenol-type epoxy resin of EP-3900S in an amount of 2.5-4.5 parts by mass, 1 specific type of aliphatic epoxy resin of dicyclopentadiene-type epoxy resin of EP-4088S in an amount of 2.8-3.7 parts by mass, 1 specific type of cyanate ester resin of LECy in an amount of 9.6-10.2 parts by mass, and 1 specific type of latent curing agent of EH-1 in an amount of 6.6 parts by mass. The present claims much more broadly and generally recite 4-amino-3-methylphenol-type epoxy resin in an amount of 20-70 mass%, an aliphatic epoxy resin in an amount of 1-70 mass%, a cyanate ester resin with no specified content, and a latent curing agent with no specific content, respectively. One of ordinary skill in the art would not be able to determine a trend in the exemplified data from the limited and specific examples which would allow the artisan to reasonably extend the probative value thereof.
Additionally, all the inventive examples also include a bisphenol A-type epoxy resin of EP-4300E, silica powder, and KBM-403 silane coupling agent, whereas the claims do not recite these components.
In view of the foregoing, the claims are not found to be sufficiently commensurate in scope with the invention examples.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-17, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Chiba et al. (JP 2019-077804 A, herein English machine translation utilized for all citations) in view of Deguchi et al. (US 2015/0175799 A1).
Regarding Claim 1, Chiba teaches a curable resin composition comprising at least one epoxy resin (A1) such as a N,N-bis(2,3-epoxypropyl)-4-(2,3-epoxypropoxy)-2-methylaniline resin, a cyanate ester (C), and an amine-based latent curing agent (D) (Chiba, [0008]-[0012]). Chiba teaches an epoxy resin can be any compound having at least one epoxy group in the molecule, and can have three epoxy groups that may be used alone or in combination (Chiba, [0016]-[0019]). Chiba teaches the epoxy resin can include another epoxy resin (A2) that includes n-butyl glycidyl ether and/or dicyclopentadiene-type epoxy resins (i.e., aliphatic epoxy resins) in a preferred amount of 35-65 mass% relative to the total amount of epoxy resins (A1) and (A2), where the remainder of 65-35 mass% is the epoxy resin (A1) (Chiba, [0017], [0019]). Chiba’s epoxy resin (A1) range falls within the claimed 4-amino-3-methylphenol-type epoxy resin amount of 20-70 mass%, and therefore, satisfies the claimed range (MPEP 2131.03). Chiba’s epoxy resin (A2) range falls within the claimed aliphatic epoxy resin amount of 1-70 mass%, and therefore, satisfies the claimed range (MPEP 2131.03).
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N,N-bis(2,3-epoxypropyl)-4-(2,3-epoxypropoxy)-2-aniline resin
Chiba remains silent regarding an epoxy resin comprising a 4-amino-3-methylphenol-type epoxy resin.
Deguchi, however, teaches a curable resin composition comprising a polyfunctional epoxy component having three glycidyl (epoxy) groups, a cyanic acid ester (i.e., a cyanate ester), and a curing agent; where the polyfunctional epoxy component includes compounds such as compound (a-2) having a 4-amino-3-methylphenol-type epoxy structure (Deguchi, Abstract, [0027]-[0037]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried compound (a-2) as a polyfunctional epoxy component from the finite number of specific examples disclosed by Deguchi with a predictable and reasonable expectation of success (MPEP 2143).
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Deguchi – compounds (a-1) & (a-2)
Since Chiba and Deguchi both disclose curable resin compositions comprising substantially similar polyfunctional epoxy resins, cyanate esters, and curing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Deguchi’s compound (a-2) as an epoxy resin having three epoxy groups as Chiba’s (A1) epoxy resin to yield a curable resin that exhibits excellent coating properties, low tack properties, flexibility, high heat resistance, superior insulating properties, and excellent heat dissipation as taught by Deguchi (Deguchi, [0017]-[0020], [0046]-[0048], [0161]).
Regarding Claims 2 and 3, modified Chiba teaches the cyanate ester includes structures of formulae 2-1 and 2-2 that satisfy claimed formulae (1) and (2), respectively (Chiba, [0008]-[0010], [0024]-[0027], [0030], formulae 2-1, 2-2).
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Chiba – Formula 2-1
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Chiba – Formula 2-2
Regarding Claims 4, 10, and 11, modified Chiba teaches the amine-based latent curing agent is an active hydrogen-containing amine-based latent curing agent (Chiba, [0031]-[0043]).
Regarding Claim 5, modified Chiba teaches the active hydrogen-containing amine-based latent curing agent is a modified amine obtained by reacting an epoxy compound with an amine compound having an active hydrogen in the molecule (Chiba, [0031]-[0043]).
Regarding Claims 6, 12, 13, 14, and 15, modified Chiba teaches the polyfunctional epoxy component having three glycidyl groups (compound a-2) is included preferably from 10-90 mass% relative to all epoxy resin components, and preferably 35-65 mass% (Chiba, [0019]; Deguchi, [0052]). Modified Chiba teaches the cyanate ester is included in an amount of 10-1,000 parts by mass per 100 parts by mass of the total of all epoxy resin components (Chiba, [0030]). Taking a basis of 100 parts by mass of the total of all epoxy resin components, compound a-2 is included in a range of 10-90 parts by mass and the cyanate ester is included in an amount of 10-1,000 parts by mass; where this yields a range of compound a-2 of 1 to 900 parts by mass with respect to 100 parts by mass of cyanate ester resin (10/1,000 normalized to per 100cyanate yields 1/100=1 to 90/10 normalized to per 100cyanate yields 900/100=900). Modified Chiba’s range encompasses the claimed ranges of 1 to 200 parts by mass, and therefore, renders obvious the claimed ranges (MPEP 2144.05).
Regarding Claims 7, 16, and 17, modified Chiba teaches the curable resin composition is measured with an E-type viscometer and preferably has a viscosity of less than 100 Pa*s at 25oC at 20 rpm, where the viscosity is kept low to achieve good workability (Chiba, [0062]-[0066], Tables 1-2). Although modified Chiba measures viscosity at 20 rpm rather than the claimed 10 rpm and does not discuss measuring viscosity rate increase after standing at 40oC for 72 hours, one of ordinary skill in the art would readily understand that modified Chiba’s viscosity range of less than 100 Pa*s is substantially similar to the claimed initial viscosity range of 70 Pa*s or less, because both are closely related values pertaining to substantially identical curable resin compositions comprising epoxy resins, cyanate esters, and latent curing agents and exhibiting low viscosity to achieve good workability for use within adhesives. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01). If modified Chiba’s viscosity values were measured at the same rpm value and let stand at 40oC for 72 hours as the claimed invention, one of ordinary skill in the art would expect modified Chiba’s curable resin composition viscosity values to be substantially similar to the claimed ranges where any differences would be minor and obvious. Therefore, modified Chiba’s viscosity values are considered to render obvious the claimed ranges of initial viscosity and viscosity increase rate with a predictable and reasonable expectation of success (MPEP 2143, MPEP 2112.01, MPEP 2144.05, I). Moreover, it would have been obvious to attain low viscosity within the claimed ranges to achieve good workability as taught by Chiba (Chiba, [0066]).
Regarding Claim 8, modified Chiba teaches a cured product obtained by curing the curable resin composition according to claim 1 (Chiba, [0001], [0007], [0011], [0013], [0016]).
Regarding Claim 9, modified Chiba teaches an adhesive comprising the curable resin composition according to claim 1 (Chiba, [0001], [0007], [0012]-[0013], [0053]).
Regarding Claim 21, modified Chiba teaches the epoxy resin can include another epoxy resin (A2) such as a dicyclopentadiene-type epoxy resin (an aliphatic epoxy resin) (Chiba, [0017]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried dicyclopentadiene-type epoxy resins from the finite number of (A2) epoxy resins disclosed by Chiba with a predictable and reasonable expectation of success (MPEP 2143).
Regarding Claim 22, modified Chiba teaches the epoxy resin can include another epoxy resin (A2) such as a dicyclopentadiene-type epoxy resin (an aliphatic epoxy resin) in a preferred amount of 35-65 mass% relative to the total amount of epoxy resins (A1) and (A2), where the remainder of 65-35 mass% is the epoxy resin (A1) (Chiba, [0017], [0019]). Modified Chiba’s epoxy resin (A1) range falls within the claimed 4-amino-3-methylphenol-type epoxy resin amount of 25-70 mass%, and therefore, satisfies the claimed range (MPEP 2131.03). Chiba’s epoxy resin (A2) range overlaps the claimed aliphatic epoxy resin amount of 5-50 mass%, and therefore, renders obvious the claimed range (MPEP 2144.05).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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