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 .
Response to Arguments
As indicated in the Interview on 7/10/2026, the amendment to the specification is accepted.
Applicant’s arguments, filed 7/17/2026, with respect to the rejection(s) of claim(s) 1-9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Specifically, the 103 rejection of 4/20/2026 relied on the terpene phenol tackifier being Tamanol 901 which has been removed from the specification. However, upon further consideration, a new ground of rejection is made in view of Devoe US 6077601A in further view of Ikami US 20200017726A1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over DeVoe US 6077601A in view of Ikami US 20200017726A1.
Regarding claims 1-4 and 6-7, DeVoe teaches a binder precursor comprising an epoxy resin, a polyfunctional acrylate component and a curing agent (Abstract). DeVoe teaches that the epoxy resin is a hydrogenated bisphenol A epoxy resin (Col. 8 Lines 4-7). This reads on the limitations on the claimed “hydrogenated bisphenol epoxy resin.” DeVoe teaches the composition is used to form a hot melt adhesive (Col. 5 Lines 35-45).
DeVoe teaches that the epoxy resin can additionally be a glycidyl methacrylate polymer (Col. 7 Lines 1-4). In DeVoe, the bisphenol epoxy resin and the glycidyl methacrylate polymer are recited in parallel as equally suited alternatives.
It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use both glycidyl methacrylate polymer and the bisphenol epoxy resin as (A) and (B).
DeVoe teaches the composition comprises a tackifier (Col. 17 Line 33). DeVoe teaches the tackifier can be a terpene phenol (Col. 17 Lines 50-55). This reads on the claimed “terpene phenol” tackifier.
DeVoe also teaches the composition comprises a silica filler (Col 18 Line 34). DeVoe also teaches the composition comprises a thermal initiator (Col. 19 Line 48). This reads on the claimed “heat curing” and “curing agent.”
DeVoe teaches the composition is used as a pressure sensitive adhesive (Col. 5 Line 26). However, DeVoe is silent on the OH value of the terpene phenol tackifier.
Ikami teaches that using a tackifier resin with an OH value of 120 or greater improves the grease resistance of the pressure sensitive adhesive while ensuring adhesive properties such as adhesive strength and holding properties (Paragraph [0010]). Ikami also teaches the tackifier resin is a terpene phenol resin (Paragraph [0062]). It would have been obvious to one of ordinary skill in the art to use the OH value of the terpene phenol resin taught in Ikami (greater than 120) as the OH value for the terpene phenol tackifier resin of DeVoe for the advantage of improved adhesion associated with a tackifier resin with an OH value of 120 or greater.
Regarding claim 5, DeVoe’s Table 3 (col. 26) illustrates that when combinations of epoxy resins are used, they can be combined in a 60:40 weight ratio (or approximately 66.67 parts of a first epoxy resin per 100 parts of a second epoxy resin). It would have been obvious to one of ordinary skill in the art at the time of filing to combine the bisphenol epoxy resin and the glycidyl methacrylate polymer in this weight ratio, thereby arriving at a content of (B) that is 66.67 parts by mass relative to 100 parts (A), as this ratio is shown to be suitable when using combinations of epoxy resins.
In the alternative, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, DeVoe recognizes the glycidyl methacrylate polymer and the epoxy resin as equivalents as indicated above. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine glycidyl methacrylate polymer and bisphenol epoxy resin in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Combining glycidyl methacrylate polymer and bisphenol epoxy resin in a 1:1 ratio overlaps with the claimed range of 100 parts by weight bisphenol epoxy resin and 100 parts by weight glycidyl methacrylate polymer.
Regarding claim 8, DeVoe does not expressly disclose that the toughness coefficient of the cured product when the curable resin composition is cured at 170C for 60 minutes is 10MPa or more. 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. DeVoe’s composition as described above will therefore necessarily possess the claimed toughness coefficient.
Claim 9 specifies a composition “used for structural adhesion”. The claimed intended use limitation does not require steps to be performed or limit the claims to a particular structure. Therefore, this feature does not further limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02
Regarding claims 10-12, DeVoe in view of Ikami teaches an OH value of 120 or greater (see rejection of claim 1). Ikami also teaches the tackifier resin has a softening point of 180C or below (Paragraph [0090]). Ikami teaches the advantage to having a tackifier with a softening point in this range increases the tightness of adherend to substrate (Paragraph [0090]).
It would have been obvious to one of ordinary skill in the art to use the tackifier softening point taught in Ikami of 180C as the softening point of the tackifier resin softening point of DeVoe for the advantage of increasing the tightness of adherend to substrate.
Regarding claim 13, DeVoe teaches epoxy resins have at least 2 epoxy groups per molecule (Col. 6 Lines 60-65). DeVoe teaches the epoxy resins have a molecular weight of 74-100,000 or more (Col. 7 Lines 1-5). Therefore, the epoxy resins have a g/eq of 37-50,000 g/eq. This overlaps with the claimed range of 500-20,000 g/eq.
Regarding claim 17, DeVoe teaches the epoxy resin can be based on a diglycidyl ether or Bisphenol A such as EPON 828. This reads on the claimed epoxy resin with a bisphenol and an oxyalkylene skeleton (Col. 7 Lines 35-45). It would have been obvious to select Bisphenol A diglycidyl ether as the epoxy resin of DeVoe because it prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claim 19, DeVoe reads on the limitations of claim 13. DeVoe teaches the epoxy resin can be based on a diglycidyl ether or Bisphenol A such as EPON 828. This reads on the claimed epoxy resin with a bisphenol and an oxyalkylene resin (Col. 7 Lines 35-45). It would have been obvious to select Bisphenol A diglycidyl ether as the epoxy resin of DeVoe because it prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claim 20, DeVoe teaches the epoxy resin can be based on a diglycidyl ether or Bisphenol A such as EPON 828. This reads on the claimed epoxy resin with a bisphenol and an oxyalkylene skeleton (Col. 7 Lines 35-45). It would have been obvious to select Bisphenol A diglycidyl ether as the epoxy resin of DeVoe because it prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. DeVoe also teaches the epoxy resin can be a hydrogenated bisphenol-A-epichlorohydrin based epoxy resins (Col. 8 Lines 1-10).
In DeVoe hydrogenated bisphenol-A-epichlorohydrin, EPON 828, and epoxidized polybutadiene are recited in parallel (Paragraph [0074] and [0078]). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the hydrogenated bisphenol-A-epichlorohydrin, EPON 828, and epoxidized polybutadiene as the epoxy resin (A). This reads on the limitations of claim 20.
Claims 14-15, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over DeVoe US 6077601A in view of Ikami US 20200017726A1 in further view of Ushiyama US 20190330464 A1.
Regarding claim 14, DeVoe teaches the curing agent is not limited but can comprise imidazole curing agents (Col. 13 Lines 60-65). This reads on the claimed “imidazole curing agent.” DeVoe teaches multiple curing agent can be used (Col. 13 Line 65). However, DeVoe is silent on the thermal curing agent being a urea compound. DeVoe teaches using the composition as a coating on a release liner (Col. 20 Lines 1-5).
Ushiyama teaches a curable adhesive resin composition comprising a bisphenol epoxy resin and a curing agent and inorganic material fillers (Abstract (Paragraph [0144])). Ushiyama teaches the curable resin composition has high adhesion (Paragraph [0160]). Ushiyama also teaches the composition used as a coating on a release paper (Paragraph [0161]). Ushiyama also teaches the curing agent can be selected from a group of dicyandiamides, imidazoles and ureas (Paragraph [0021]). DeVoe also teaches imidazole and dicyandiamide curing agents (Col. 13 Lines 60-65). Ushiyama teaches multiple curing agent can be used (Paragraph [0078]). Ushiyama teaches a urea curing agent, TBDMU or Omicure 24 (Paragraph [0084]). This reads on the claimed urea curing agent. It would have been obvious to select Omicure 24 as the curing agent of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Ushiyama teaches a similar composition for a similar application. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Ushiyama and DeVoe to use the urea compound TBDMU of Ushiyama as a urea curing agent in DeVoe because Ushiyama teaches it as a suitable urea curing agent for similar compositions used in similar applications and therefore, a suitable curing agent for the composition of DeVoe. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Regarding claim 15, DeVoe teaches the curing agent is not limited but can comprise dicyandiamide and imidazole curing agents (Col. 13 Lines 60-65). DeVoe teaches multiple curing agent can be used (Col. 13 Line 65). This reads on the claimed “dicyandiamide” and “imidazole” curing agents. However, DeVoe is silent on the thermal curing agent being a urea compound.
Ushiyama teaches a curable adhesive resin composition comprising a bisphenol epoxy resin and a curing agent and inorganic material fillers (Abstract (Paragraph [0144])). Ushiyama teaches the curable resin composition has high adhesion (Paragraph [0160]). Ushiyama also teaches the composition used as a coating on a release paper (Paragraph [0161]). Ushiyama also teaches the curing agent can be selected from a group of dicyandiamides, imidazoles and ureas (Paragraph [0021]). DeVoe also teaches imidazole and dicyandiamide curing agents (Col. 13 Lines 60-65). Ushiyama teaches multiple curing agent can be used (Paragraph [0078]). Ushiyama teaches a urea curing agent, TBDMU or Omicure 24 (Paragraph [0084]). This reads on the claimed urea compound. It would have been obvious to select Omicure 24 as the curing agent of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Ushiyama teaches a similar composition for a similar application. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Ushiyama and DeVoe to use the urea compound TBDMU of Ushiyama as a urea curing agent in DeVoe because Ushiyama teaches it as a suitable urea curing agent for similar compositions used in similar applications and therefore, a suitable curing agent for the composition of DeVoe. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Regarding claims 16 , DeVoe teaches the curing agent can comprise multiple curing agents and the curing agents a mixture of dicyandiamide and imidazole curing agents (Col. 13 Lines 60-65).
Ushiyama teaches a curable adhesive resin composition comprising a bisphenol epoxy resin and a curing agent and inorganic material fillers (Abstract (Paragraph [0144])). Ushiyama teaches the curable resin composition has high adhesion (Paragraph [0160]). Ushiyama also teaches the composition used as a coating on a release paper (Paragraph [0161]). Ushiyama also teaches the curing agent can be selected from a group of dicyandiamides, imidazoles and ureas (Paragraph [0021]). DeVoe also teaches imidazole and dicyandiamide curing agents (Col. 13 Lines 60-65). Ushiyama teaches multiple curing agent can be used (Paragraph [0078]). Ushiyama teaches a urea curing agent, TBDMU or Omicure 24 (Paragraph [0084]). This reads on the claimed 2,4-Bis(3,3-dimethylureido)toluene. It would have been obvious to select Omicure 24 as one of the curing agents of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
DeVoe is silent on the imidazole curing agent being 2-Phenyl-4-(hydroxymethyl)-5-methylimidazole. Ushiyama also teaches the curing agent 2P4MHZ-PW (Paragraph [0093]) as a suitable imidazole curing agent. 2P4MHZ-PW is 4-Methyl-2-phenyl-5-hydroxymethylimidazole (Instant Specification, Page 26). This reads on the claimed “4-Methyl-2-phenyl-5-hydroxymethylimidazole.” It would have been obvious to select 2P4MHZ-PW as the imidazole curing agent of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Ushiyama teaches a similar composition for a similar application. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Ushiyama and DeVoe to use the urea compound TBDMU of Ushiyama as a urea curing agent in DeVoe because Ushiyama teaches it as a suitable urea curing agent for similar compositions used in similar applications and therefore, a suitable curing agent for the composition of DeVoe. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art to use the imidazole curing agent 2P4MHZ-PW of Ushiyama as the imidazole curing agent of DeVoe because Ushiyama teaches it as a suitable imidazole curing agents used in similar compositions for similar application and is therefore a suitable imidazole curing agent for the composition of DeVoe.
Regarding claim 18, DeVoe teaches epoxy resins have at least 2 epoxy groups per molecule (Col. 6 Lines 60-65). DeVoe teaches the epoxy resins have a molecular weight of 74-100,000 or more (Col. 7 Lines 1-5). Therefore, the epoxy resins have a g/eq of 37-50,000 g/eq. This overlaps with the claimed range of 7,480-20,000 g/eq.
DeVoe is silent on the filler being a calcium carbonate filler. DeVoe teaches using the composition as a coating on a release liner (Col. 20 Lines 1-5).
Ushiyama teaches a curable adhesive resin composition comprising a bisphenol epoxy resin and a curing agent and inorganic material additives (Abstract (Paragraph [0144])). Ushiyama teaches the curable resin composition has high adhesion (Paragraph [0160]). Ushiyama also teaches the composition used as a coating on a release paper (Paragraph [0161]). Ushiyama teaches the inorganic material additives can be glass fibers, talc, and barium sulfate. DeVoe teaches these same fillers (Col 13 Lines 40-45). Ushiyama additionally teaches the filler “Calcium carbonate.” Ushiyama teaches a similar composition for a similar application.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Ushiyama and DeVoe to use the calcium carbonate of Ushiyama as a filler of DeVoe because Ushiyama teaches it as a suitable inorganic material additive in parallel with the same inorganic material additives listed in DeVoe and is identified in Ushiyama as being suitable for use in applications similar to DeVoe. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
DeVoe teaches the curing agent can comprise multiple curing agents and the curing agents a mixture of dicyandiamide and imidazole curing agents (Col. 13 Lines 60-65). This reads on the claimed “dicyandiamide.”
Ushiyama teaches a curable adhesive resin composition comprising a bisphenol epoxy resin and a curing agent and inorganic material fillers (Abstract (Paragraph [0144])). Ushiyama teaches the curable resin composition has high adhesion (Paragraph [0160]). Ushiyama also teaches the composition used as a coating on a release paper (Paragraph [0161]). Ushiyama also teaches the curing agent can be selected from a group of dicyandiamides, imidazoles and ureas (Paragraph [0021]). DeVoe also teaches imidazole and dicyandiamide curing agents (Col. 13 Lines 60-65). Ushiyama teaches multiple curing agent can be used (Paragraph [0078]). Ushiyama teaches a urea curing agent, TBDMU or Omicure 24 (Paragraph [0084]). This reads on the claimed 2,4-Bis(3,3-dimethylureido)toluene. It would have been obvious to select Omicure 24 as one of the curing agents of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
DeVoe is silent on the imidazole curing agent being 2-Phenyl-4-(hydroxymethyl)-5-methylimidazole. Ushiyama also teaches the curing agent 2P4MHZ-PW (Paragraph [0093]) as a suitable imidazole curing agent. 2P4MHZ-PW is 4-Methyl-2-phenyl-5-hydroxymethylimidazole (Instant Specification, Page 26). This reads on the claimed “4-Methyl-2-phenyl-5-hydroxymethylimidazole.” It would have been obvious to select 2P4MHZ-PW as the imidazole curing agent of Ushiyama because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Ushiyama teaches a similar composition for a similar application. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Ushiyama and DeVoe to use the urea compound TBDMU of Ushiyama as a urea curing agent in DeVoe because Ushiyama teaches it as a suitable urea curing agent for similar compositions used in similar applications and therefore, a suitable curing agent for the composition of DeVoe. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07.
It would have been obvious to one of ordinary skill in the art to use the imidazole curing agent 2P4MHZ-PW of Ushiyama as the imidazole curing agent of DeVoe because Ushiyama teaches it as a suitable imidazole curing agents used in similar compositions for similar application and is therefore a suitable imidazole curing agent for the composition of DeVoe.
Conclusion
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/LILY K SLOAN/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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