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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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 1-4 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chujo et al (US 2016/0369044 A1), as evidenced by DIC Corporation (Epiclon Standard Products: Epoxy Resin & Curing Agents, March 2017).
Regarding Claims 1-3: Chujo teaches an adhesive composition (para. 0002) for laminating onto metal substrates (para. 0080) comprising an epoxy resin (para. 0019), a phenoxy resin (para. 0057), and an amine-based latent curing agent (para. 0035-36, polyamine or imidazole curing accelerators), wherein the epoxy resin contains a resin having 3 or more epoxy groups (para. 0027) such as Epiclon N660 (para. 0029), which DIC Corporation teaches is a cresol novolac epoxy resin with a softening point of 60-68°C (p.8), an example of the phenoxy resin is a fluorene-based phenoxy resin with a glass transition temperature of 163°C (para. 0103), and a glass transition of the cured product is 165-170 (p.11, Table 3, Examples 1-5). Chujo teaches that the phenoxy is contained at 1-20 parts by weight with respect to 100 parts by weight of the heat-curable resin component/epoxy (para. 0068).
This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the phenoxy resin and would have been motivated to do so since Chujo teaches that including the phenoxy resin in that amount improves the mechanical properties of the cured film (para. 0057) and results in a uniformly roughened surface state (para. 0068).
Regarding Claim 4: Chujo teaches that the epoxy set forth above it present at 10-50wt% of the total composition (para. 0031) and may be the only epoxy in the composition, leading to it being present at 100% by mass of the epoxy component. In the case where a second epoxy is present, it is contained at a lower amount than the first epoxy (para. 0046, 0-5wt% of the total composition).
Regarding Claim 7: Chujo teaches that the latent curing agent/curing accelerator is present at 0.1-5 parts by weight based on 100 parts of the epoxy (para. 0036). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the latent curing agent and would have been motivated to do so at the high end of the range to shorten the curing time (para. 0036).
Regarding Claims 8-10: Chujo teaches a toughening agent/rubber particles such as a core-shell rubber (para. 0069) at 1-5 parts by weight based on 100 parts of the curable resin/epoxy (para. 0071). The particles have an average particle size of 0.005-1 µm (para. 0070). This overlaps the claimed range with sufficient specificity that the claimed particle size is considered anticipated. MPEP 2131.03(II).
Regarding Claim 11: Chujo teaches that bifunctional epoxy resins are optional components, i.e. constituting 0% of the epoxy (para. 0044-46).
Regarding Claim 12: Not disclosed is the yield stress of the cured composition at 25°C and 140°C. However, Chujo teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Chujo et al (US 2016/0369044 A1), as evidenced by DIC Corporation (Epiclon Standard Products: Epoxy Resin & Curing Agents, March 2017), in view of Yan et al (JP 2019/052303 A, using the machine translation for the citations below).
Chujo teaches the limitations of Claim 1, as set forth above. Chujo further teaches 0-5wt% of an additional epoxy resin, such as a glycidyl amine epoxy resin (para. 0045-0046). Since the content of the solid epoxy resin having a softening point of 60°C or higher is 10-50wt% (para. 0031), the glycidyl amine epoxy resin is less than 50wt% of the epoxy component.
Chujo does not teach that the glycidyl amine epoxy resin has an N,N-diglycidylamino group.
Yan teaches an epoxy composition adhesive comprising a polyfunctional epoxy resin and a nitrogen-containing epoxy resin (para. 0006), wherein the nitrogen-containing epoxy resin includes tetraglycidyldiaminodiphenylmethane or triglycidyl p-aminophenol (para. 0013), reading on instant formulas 1 and 2, and the nitrogen-containing epoxy resin promotes the self-polymerization of the polyfunctional epoxy resin (para. 0036). Yan and Chujo are analogous art because they are directed toward the same field of endeavor, namely epoxy adhesive compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add tetraglycidyldiaminodiphenylmethane or triglycidyl p-aminophenol as the glycidyl amine epoxy resin of Chujo because Yan teaches that such compounds promote the self-polymerization of the polyfunctional epoxy resin.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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