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 with traverse of Group I (Claims 1-8) in the reply filed on 11/10/2025 is acknowledged. The traversal is on the ground(s) that there is no significant search burden. This is not found persuasive because the process described in claim 9 is generic and could therefore be used to generate other compositions in addition to being a different classification and therefore requiring a separate search.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2 and 3, the word "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following it are part of the claimed invention or intended to illustrate examples. The applicant is required to revise to claim language to remove the ambiguity.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (JP 2016-130287, Foreign Patent Document #1 from IDS dated 3/7/2025, using JPO Machine Translation).
Regarding Claims 1, 5, and 8,
Kondo teaches a core-shell curing agent (Abstract) that is used with an epoxy resin (Paragraph 18) where the ratio of the core-shell curing agent to the epoxy resin in the composition is most preferably between 100:100 and 100:5000 by mass (Paragraph 69), which overlaps with the range of the instant claims. Kondo further teaches that the composition may contain an anhydride curing agent (Paragraph 72) and that the amount is preferred to be between 5 and 50% by mass (Paragraph 72). The ordinarily skilled artisan would recognize that the amount of catalyst and curing agent would influence the curing rate of the composition and would be motivated to adjust this amount in order to obtain a curing time required for the desired application. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. Kondo additionally teaches that metal fillers may be used (Paragraph 73) and further demonstrates such fillers to be used in an amount greater than 50% by weight (Example 9, Paragraph 126). Further, Kondo teaches that shell of the core-shell catalyst is comprised of an epoxy resin (Paragraph 60), a polyisocyanates (Paragraph 57), and an amine compound (Paragraphs 58 and 61). Kondo teaches that preferred amine catalysts include diethylaminopropylamine, diethylaminopropylamine, and dibutylaminoethylamine (Paragraph 17) which can also be used in the shell layer (Paragraph 61), meeting the requirements of the instant claims. Finally, Kondo teaches the use of additives such as solvents, dyes (which read on colorants), as well as flow control and thickening agents (which read upon rheological additives) (Paragraph 73).
Regarding Claim 2,
Kondo teaches that a variety of epoxy resins are useful as both the resin for the composition as well as for the catalyst particles, including bisphenol based epoxies, polyglycidyl ethers of polyhydric phenols and polyglycidyl ethers aliphatic polyols (Paragraph 18).
Regarding Claim 3,
Kondo teaches that anhydrides including phthalic anhydride, trimellitic anhydride, succinic anhydride, methylnadic anhydride, and maleic anhydride can be used (Paragraph 72).
Regarding Claim 4,
Kondo teaches that the amount of anhydride can be as low as 0.1% by weight of the composition but preferably more than 5% and less than 50% by mass (Paragraph 72) and further discloses a wide range of ratios of epoxy resin to the core-shell particles (Paragraph 69), whose amount is fixed at 100 parts (Paragraph 69). Given the broad range of epoxy resin amounts, it would logically follow that ratios of epoxy groups in the resin to anhydride groups would be similarly broad. One of ordinary skill in the art would recognize that the amount of anhydride curing agent would impact the curing rate and thus the curing time of the composition and would naturally seek to adjust this value to meet requirements for the intended use case. As such, it would have been obvious prior to the effective filing date of the instant application to have used any molar ratio of anhydride to epoxy groups that afforded the desired cured material characteristics such as curing rate and time.
Regarding Claim 6,
Kondo teaches the use of metal fillers such as gold, silver, aluminum, and copper (Paragraph 73).
Regarding Claim 7,
The use of alicyclic and aromatic diisocyanates as well as aliphatic triisocyanates and polyisocyanates (Paragraph 57) with polyvalent isocyanates among the preferred compounds (Paragraph 55).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tanaka (US 20170137563), Sato (US 20200339782), and Morita (US 20210292617) all teach epoxy resin compositions with core-shell particle amine-containing catalysts that use acid anhydride curing agents and metal fillers meeting the requirements of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765