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
The examiner acknowledges the amendments to claims 1-3 and the addition of claims 10-13. Claims 1-9 and 10-13 are pending.
Claim Rejections - 35 USC § 112
The applicant has amended claims 2 and 3. As a result, the 112 rejections for these claims have been withdrawn.
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 1-8 and 9-13 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) in view of Michelotti (J. of Chemical and Engineering Data, volume 4, pages 79-82 (1959)).
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. While Kondo does not teach the use of dodecenylsuccinic anhydride, Kondo does teach that the anhydride curing agent is not limited (Paragraph 72). Further, dodecenylsuccinic anhydride is known in the art to be interchangeable with anhydrides such as methylsuccinic acid as taught by Michelotti (Page 80, right column, Results and Discussion section paragraph 2) with Michelotti further noting that the use of these anhydrides results in lower viscosity and longer pot life (Page 80, right column, Results and Discussion section paragraph 2). As Kondo teaches the use of methylsuccinic anhydride (Paragraph 72), it would have been obvious prior to the effective filing date to have substituted dodecenylsuccinic anhydride taught by Michelotti for methylsuccinic anhydride as the prior art recognizes these compounds as useful for the same purpose. See MPEP 2144.06.II.
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) and further that at least one curing agent may be used (Paragraph 72). It would therefore have been obvious prior to the effective filing date of the instant application to have selected more than one curing agent.
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).
Regarding Claims 10 and 11,
Kondo teaches the epoxy resins useful for both the shell include bisphenol A and bisphenol F glycidyl ethers as well as novolac glycidyl ethers (Paragraph 18) and further notes that the same epoxies are used for the resin composition (Paragraph 70).
Regarding Claims 12 and 13,
Kondo teaches the use of silver as filler as noted above in regard to claim 6. Kondo further teaches the use of nano-sized metal crystals (Paragraph 73) and also the use of conductive particles up to 10-14 microns in size (Example 9, Paragraph 126) while noting that the fine particles are not particularly limited (Paragraph 73). One of ordinary skill in the art would recognize that nano-sized particles would be smaller than 1 micron in size and that by teaching the use of 10-14 micron particles, it would logically follow that particles ranging in size between these two points would be also be allowed. Because Kondo teaches the use of silver and the use of conducting particles in sizes that contain the range of the instant claims, it would have been obvious prior to the effective filing date to have selected silver particles in any size range between nano-sized and 10 microns.
Response to Arguments
Applicant's arguments filed 5/28/2026 have been fully considered but they are not persuasive for the following reasons.
On page 7, the applicant argues that Kondo does not teach the use of dodecenylsuccinic anhydride. The examiner notes that this has been addressed in the amended rejection above.
Also on page 7, the applicant argues that Kondo does not teach silver flake of the size required by the newly added claims 12 and 13. The examiner disagrees. As noted in the rejection above, Kondo teaches a wide variety of conducting particles, including silver and further notes nano-sized metal crystals as well as the 14 micron particles referenced by the applicant in paragraph 126. These two size points represent end points of a range that includes the range of the applicant’s claims, as one of ordinary skill in the art would logically conclude based upon Kondo’s disclosure that particles sized between these two points would also be allowed as noted in the rejection.
Finally, the applicant argues unexpected results on page 7. The examiner notes that the advantageous thermal and electrical conductivity as well as toughness and stress release characteristics are not requirements of the current claims and are not found to be persuasive for that reason.
As a result, the rejection is maintained.
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 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
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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