DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 6, 8, 10, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumita et al. (US 2003/0069349, “Sumita”) in view of Okamoto et al. (CN 106133017 A, hereafter “Okamoto” for which a machine translation has been provided and is used as the citation copy unless otherwise noted).
Regarding claims 1 and 22, Sumita teaches an epoxy resin composition ([0001] – [0009]) comprising an epoxy resin ([0010] – [0016]), a phenolic resin in a liquid form at 25C (e.g., [0020] – [0028]) and having one or more functional groups having a double bond (e.g., [0022]), a microcapsule-type curing accelerator ([0036] – [0043]), an imidazole compound having a triazine ring ([0029] – [0035], see especially [0033], describing imidazoles having triazine rings such as, for example, 2,4-diamino-6-[2'-methylimidazolyl-(1)']-ethyl-S-triazine), and an inorganic filler ([0044] – [0048]). Sumita additionally teaches that the microcapsule curing accelerator may be included in an amount of from 10 to 200 parts by weight of the total amount of curing accelerator, which is an amount of from 0.1 to 15 parts by weight per 100 parts by weight of the liquid epoxy resin (e.g., [0039], [0042]). Sumita additionally teaches that the imidazole compound having a triazine ring may be included in an amount of from 0.1 to 15 parts by weight per 100 parts by weight of the liquid epoxy resin ([0042]). The Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05. While Sumita teaches a phenolic curing agent having a form similar to that of presently claimed formula (1), Sumita fails to teach the specifically claimed compound. However, such phenolic curing agents are known in the prior art. For example, in the same field of endeavor of phenolic resins (pp. 1-3), Okamoto teaches to include such a curing agent having a structure reading on that of presently claimed formula (1) (see chemical formula 1, p. 3, compound reproduced below, and wherein the medial CH2 groups of Okamoto read on the X groups of presently claimed formula (1)). Further, the R groups of chemical formula 1 of Okamoto may be vinyl or allyl groups (see p. 3, chemical formula (1)). Okamoto teaches that such a compound is useful because it has beneficial expansion and shrinking thermal expansion properties (see Okamoto, p. 3). It therefore would have been obvious to the ordinarily skilled artisan to have substituted the phenolic curing agent of Okamoto for that of Sumita for the former’s beneficial expansion and shrinking thermal expansion properties (see Okamoto, p. 3). Furthermore, the simple substitution of one known element for another that would have provided predictable results (i.e., effectively functioning as a curing agent) would be expected to have been obvious to the ordinarily skilled artisan at the time of filing. Please see MPEP 2143.
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Regarding claims 2 and 3, Sumita additionally teaches that the epoxy resin may have one or more aromatic rings per molecule and may comprise a bisphenol A-type epoxy resin ([0011]).
Regarding claim 4, Sumita additionally teaches that the one or more functional groups of the phenolic resin (B) may be a vinyl group ([0021], [0022]).
Regarding claim 6, Sumita additionally teaches that a molar equivalent ratio of the phenolic hydroxyl groups per mole of liquid epoxy resin is from 0.7 to 1.3, thus reading on the claimed range ([0028]).
Regarding claim 8, Sumita additionally teaches that the microcapsule-type curing accelerator may comprise, e.g., an imidazole compound ([0036] – [0041]).
Regarding claim 10, Sumita additionally teaches an amount of inorganic filler on the range of from 100 to 600 parts by weight per 100 parts by weight of the composition (and thus reads on the claimed amounts per 100 parts by mass of the epoxy resin, [0045] – [0048]).
Regarding claim 21, Okamoto additionally teaches that the R groups of chemical formula 1 of Okamoto may be vinyl or allyl groups (see p. 3, chemical formula (1), reproduced above, in the rejection of claims 1 and 22).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Nakamura US 2009/0012232 A1 discloses a similar epoxy composition comprising phenolic curing agents (e.g., [0001] – [0010]).
Response to Arguments
Applicant’s arguments filed 6/24/26 are considered moot in light of the new grounds of rejection, which were necessitated by Applicant’s amendments. Arguments that are relevant to the current rejections are addressed below.
Applicant argues that Sumita fails to teach an imidazole compound having a triazine ring. The Examiner must respectfully disagree. Applicant argues because Sumita teach other imidazoles not having a triazine ring, Sumita should not be relied on for the teaching of an imidazole having a triazine ring. But “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Please see MPEP §2123. In the present case, Sumita is the primary reference relied on to reject the instant claims and Sumita contains therein imidazole compounds having triazine rings. These compounds cannot be read out of Sumita simply because Sumita contains other teachings. 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).
Therefore, claims 1-4, 6, 8, 10, 21, and 22 are rejected as described above.
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 ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 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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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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