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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/14/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1, 4-8, 18 and 19, in the reply filed on 07/07/2025 is acknowledged.
Claims 9-17, and 20, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2025.
Response to Amendment
The previous objection of Claims 4 and 6 are objected to because of the following informalities is/are withdrawn in light of the Applicant’s amendments.
The previous objection to the specification for informalities is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claims 1, 4-8, 18, and 19 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 4, and 18, under 35 U.S.C. 102(a)(1) as being anticipated by US 5,520,829 A to Kapuscinski et al. (hereinafter Kapuscinski) is/are withdrawn in light of the Applicant’s arguments.
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 1, 4, 7, 18, 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.
The term “binary epoxy compound” in claim 1 is a relative term which renders the claim indefinite. The term “binary” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the term “binary” is conventionally known in the art as something containing two parts. However, it is unclear what two parts is being referred to in the compound, and the term “binary” is not specifically defined in the specification. From the Applicant’s specification, the binary epoxy compound residue is formed after “an epoxy bond of a binary epoxy compound is ring-opened…” which appears to define the binary epoxy compound residual group having two covalent bonds when opening one epoxy group, (See para 10 of US publication). At the same time, it also seems that the Applicant’s intention is for “binary epoxy compound” to refer to an epoxy compound having “two epoxy groups,” as cited in para 31 of the Applicant’s US publication.
For examination purposes below, the term will be interpreted as an epoxy compound with two epoxy groups. It is suggested the claim be amended to “a binary epoxy compound residual group being a residue formed after two epoxy bonds of a binary epoxy compound are ring-opened…” to alleviate the issues above.
Claims 4, 7, 18, are dependent claims which fail to alleviate the issues above.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-8, 18, and 19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S60-231734 A to Tada et al. (hereinafter Tada).
Regarding claims 1, 4-8, 18, and 19, Tada teaches an additive of a reaction product of formula I obtained from a reaction of formula II and formula III (See abstract), wherein the reaction product is specifically obtained compounds (2) and compounds (3)
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, such as from N-(3-aminopropyl)morpholine and limonene dioxide, (See example 8, Table 1) which meets the nitrogen-containing group of claims 1 and 4, and the limonene dioxide meets the epoxy compound residual that contains two epoxy residue groups of claim 5. The above reaction product has a molecular weight of up to 5,000 (See page 2), which meets the claimed repeating units of the polymer. Tada further teaches that compound (3) is specifically butanediol diglycidyl ether (example 2), which meets the claimed binary epoxy compound cited in claim 6, wherein a1=2, and if the molecular weight is up to 5,000 would approximately be ~14 repeating units or below, which meets the claimed range of claim 7.
Furthermore, one skilled in the art would at once envisage the claimed arrangement combination because Tada specifically teaches a reaction product obtained by reacting compound (2) with compound (3), wherein compound (2) is specifically N-(3-aminopropyl)morpholine (Example 8), and compound (3) is specifically butanediol diglycidyl (Example 3), which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
The above reaction product of the N-(3-aminopropyl)morpholine (144 g/mol) reacted with either limonene dioxide (i.e. limonene diepoxide, 128 g/mol) or butanediol diglycidyl ether (202 g/mol) meets the claimed polymer with the claimed plurality of repeating units because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine, which Tada teaches above, and this is further evident by Tada teaching the resultant product has a molecular weight of up to 5,000, which would approximately be ~14 repeating units or below for a polymer of –(N-(3-aminopropyl)morpholine-butanediol diglycidyl ether)- units. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1, 4, 5, 18, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0152468 A1 to Corley et al. (hereinafter Corley).
Regarding claims 1, 4, 5, 18, Corley teaches a reaction product from an epoxy resin component and a curing agent (para 8), wherein the epoxy component specifically contains a bisphenol A diglycidyl ether (EPON 828, Example 1, para 51), and the curing agent is a monoamine of N-(3-aminopropyl)morpholine (See Table 1, para 51), and the components are mixed and reacted/cured (para 51-53), which meets the claimed polymer of claims 1, 4, and 5.
The claimed polymer with the plurality of repeating units occurs in-situ during the above curing reaction of the N-(3-aminopropyl)morpholine reacted with bisphenol A diglycidyl ether because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine, which Corley teaches above, and this is further evident by the product of Corley being crosslinked since such crosslinking would not be possible without the resultant side chain -OH groups from the above ring-opened epoxy groups. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
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.
Claim(s) 1, 4-6, 18, is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 101646531 B1 to Lim et al. (hereinafter Lim).
Regarding claims 1, 4-6, 18, Lim teaches a curing agent obtained by first obtaining n amine adduct from a reaction of a first epoxy compound and an amine, and then further reacting with a second epoxy compound (See abstract), wherein examples of suitable amines include N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone (page 3) and examples of suitable first epoxy compounds include polyglycidyl ethers of butylene glycol (page 3-4). The above amine adduct meets the claimed polymer of claims 1, 4-6, 8, 18.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention for form the amine adduct by reacting N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidine with a polyglycidyl ether of butylene glycol because Lim teaches that examples of suitable amines include N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone (page 3) and examples of suitable first epoxy compounds include polyglycidyl ethers of butylene glycol (page 3-4). (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
The above amine adduct product of the N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone with polyglycidyl ethers of butylene glycol meets the claimed polymer with the plurality of repeating units because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone, which Lim teaches above. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Response to Arguments
Applicant’s arguments, see page 14-15, filed 08/14/2026, with respect to Kapuscinksi have been fully considered and are persuasive. The previous rejection of Claim(s) 1, 4, and 18, under 35 U.S.C. 102(a)(1) as being anticipated by US 5,520,829 A to Kapuscinski et al. (hereinafter Kapuscinski) are withdrawn.
Applicant's arguments filed 08/14/2026 have been fully considered but they are not persuasive in part.
On page 15-16, the Applicant argues Corley merely teaches a curing process of a bisphenol A diglycidyl ether mixed with a N-(3-aminoopropyl)morpholine and does not teach a polymer with defined repeating units. This is not persuasive because, as cited above, the claimed polymer with the plurality of repeating units would result in-situ during the curing reaction. The claimed polymer with the plurality of repeating units occurs in-situ during the above curing reaction of the N-(3-aminopropyl)morpholine reacted with bisphenol A diglycidyl ether because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine, which Corley teaches above, and this is further evident by the product of Corley being crosslinked since such crosslinking would not be possible without the resultant side chain -OH groups from the above ring-opened epoxy groups. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
On page 16-17, the Applicant argues Tada does not teach a polymer with defined repeating units comprising the binary epoxy compound residual group. This is not persuasive because, as cited above, the claimed polymer with the plurality of repeating units would result from a reaction of the N-(3-aminopropyl)morpholine with either limonene dioxide (i.e. also known as limonene diepoxide) or butanediol diglycidyl ether. The above reaction product of the N-(3-aminopropyl)morpholine (144 g/mol) reacted with either limonene dioxide (i.e. limonene diepoxide, 128 g/mol) or butanediol diglycidyl ether (202 g/mol) meets the claimed polymer with the plurality of repeating units because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine, which Tada teaches above, and this is further evident by Tada teaching the resultant product has a molecular weight of up to 5,000, which would approximately be ~14 repeating units or below for a polymer of –(N-(3-aminopropyl)morpholine-butanediol diglycidyl ether)- units. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
On page 17-18, the Applicant argues that Lim does not teach the claimed combination because it comes from a list of possible amine compounds and epoxy compounds, which are outside the claimed scope, and Lim does not teach the claimed plurality of repeating units. This is not persuasive because, as cited above, Lim teaches the amine adduct from a reaction of an amine compound with a first epoxy compound and suitable amines include N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone with polyglycidyl ethers and suitable first epoxy compounds include polyglycidyl ethers of butylene glycol. Thus, the claimed invention would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention because, as cited above and incorporated herein, one skilled in the art would envisage reacting N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone with polyglycidyl ethers of butylene glycol since Lim states that they are suitable amines and epoxy compounds that may be reacted together to form the amine adduct. (See MPEP 2144.08).
In regard of the plurality of repeating units, the above amine adduct product of the N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone with polyglycidyl ethers of butylene glycol meets the claimed polymer with the plurality of repeating units because, as cited by the Applicant in their specification and examples, a polymer is formed as a result from a ring-opening reaction of the two epoxy end groups of the diepoxy compound with the amine group of the N-(3-aminopropyl)morpholine or N-(3-aminopropyl)pyrrolidone, which Lim teaches above. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
It is noted that neither Corley nor Lim teaches the quantity of repeating units of 3-100 of claim 7. However, that limitation is not in claim 1.
Conclusion
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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