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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 6-16, 20, 25, 29, 37-38, 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lutz et al (US 20090048370 A1) in view of Detig-Karlou (US 20040147704 A1).
Regarding claims 1, 4, 6-16, 20, 25, 29, 37-38, 45, Lutz teaches a two-component epoxy-based structural adhesive [abstract] comprising epoxy resin component A and hardener component B [0010].
The epoxy resin component A includes at least one epoxy resin such as D.E.R. 330 and D.E.R. 331 from Dow Chemical [0016-0018], which read on the claimed ai) epoxy resin as specified in claim 4, as evidenced by the applicant [0212, Table 1, PGPUB]. The epoxy resin(s) preferably constitute 50-75 wt% of the component A [0024], which meets the claimed range of 50-80 wt% as specified in claim 6.
The epoxy resin component A also includes at least one elastomeric toughener [0016]. The elastomeric toughener is produced by reacting a polyether polyol such as poly(tetrahydrofuran) and polybutadiene with a polyisocyanate to form an isocyanate-terminated prepolymer, and then reacting the remaining isocyanate groups with a capping or blocking agent [0025-0027]. Preferred polyisocyanates are hexamethylene diisocyanate and isophorone diisocyanate [0027].
The elastomeric toughener reads on the claimed aii) a reactive toughener. The poly(tetrahydrofuran) is equivalent to the recited poly(alkylene oxide)diol as specified in claims 15-16. The polybutadiene is equivalent to the recited poly(butadiene)diol (“PBD”) in claim 20 because the polybutadiene unit must be terminated with hydroxyl groups when reacting with isocyanate groups. Hexamethylene diisocyanate (HMDI) and isophorone diisocyanate (IPDI) meets the recited polyisocyanate as specified in claim 25.
Lutz does not teach the claimed polyurethane catalyst, nor that the capping or blocking agent has the claimed molecule of Formula I.
Detig-Karlou teaches an epoxy resin adhesive comprising a blocked isocyanate prepolymer which was obtained by reacting a polyetherpolyol and a diisocyanate such as HDI and IPDI in the presence of a catalyst (zinc 2-ethylhexanoate) followed by adding cyclopentanone-2-carboxyethyl ester as a blocking agent [0060, 0076, 0079]. The catalyst is known per se from polyurethane chemistry for accelerating the NCO/OH reaction [0069].
Detig-Karlou and Lutz are in the same field of endeavor because both are related with epoxy adhesives used on metal substrates (Detig-Karlou [0110], Lutz [0003, 0066-0067]).
It would have been obvious to one of ordinary skill in the art at the time of filing to add a zinc 2-ethylhexanoate catalyst in forming the prepolymer in Lutz’s composition for accelerating the NCO/OH reaction.
Zinc 2-ethylhexanoate reads on the claimed polyurethane catalyst as specified in claim 29.
It would have been obvious to one of ordinary skill in the art at the time of filing to select cyclopentanone-2-carboxyethyl ester as the capping or blocking agent in Lutz’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Cyclopentanone-2-carboxyethyl ester is equivalent to ethyl-2-oxocyclopentanecarboxylate as recited in claim 14, and meets the limitations in claims 1 and 7-13 for the end-capping molecule.
Lutz teaches that the hardener component B comprises a primary or secondary amine-terminated polyether [0033], including Jeffamine T-403, Jeffamine D-400, Jeffamine D-2000, and Lupasol P [0036, 0075] .
Jeffamine T-403, Jeffamine D-400 and Jeffamine D-2000 meet the recited polyamine having an amine functionality of 2 or greater as specified in claim 37, as evidenced by the applicant [0103 Table B, pgpub].
Lupasol P meets the recited polyamine comprising at least one molecule having an amine functionality of 10 or greater as specified in claim 38, as evidenced by the applicant [0103 Table B, pgpub]. Lutz teaches Example 1 comprising Lupasol P in combination with Jeffamine D400 [0075].
The polyamines read on the claimed bi) one or more polyamines.
The claimed bii) as specified in claim 45 is optional and does not need to be addressed.
Lutz teaches that the epoxy adhesive contains at least one epoxy curing catalyst [0013], which reads on the claimed biii) one or more epoxy curing catalyst.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lutz et al in view of Detig-Karlou as applied to claim 1 above, further in view of Adeleu et al (US 20220220245 A1).
Regarding claim 31, Lutz in view of Detig-Karlou teaches the composition in claim 1. Lutz in view of Detig-Karlou teaches the polyurethane catalyst of zinc carboxylate in claim 29, but does not teach that the polyurethane catalyst is a mixture of bismuth and zinc carboxylates.
Pertinent to the same problem of polyaddition reaction between polyol(s) and polyisocyanate(s), Adeleu teaches using a catalyst of bismuth and/or zinc carboxylates [abstract, 0083].
It would have been obvious to one of ordinary skill in the art at the time of filing to select a catalyst of bismuth and zinc carboxylates as the catalyst when reacting the polyol with the polyisocyanate in the composition of Lutz in view of Detig-Karlou, as the catalyst of bismuth and zinc carboxylates is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Alternatively, since bismuth carboxylate and zinc carboxylate are recognized as equivalents for the same purpose of serving as a catalyst for the reaction of OH and NCO, it would have been obvious for one of ordinary skill to combine the two in the composition of Lutz in view of Detig-Karlou. It is prima facie obvious to combine equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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