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 1-32 and without traverse of Species II in the reply filed on 12/08/2025 is acknowledged. The traversal is on the ground(s) that Virnelson does not disclose or suggest the claimed subject matter, namely an adhesive composition having relatively low density and good adhesive properties, which represents a novel and inventive concept. This is not found persuasive because unity of invention is not based on a novel and inventive concept but rather the special technical feature that is commonly shared among groups of inventions which is taught by Virnelson as set forth in paragraph 3 of the Restriction requirement mailed 10/14/2025.
Claims 33-34 and Species group I (claim 24) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/08/2025.
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.
Claim 10 is 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 claim 10, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1-3, 5, 10-12, 14-15, 20, 25, and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Virnelson (US 2018/0215974).
Regarding claims 1, 2, 11, and 25, Virnelson teaches a low density sealant composition comprising a first component and a second component, wherein, the first component comprises a thiol-terminated polythioether; 2.5 wt % to 4.0 wt % of a low density filler, wherein the low density filler is characterized by a specific gravity within a range from 0.01 to 0.09, and the low density filler comprises low density microcapsules comprising a coating of an aminoplast resin (paragraph [0011]), i.e. a thermoset material.
Given that Virnelson teaches 50 wt % to 70 wt % of thiol-terminated polythioether in the first component and 75 wt % to 95 wt % of a polyepoxide in the second component (paragraph [0011]), when the first component and the second component are combined to provide the composition, the amount would necessarily overlap the amount of adhesive compound of 85 to 99.95 percent as presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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); see MPEP 2144.05.
While Virnelson discloses the specific gravity is determined according to ASTM D1475, given that the specific gravity of the prior art overlaps the presently claimed range, absent evidence to the contrary regarding the criticality of how specific gravity is measured, it is the Examiner’s position that Virnelson meets the presently claimed limitation.
Regarding claim 3, note that because claim 1 is in the form of alternatives, and Virnelson teaches a thermoset material, it is not required that Virnelson meet the further limitation of the non-selected groups via subsequent dependent claims.
Regarding claim 5, Virnelson teaches wherein the coating comprises a film thickness of less than 2 μm (paragraph [0209]), which overlaps the claimed range of 0.1 nm to 25 micrometers.
Regarding claim 10, Virnelson teaches wherein the plurality of particles comprise thermally expandable particles (paragraph [0216]).
Regarding claims 12, 14 and 15, note that because claim 11 is in the form of alternatives, and Virnelson teaches a thiol-terminated compound, it is not required that Virnelson meet the further limitation of the non-selected groups via subsequent dependent claims.
Regarding claim 20, Virnelson teaches wherein the adhesive composition further comprises an accelerator (paragraph [0024]) and one or more additives (paragraph [0241]).
Regarding claim 27, given that Virnelson teaches adhesive composition comprising materials identical to those presently claimed, the adhesive composition would necessarily have a density as presently claimed and when adhesive is formed from the adhesive composition, it would necessarily have the properties as claimed, absent evidence to the contrary.
Regarding claim 28, given that Virnelson teaches adhesive composition comprising materials identical to those presently claimed, the adhesive composition would necessarily have a density as presently claimed and when adhesive is formed from the adhesive composition, it would necessarily have the properties as claimed, absent evidence to the contrary.
Regarding claim 29, Virnelson teaches low density sealants having a specific gravity less than 0.9 (paragraph [0006]). While Virnelson does not explicitly disclose density of the adhesive composition, it would have been obvious to one of ordinary skill the art to control specific gravity and therefore, density in order to produce a composition with desire aerospace sealant performance requirements. Further, given that Virnelson teaches adhesive composition comprising materials identical to those presently claimed, when adhesive is formed from the adhesive composition, it would necessarily have the properties as claimed, absent evidence to the contrary.
Regarding claim 30, Virnelson teaches low density sealants having a specific gravity less than 0.9 (paragraph [0006]). While Virnelson does not explicitly disclose density of the adhesive composition, it would have been obvious to one of ordinary skill the art to control specific gravity and therefore, density in order to produce a composition with desire aerospace sealant performance requirements. Further, given that Virnelson teaches adhesive composition comprising materials identical to those presently claimed, when adhesive is formed from the adhesive composition, it would necessarily have the properties as claimed, absent evidence to the contrary
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787