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 .
Response to Arguments
Applicant has amended independent claim 1 with the added limitation such that the curing of the adhesive layer by contact and a reaction with the adhesive layer is “at room temperature without requiring heat activation, wherein room temperature is 10°C or higher and 40°C or lower, and the curing agent liquid composition consists of an imidazole compound and a solvent capable of dissolving the imidazole compound,”
The withdrawn independent claims 9 and 12 are similarly amended.
Applicant argues that the primary reference, Okamoto (JP2018050224A), used in the rejection of claim 1 under 35 U.S.C. § 103, does not disclose a curing agent liquid composition that “consists of” an imidazole compound and a solvent capable of dissolving the imidazole compound and the transitional phrase “consists of” excludes any element, step or ingredient not specified in the claim. The secondary reference, Hoshi (US 2019/0010361 A1), does not remedy the deficiencies of Okamoto because Hoshi merely describes a two-sheet system where two separate adhesive layers cure when brought into contact with each other. However, these adhesive layers are not “a curing agent liquid composition capable of curing the adhesive layer by contact and a reaction with the adhesive layer at room temperature without requiring heat activation” While imidazole compounds are mentioned by curing agent, this is incorporated into a dried solid adhesive layer but not provided as a separate liquid composition consisting of only an imidazole compound and a solvent. Instead, Hoshi discloses a curable component in one adhesive layer and another adhesive layer include a reactivity imparting component and this two-sheet system is structurally distinct from the claimed adhesive kit comprising an adhesive layer and a curing agent liquid composition. The adhesive sheets are formed by coating adhesive composition onto separators and drying so that the adhesive layers are solid sheets, not liquid compositions as claimed.
Therefore, neither Okamoto nor Hoshi, alone or in combination, teaches or suggests: "a curing agent liquid composition capable of curing the adhesive layer by contact and a reaction with the adhesive layer at room temperature without requiring heat activation, wherein room temperature is 10°C or higher and 40°C or lower, and wherein the curing agent liquid composition consists of an imidazole compound and a solvent capable of dissolving the imidazole compound," as recited in claim 1. (Applicant arguments/remarks 03/26/2026 pp. 7-9).
Examiner counter argues that under broadest reasonable interpretation, claim 1 is met by the secondary reference, Hoshi, because the examiner maintains that Hoshi includes the features/limitations of an imidazole which has good reactivity with an epoxy resin, as recited
While the applicant argues that Hoshi incorporates the imidazole into a dried solid adhesive layer and imparting a component -including layer and, thus, not provided as a separate liquid composition consisting of only an imidazole compound and solvent, however, claim 1 is not so limited:
The limitations of claim 1 as broadly interpreted, are that this curing agent liquid composition is “capable of curing the adhesive layer by contact and a reaction with the adhesive layer” under the conditions of “room temperature without requiring heat activation, wherein room temperature is 10°C or higher and 40°C or lower, and wherein the curing agent liquid composition consists of an imidazole compound and a solvent capable of dissolving the imidazole compound," (paragraph [0148] at room temperature and is a liquid composition (paragraphs [0004] [0211] [0352] where a liquid chemical including the curing agent is preferably the imidazole compound. The imidazole compound has good reactivity with the epoxy resin at room temperature,). as recited in claim 1. Therefore, the fact that Hoshi discloses the penetration of this composition between the two adhesive layers (paragraph [0211]). does not detract from the broadest reasonable interpretation of claim 1 which encompasses this feature.
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.
Claim(s) 1-2, 5-7 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (JP-2016-050224 A) with machine translation, IDS 03/28/2024 in view of Hoshi (US 2019/0010361) IDS 03/28/2024 with evidence provided in claim 1 – Special/Chem Pressure Sensitive Adhesive (PSA) – Types, Uses & Formulations, of record.
Regarding Claim 1, Okamoto discloses an adhesive kit (abs, provides an adhesive agent composition) comprising:
an adhesive layer containing an epoxy resin and an elastomer (paragraph [0008] curable composition comprsing an epoxy resin, a pressure-sensitive adhesive - Special/Chem Pressure Sensitive Adhesive (PSA) – Types, Uses & Formulations; see paragraph heading: Basic Polymers Used in Pressure Sensitive Adhesives which states that pressure sensitive adhesives normally are composed of elastomeric or thermoplastic base polymers – Note: additionally, the elastic modulus is measured with a viscoelasticity measuring apparatus which is an indication that an elastomer is present in the composition).and
that the adhesive layer contains 1 mass% to 20 mass% of the elastomer, which is encompassed by the limitation of 1 mass% to 30 mass % of the elastomer (paragraph [0020] preferably 1 to 20 parts by mass with respect to 100 parts by mass with the blending amount of the epoxidized polybutadiene where less than 1 part by mass the initial tackiness and adhesive strength tend to be insufficient and when more than 20 parts by mass, viscosity of the resin composition tends to be high and handleability is poor).
But while Okamoto discloses a curing agent liquid composition (paragraph [0024]) which is a liquid composition as evident (paragraph [0021] a curable epoxy resin composition obtained with a curing agent becomes a fluid (that is, a plastic fluid)), and that this is a latent curing agent, and that Okamoto teaches that this cures the pressure-sensitive adhesive composition,
however, it cures the epoxy group of the pressure-sensitive adhesive only when an activation temperature is reached by heating (paragraph [0024]), and does not disclose a curing agent liquid composition capable of curing the adhesive layer by contact and
a reaction with the adhesive layer at room temperature without requiring heat activation,
wherein room temperature is 10°C or higher and 40°C or lower, and wherein the curing agent liquid composition consists of an imidazole compound and a solvent capable of dissolving the imidazole compound.
Hoshi discloses in the same field of endeavor an adhesive sheet set with a pair of adhesive sheets with an adhesive layer capable of being cured and adhered by being in contact with each other (abs). Its composition includes a reactivity imparting component which is a material capable of directly reacting with a curable component (paragraph [0208]). The composition can include various epoxy group type resins where in at least one embodiment this includes rubber-modified epoxy resins which are inherently elastomeric, (paragraphs [0148] [0324]-[0330] where the storage elastic modulus is measured for a predetermined tackiness) The curing agent is preferably the Imidazole compound which has good reactivity this the epoxy resin at room temperature and is a liquid composition (paragraphs [0211] [0352] The imidazole compound has good reactivity with the epoxy resin at room temperature.; liquid chemicals includes the reactivity imparting component).
Additionally, while Hoshi does not explicitly disclose that room temperature is defined as 10 °C or higher and 40 °C or lower, it is inherent that room temperature is found within this range being at ~ 20 °C
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Okamoto with the teachings of Hoshi whereby an adhesive kit with an adhesive layer composition containing an epoxy resin and an elastomer and having a curing agent liquid composition and is capable of curing the adhesive layer, as disclosed by Okamoto, would include a feature of the curing agent liquid composition capable of curing the adhesive layer by contact and a reaction with the adhesive layer at room temperature without requiring heat activation, wherein room temperature is 10°C or higher and 40°C or lower, and wherein the curing agent liquid composition consists of an imidazole compound and a solvent capable of dissolving the imidazole compound, as taught by Hoshi.
One with ordinary skill would consider this an advantageous feature because if higher temperatures are required for curing than required on contact, the substrates supporting the adhesive layer may result in warpage or rising up depending on the material (paragraphs [0041]. [0042]).
Regarding Claim 2, the combination of Okumoto and Hoshi disclose all the limitations of claim 1 and Okumoto further discloses that the elastomer is dispersed in the adhesive layer (paragraph [0008] pressure-sensitive adhesive is an epoxidized polybutadiene and is contained in an amount of 1 to 20 parts by mass with respect to 100 parts by mass of the epoxy-based resin).
Regarding Claims 5 and 15, the combination of Okumoto and Hoshi disclose all the limitations of claims 1 and 2, respectively, and Hoshi further discloses that the adhesive layer has a thickness of 3 µm or more and 100 µm or less, where at least in one embodiment the thickness of one adhesive layer is preferably in a range of 5 µm or more to 150 µm or less (paragraph [0316])
Here overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the range of range of 5 µm or more to 150 µm or less that corresponds to the claimed range (MPEP § 2131.03).
Regarding Claims 6-7 and 16-17, the combination of Okumoto and Hoshi disclose all the limitations of claims 1 and 2, respectively, and while claims 6 and 16, recite that the adhesive layer has an elastic modulus of 1.0 x 108 Pa or more at room temperature (25 °C) 24 hours after start of curing and claims 7 and 17 recite that the adhesive layer has an elastic modulus of 5.0 x 108 Pa or more at room temperature (25 °C) 24 hours after start of curing (paragraphs [0324] [0381]-[0383],
Hoshi discloses and specifies that a storage elastic modulus at 20 °C is in a range of 1.0x105 Pa or more to 1.0x106 Pa or less at 20 °C; and further discloses that the first adhesive layer and second adhesive layers are preferably aged for a desired time where the time is determined by the curing reaction being completed where too short and too long aging times are not preferable).
While Hoshi discloses the range of elastic modulus as a close but not overlapping ranges compared to the claims 6 and 16 and claims 7 and 17 claim sets of 1.0 x 108 Pa or more at room temperature (25 °C) and of 5.0 x 108 Pa or more at room temperature (25 °C),
it would have been obvious to one having ordinary skill in the art at the time the invention was made to use the recited ranges of claim 6-7 and 16-17 since the claimed ranges and the prior art ranges are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to use these ranges of the elastic modulus because the adhesive layer has the tackiness according to the elastic modulus, and when the tack force is low, the value of the elastic modulus will be high and the cohesive force will also be high (paragraph [0326]).
Moreover, it would have been obvious for the elastic modulus to be determined after aging at normal temperature, where normal temperature means 23 °C (paragraph [0380]) after 24 hours to provide optimum aging time where Hoshi describes that the time range can vary from 0.5 hours to 72 hours (paragraph [0382]).
Claim(s) 3 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Okamoto (JP-2016-050224 A) with machine translation, IDS 03/28/2024 and Hoshi (US 2019/0010361) IDS 03/28/2024 as applied to claims 1 and 2 above, respectively, and further in view of Kakutaka (US 2020/0208028 A1).
Regarding Claims 3 and 13, the combination of Okamoto and Hoshi disclose all the limitations of claims 1 and 2, respectively, but are silent as to the average particle diameter of the elastomer fine particles.
Kakutaka teaches that in an adhesive composition having an epoxy resin and further comprising a polyamide-based rubber elastomer powder (abs) the elastomer powder has a volume average particle diameter which is not specifically limited but is preferably 1 to 25 µm which is close but not overlapping with the recited average particle diameter of 0.05 µm or more and 0.5 µm or less.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the recited range recited average particle diameter of 0.05 µm or more and 0.5 µm or less.
since the claimed ranges and the prior art ranges are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to ensure that the elastomer is suitably dispersed in the epoxy resin composition of the invention (paragraph [0056]).
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Okamoto (JP-2016-050224 A) with machine translation, IDS 03/28/2024 and Hoshi (US 2019/0010361) IDS 03/28/2024 as applied to claims 1 and 2 above, respectively, and further in view of Hidalgo (US 2006/0128892 A1).
Regarding Claims 4 and 14, the combination of Okamoto and Hoshi disclose all the limitations of claims 1 and 2, respectively, but are silent as to the elastomer being a block polymer with a block body compatible with the epoxy resin and a block body incompatible with the epoxy resin.
Hidalgo discloses a thermoplastic composition comprising an amorphous matrix and a block copolymer whereby the block copolymer has at least an elastomeric block which is partly or entirely compatible with an amorphous matrix (abs, paragraph [0009]) which can have a core shell structured polymer of an epoxy resin (paragraph [0020]).
It would have been obvious for one with ordinary skill in the art before the effective filing date of the invention to have modified the combination of Okamoto and Hoshi with the teachings of Hidalgo whereby an adhesive layer containing an epoxy resin, and an elastomer, as in Okamoto/Hoshi has the elastomer as a block polymer containing a block body compatible with the epoxy resin and a block body incompatible with the epoxy resin, as taught by Hildalgo.
One with ordinary skill would consider this limitation advantageous because the presence of the elastomer blocks where a block body is compatible with the amorphous epoxy and a block body incompatible with the amorphous epoxy involves the combining of a material with good impact strength with a material of high mechanical modulus which provides impact toughening (paragraphs [0007] [0009])
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Okamoto (JP-2016-050224 A) with machine translation, IDS 03/28/2024 and Hoshi (US 2019/0010361) IDS 03/28/2024 as applied to claims 1 and 2 above, respectively, and further in view of Tanaka (JP-2019-172744 A) with machine translation.
Regarding Claims 8 and 18, the combination of Okamoto and Hoshi disclose all the limitations of claims 1 and 2, respectively, but are silent as to the adhesive layer having a shear adhesive force after curing
Tanaka teaches a manufacturing method of a bonding structure having a tacky adhesive layer and a curative layer capable of curing the tacky adhesive layer by contacting it (abs). Tanaka discloses in at least embodiment that the adhesive layer contains an epoxy resin as the main component with an elastomer blended in (paragraph [0083] polyfunctional epoxy resin is blended into the pressure-sensitive adhesive composition See discussion above where a pressure-sensitive adhesive is identified with an elastomer).
Tanaka further discloses that the shear adhesive force of the cured layer is formed by the reaction between the adhesive layer and the curing agent layer and is preferably 9.0 MPa or more. This is an indication of excellent adhesiveness (paragraph [0112]).
Here overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the range of range of 9.0 MPa or more in shear adhesive strength that corresponds to the claimed range of 10 MPa or more after curing (MPEP § 2131.03).
Conclusion
THIS ACTION IS MADE FINAL. 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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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