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 Amendment
An amendment responsive to the non-final Office Action dated October 22, 2025 was submitted on January 22, 2026. Claims 1 and 5 were amended. Claim 12 was added. Claims 1 and 3-12 are currently pending.
The amendments to claim 1 have overcome the prior art rejections of claims 1 and 3-11 (¶¶ 7-23 of the Office Action). These rejections have therefore been withdrawn. However, upon further consideration, new grounds of rejection of claim 5 have been made as detailed below. New claim 12 has also been addressed below.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 5 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwasaki et al. (Japanese Patent Publication No. JP H03-287684 A, machine language translation provided and cited below).
Regarding claim 5, Iwasaki discloses a method for preparing a crosslinked polyester resin (C) (Abstract of Iwasaki, adhesive composition obtained by curing a carboxylated polyester urethane resin and a tetrafunctional epoxy compound; resulting composition would necessarily be crosslinked after curing) (C), the method comprising: (ii) heating a mixture ([0053] of Iwasaki, mixture may be cured by heating) containing a polyester resin (A) having a carboxy group on a side chain (Abstract of Iwasaki, carboxylated polyester urethane resin) and an epoxy amine compound (E) having a tertiary amino group (Abstract of Iwasaki, tetrafunctional epoxy compound having a tertiary amino nitrogen group).
Regarding claim 12, Iwasaki discloses that the epoxy amine compound (E) is at least one selected from the group consisting of N,N,N',N'-tetraglycidyl-m-xylenediamine, 4,4'-methylenebis(N,N-diglycidylaniline) and triglycidyl para-aminophenol ([0030] of Iwasaki, tetrafunctional epoxy compound can be N,N,N',N'-tetraglycidyl-m-xylenediamine; claim only requires one of the recited epoxy amines).
Allowable Subject Matter
Claims 1, 3, 4 and 6-11 are allowed.
The following is an examiner’s statement of reasons for allowance.
Regarding claim 1, the closest prior art is to Altuna. Altuna discloses a crosslinked resin (C) (Abstract of Altuna, epoxy vitrimers formed from reaction of epoxy groups on an epoxy precursor with a poly-carboxylic acid; pg. 302, right column, 2nd full ¶ of Altuna, crosslinks generated by citric acid) having a structure obtained by reacting a compound (A) having a carboxy group on a side chain (pg. 299, Fig. 1 of Altuna, citric acid which has carboxylic acid groups on a side chain) with an epoxy compound (B) (Abstract, pg. 298, Scheme 3 of Altuna, epoxy tertiary amine compounds reacted with citric acid to form vitrimer), and the crosslinked resin (C) satisfies at least one of the following requirements (1) and (2), (1) a transesterification catalyst (D) is contained and (2) the epoxy compound (B) is an epoxy amine compound (E) having a tertiary amino group (Abstract of Altuna, epoxy vitrimer contains a covalently bonded tertiary amine; claim is only required to meet one of the recited requirements). While Hayashi provides motivation to use a polyester resin as the compound (A) having a carboxy group on a side chain or as the crosslinked resin (C), neither Altuna, Hayashi nor any of the other prior art references of record teach or reasonably suggest a crosslinked polyester resin as set forth in claim 2 wherein the crosslinked polyester resin (C) has an elastic modulus of 0.1 MPa or higher and 1.2 MPa or lower at a temperature equal to or higher than a stress relaxation initiation temperature, when the elastic modulus is determined by using a dynamic viscoelasticity measuring device under a measurement temperature between -100 °C and 250 °C at a frequency of 1 Hz.
The prior art as a whole therefore fails to teach or reasonably suggest the totality of the invention as defined by claim 1. In the absence of further prior art guidance, it would not have been obvious to arrive at the invention of claim 1 without impermissible hindsight. For the foregoing reasons, the invention of claim 1 is deemed non-obvious. Claims 3, 4 and 6-11 depend either directly or indirectly from claim 1 and are therefore also deemed non-obvious for the reasons set forth above with respect to claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments have been fully considered to the extent that they apply to the new grounds of rejection but they are not persuasive.
The applicant asserts that claim 5 is patentable over the references cited in the previous Office Action (pp. 7-10 of the amendment). The Office Action, however, is relying upon the newly cited Iwasaki reference to address this claim.
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 CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
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