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 .
DETAILED ACTION
Claim Objections
Claims 1is objected to because of the following informalities: “select from … and…” is not a proper Markush group or conventional alternative limitation. Appropriate correction is required.
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 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.
Claims 1-6, 10-11, 15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Du et al (CN 110922926, of record, ‘926 hereafter, paragraph citation please see original document in Chinese).
Regarding claims 1-6, 10-11, 15 and 19 , ‘926 discloses a single component epoxy adhesive composition and a method of making the same, comprising 48.3% by weight of an epoxy resin without a benzene ring structure (Table 1, and Comparative Example 2 as in Table 3); 45% by weight of a polymercaptan, which can be trimethylolpropane tri(3-mercaptopropionate) ([0010], Comparative Example 2); and 4.5% by weight of an initiator selected from one or more of latent amine initiators or imidazole initiators, satisfying present claims 1, 11 and 19 ([0011], Comparative Example 2, PN-23J is an amine-based initiator from Ajinomoto and EH-4070S is imidazole-based initiator from ADEKA). The composition of ‘926 does not contain a solvent, satisfying present claim 17. ‘926 also discloses that the epoxy resin has cyclohexane structure and two epoxy functionality and molecular weight satisfying present claims 2-6 and 15 (Table 1, TTA-21), and the polymercaptan can be pentaerythritol tetra-3-mercaptopropionate), satisfying present claim 10 ([[0010]).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-12 and 14-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Abe et al (US 2020/0407486, of record, ‘486 hereafter).
Regarding claims 1-12 and 14-19, ‘486 discloses a single component epoxy adhesive composition and a method of making the same, comprising 30 to 60% by weight of an epoxy resin without a benzene ring structure being hydrogenated bisphenol-A diglycidyl ether with molecular weight being 410 gram per mole ([0014]-[0015], [0023], [0039], around 60% in Examples 1 and 4, Table 1), satisfying present claims 1-7, 16 and 18; 0.5 to 1.5 times by weight of polymercaptan to total weigh of epoxy in the composition, which can be pentaerythritol tetra-3-mercaptopropionate), satisfying present claims 1 and 10 ([0017]-[0019], [0024], [0040], 33% by weight in Examples 1 and 4); and 0.5 to 10% by weight of an initiator selected from one or more of latent amine initiators or imidazole initiators, satisfying present claims 1, 11 and 19 ([0022], [0025]). The composition of ‘486 does not contain a solvent, satisfying present claim 17 but may further include a stabilizer and silane coupling agent ([0030]), satisfying present claims 12 and 14 (less than 2.8% or 0.6% could be 0%, thus these components are optional in the presently claimed composition).
Claims 12-13 and 20 are rejected under 35 U.S.C. 103 as obvious over Abe et al (US 2020/0407486, of record, ‘486 hereafter) in view of Sano et al (US 2018/0022862, ‘862 hereafter).
Regarding claims 12-13 and 20, ‘486 teaches all the limitations of claim 1, ‘486 also discloses that the epoxy composition may further include a boric acid ester being a stabilizer, but does not specifically name a stabilizer being dineopentyl glycol metaborate. However, it is known in the art that boric acid ester include L-07N, a commercial product of dineopentyl glycol metaborate, can be used in an epoxy composition to improve and balance storage stability and curing speed of the epoxy composition ([0012], [0017], [0047]-[0051]), wherein the content of the stabilizer can be in a preferred range of 0.2 to 4% by weight ([0052]), as evidenced by ‘862. In light of these teachings, one of ordinary skill in the art would have been motivated to use the stabilizer as taught by ‘862, including dineopentyl glycol metaborate, to modify the epoxy composition, in order to render an epoxy composition having desired stability.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Oka et al (US 2020/0148847, of record). Oka discloses an epoxy composition comprising an aliphatic epoxy resin having cyclohexane ring and a polymercaptan compound being one of the polymercaptan as presently claimed ([0017]-[0034], [0043]-[0052]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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