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 § 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 4 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 4, the phrase "preferably" 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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al.(EP 3670564A1) in view of Elgimiabi et al.(EP 3771721) and Elmore et al.(US Publication 2012/0149804)
Regarding claims 1 and 11, Jung et al. discloses a two part epoxy adhesive composition comprising a first part comprising a first epoxy curing agent comprising a diamine(i), a second curing agent comprising polyamidoamine, a first curing aid comprising calcium nitrate tetrahydrate(iii), and a second curing aid comprising tris-2,4,6-dimethylaminomethyl-phenol(iv), and a second part comprising an epoxy resin(i), first and second tougheners(33 and 37% core shell butadiene), and a corrosion inhibitor.(Table top of page 10) The reference does not disclose one of the curing agents being a phenylamine. Elgimiabi et al. discloses a two part epoxy adhesive composition with two curing agents, one of them a diamine and the other a phenalkamine[0028] which provides improved resistance to weathering and water.[0027] The reference also does not disclose the corrosion inhibitor being an amphoteric material selected from phosphonate and phosphosilicate compounds. Elmore et al. discloses it is known to use calcium strontium phosphosilicate as an anti-corrosive in epoxy and as a component in adhesives.([0120];[0125]) It would have been obvious to one of ordinary skill at the time of filing to replace the polyamidoamine curing agent of Jung et al. with a phenalkamine since Elgimiabi et al. teaches that using phenalkamines as one of a pair of curing agents(where the other is a diamine) results in improved resistance to weathering and water[0027] and since this would result in the combination of a diamine and a phenalkamine in Jung et al. as desired by Elgimiabi et al. and to replace the corrosion inhibitor of Jung et al. with calcium strontium phosphosilicate since this is a simple substitution of one known anti-corrosion material for another, which would result in predictable results. Calcium strontium phosphosilicate is commercially available as Halox SW111 and applicant’s specification uses this material, indicating it is amphoteric.
Regarding claim 2, the diamine is trioxatridecandiamine, which is a polymeric diamine.(Table top of page 10)
Regarding claims 3, 5, and 6, the metal salt hydrate is calcium nitrate tetrahydrate.(Table top of page 10)
Regarding claim 4, Elgimiabi et al. discloses the adhesive can also contain an epoxy based reactive diluent such as cardanol glycidyl ether.(Table 1, [0060]) It would have been obvious to one of ordinary skill at the time of filing to include a cardanol glycidyl ether in the adhesive of Jung et al. and Elgimiabi et al. since Elgimiabi et al. discloses this impacts the flow characteristics of the composition.[0061]
Regarding claim 7, calcium strontium phosphosilicate is a strontium salt.
Regarding claims 8 and 9, both impact modifiers are core shell materials.(table top of page 10)
Regarding claim 10, the impact modifiers are core shell materials which are butadiene rubber.(table top of page 10)
Regarding claims 12 and 13, Jung et al. discloses bonding parts by applying the adhesive to a part, applying a second part to he first, and curing the adhesive.[0043] One of the parts can be steel.[0046]
Regarding claim 14, Jung et al. discloses curing at a lower temperature and then a second curing step at a higher temperature.(abstract)
Regarding claim 15, Jung teaches the two parts can be steel.[0046]
Response to Arguments
Applicant's arguments filed 3/3/26 have been fully considered but they are not persuasive.
Examiner notes that while applicant said he amended claim 4 to remove the 112, 2nd rejection, claim 4 was not actually amended.
Regarding applicants’ argument that there is no suggestion in Jung or Elgimiabi as to which of the curing agents of Jung to replace, Jung uses two curing agents, one of which is a diamine(A). Elgimiabi uses two curing agents, one of which is also a diamine(A). Since Elgimiabi et al. suggests that the combination of a diamine(A) and a phenalkamine(C) results in good resistance to weather and water, one in the art would appreciate that the curing agent in Jung which was not a diamine would be replaced with the phenalkamine so that you would have the same combination of diamine and phenylamine as Elgimiabi et al. since it is that combination of curing agents that Elgimiabi et al. states creates good resistance to weather and water, i.e. when reference 1 has components A and B, and reference 2 has components A and C, and says why that’s good, you would replace B with C so you’d have A and C in reference 1, not B and C since the combination of A and B is what Elgimiabi et al. discloses results in good properties. It is the combination of a diamine and a phenalkamine that results in the improved weatherability so you would not replace the diamine of Jung et al. with the phenalkamine since this would not result in the combination of a diamine and a phenalkamine.
Regarding applicant’s argument that Jung et al. suggests the polyamidoamine contributes to the mechanical properties and works synergistically with the color change chemistry, examiner does not see where the reference mentions any of this. Jung only discloses that it is prefers to have two curing agents which are amines[0029] and lists several different general classes of curing agents. There is no suggestion that the curing agents would work with the color change chemistry, let alone that a polyamidoamine in particularly would do this. The table is simply an example which has one of the two claimed curing agents. Jung actually suggests generally the two classes of curing agents of the claim. One curing agent can be an aromatic compounds having at least one amine, which is a description of a phenolic amine. The other curing agent is clearly one of the items on the list as well.
Regarding applicant’s argument that Elgimiabi et al .teaches that the diamine is a polyether amine, that is one preferred embodiment. The reference states that it is desired to have a diamine and an amine based on phenol.[0019] The reference does not require the diamine to be a polyether amine, only a diamine.
Regarding applicants’ argument that Jung does not disclose two classes of different impact modifiers, the claim does not require two different CLASSES of impact modifier, it only requires two different impact modifiers which are chemically or physically different. Examiner is unclear if applicant would have support for two different classes or what that would require. Jung teaches 33% core shell butadiene and 37% core shell butadiene. These have different chemical makeup and different physical properties. They are thus two different impact modifiers.
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 BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746
Prosecution Insights