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 Status
Claims 1 has been amended. Claim 31 is new. Claims 16-20 are withdrawn.
Claims 1-30 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 31 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 is amended to recite,
“A composition comprising:
a silylated polyurethane;
an amine functional compound; and
an epoxy functional compound;
wherein the composition has a molar ratio of amine active hydrogen to epoxy of in a range from about 0.3 to less than 0.8, and wherein the composition comprises less than 1 weight % of water based on the total weight of the composition.”
Claim 14 is new and further limits the composition of claim 1 to comprising less than 1 weight % water.
In [p. 0101] of the specification as filed, the applicants recite the second part of the two-part composition, which may be referred to herein as Part B, may include the epoxy functional material and the catalyst, and may further include may include the amino functional compounds, the water and optionally the filler. See also [p. 0112]
In [p. 0102] of the specification as filed, the applicants recite that during the condensation cure the mixture can contain some water.
It appears applicants do not teach a range for the amount of water the composition may comprise in the specification as filed, therefore the range ‘less than 1 weight %’ is not supported.
Furthermore, in table 1, applicants show part B of examples 1-5 and comparative examples 1 and 2 comprise 1 ‘part’ of water. Assuming ‘part’ is describing ‘part by weight’, these compositions comprise approximately 0.5 wt. % water, which fails to support the range ‘less than 1 weight %’.
Response to Arguments
Applicant's arguments filed 07/31/2026 have been fully considered but they are not persuasive.
Applicant’s arguments are based on the amended claim 1, wherein the composition is limited to comprising less than 1 weight % water. As the amendment to claim 1 is new matter, applicant’s arguments are not persuasive. New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971)
Furthermore, the general teachings of Burckhart are that component A and B may be combined at a weight ratio up to 100:1 [p. 0118] Burckhart also teaches that component B comprises at least one aqueous emulsion of at least one epoxy resin, wherein the aqueous emulsion contains about 10% by weight water [p. 0084, 0093]. This corresponds to 0.1 weight % water relative to the total weight of the composition. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a composition wherein component B comprises water in an amount of less than 1 weight % relative to the total weight of the composition.
Claim Objections
Claim 14 is objected to because of the following informalities: claim 1 recites “the composition of any of claim 1…” . Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burckhardt et al (herein ‘Burckhardt’; US 2014/0179830 A1).
Burckhardt is directed toward a two-component adhesive composition consisting of a component A comprising at least one silane-functional polymer P, and at least one hardener or accelerator for epoxy resins; and a component B comprising at least one aqueous emulsion of at least one epoxy resin [p. 0012-0015].
Burckhardt exemplifies a composition [p. 0067, 0075, 0140, 0148, table 5, example 18],
wherein component A consists of:
92 parts of a silane-terminated polyurethane (MS Polymer S 203 H from Kaneka),
1 part of a Mannich base (Ancamine K54=2,4,6-Tris(dimethylaminomethyl)phenol from Air Products)
5 parts of a polyamine (IPDA=Isophorone diamine) (AHEW = 42.5 g/eq),
3 part of a catalyst (10% by weight dibutyltin dilaurate in diisodecyl phthalate), and
1 part of an aminosilane (N-(2-aminoethyl)-3-aminopropyltrimethoxysilane; Silquest A-1120 from Momentive Performance Materials) (AHEW = 74 g/eq);
and component B consists of:
50 parts of an epoxy resin (Araldite GY-250 von Huntsman) emulsion having an epoxy group content of 4.08 mEq/g (EEW = 245 g/eq).
In example 18, AHM = 0.13, EM = 0.20, and AHM/EM = 0.65. [see p. 0087 of instant specification for the calculation method.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5-12, 14-15, 21-25, and 26-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burckhardt et al (herein ‘Burckhardt’; US 2014/0179830 A1). The disclosure of Burckhardt is above and is applied here as such.
Regarding claims 1-3, 9-10 and 31; Burckhardt is directed toward a two-component adhesive composition consisting of a component A comprising a silane-terminated polyurethane [p. 0040], at least one hardener or accelerator for epoxy resins, wherein polyamines are preferred, and a tin catalyst [p. 0080, 0082, 0101]; and a component B comprising at least one aqueous emulsion of at least one epoxy resin [p. 0012-0015].
Burckhardt exenmplifies compositions having a molar ratio of amine active hydrogen to epoxy of 0.65. [see p. 0087 of instant specification for the calculation method.
Burckhardt teaches that component A and B may be combined at a weight ratio up to 100:1 [p. 0118]. Burckhardt further teaches the aqueous emulsion of component B may contain about 10% by weight water [p. 0084, 0093]. These general teachings correspond to 0.1 weight % water relative to the total weight of the composition. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a composition having a molar ratio of amine active hydrogen to epoxy of 0.65 comprising water in an amount of less than 1 weight % relative to the total weight of the composition.
Regarding claim 5, Burckhardt teaches the use of polyether amines [p. 0080].
Regarding claim 7; Burckhardt exemplifies a composition comprising 0.7 wt. % amino silane, and 3.3 wt. % IPDA, based on the total weight of the composition [table 5, example 18]. Burckhardt teaches the hardener or accelerator in component A of the composition are especially polyamines, wherein examples include IPDA, and polyether amines such as those that are commercially available under the trade names Jeffamine from Huntsman [p. 0080]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Burckhardt with a polyether amine, such as Jeffamine, as Burckhardt teaches it as a suitable alternative to IPDA.
Regarding claim 8; Burckhardt exemplifies a composition comprising N-(2-aminoethyl)-3-aminopropyltrimethoxysilane (Silquest A-1120 from Momentive Performance Materials) [example 18]. However, Burckhardt teaches particularly suitable amino silanes include 3-aminopropyl-trimethoxysilane, 3-aminopropyl-triethoxysilane [p. 0102]
Although the exemplary embodiment does not meet the formulas of instant claim 8, the general teachings of Burckhardt contemplate various silanes, including silanes that satisfy the instantly claimed formula. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Burckhardt with 3-aminopropyl-trimethoxysilane or 3-aminopropyl-triethoxysilane as the amino silane.
Regarding claims 11 and 12; Burckhardt teaches component A of the composition preferably contains at least one filler, wherein suitable fillers include calcium carbonates, barium sulfate, calcined kaolins, aluminum oxide, aluminum hydroxide, silica, carbon black, PVC powder or hollow beads [p. 0103].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Burckhardt with a filler, including conductive fillers, as Burckhardt teaches that the component A of the composition preferably comprises at least one filler and teaches conductive fillers are suitable fillers for the composition.
Regarding claims 14 and 15; Burckhardt teaches the composition has good adhesion to various substrates [p. 0006]. Burckhardt teaches contact of the two-component composition with water in the form of atmospheric humidity promotes hardening [p. 0120]. Burckhardt further teaches the complete hardening of the two-component composition takes place at room temperature, but, in certain cases, it may be advantageous to harden the partially hardened composition additionally or completely with the aid of elevated temperature, for example in the range of 40 to 100 °C [p. 0121].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to form the adhesive composition by applying the composition to a substrate and exposing it to atmospheric humidity at room temperature, followed by further curing at elevated temperature, as Burckhardt teaches this is a suitable method to harden the composition additionally or completely.
Regarding claims 21-25; Burckhardt teaches the composition is suitable for use as an adhesive and has good adhesion to various substrates [p. 0006, 0123]. Burckhardt teaches the two-component composition is preferably used for elastic to semi-structural adhesion in the construction and finishing industry as well as in vehicle construction, for example for floor bonding, facade element bonding, bonding of mounted parts, seam lining, mounting, trim bonding, windshield bonding, and composite bonding [p. 0125]. Burckhardt teaches the two-component composition is especially suitable for adhering of substrates made of concrete, mortar brick, tile, ceramic, plaster, natural stone such as granite or marble, glass, glass-ceramic, metal or metal alloys such as aluminum, steel, nonferrous metal, galvanized metal, wood, plastic such as PVC, polycarbonates, polymethyl(meth)acrylate, polyesters, epoxy resin, composite materials, paint or lacquer [p. 0124].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the composition of Burckhardt as an adhesive to bond substrates of the same material, or different materials (ex. thermoplastic and metal), as Burckhardt teaches the composition is useful in applications such as trim bonding, wherein substrates taught to be suitable by Burckhardt, such as plastic or metal, are bonded with an adhesive.
Regarding claims 26-30; Burckhardt is silent with respect to the mechanical properties of an article comprising the composition as determined via ASTM D1002. However, a person with ordinary skill in the art would expect a composition resulting from the teachings of Burckhardt to obviously embrace embodiments capable of satisfying these properties as the composition of Burckhardt significantly satisfies the chemical and material limitations (and amounts thereof) of the claimed composition.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burckhardt et al (herein ‘Burckhardt’; US 2014/0179830 A1) in view of Jung et al (herein ‘Jung’; US 2019/0382591 A1). The disclosure of Burckhardt is above and is applied here as such.
Burckhardt exemplifies a composition wherein the number of active hydrogen equivalents of the curing agent to the number of epoxy equivalents of the epoxy resin is 0.65 [example 18]. However, Burckhardt is silent with respect to a general range regarding the ratio of the hydrogen equivalents and epoxy equivalents.
Jung teaches an epoxy-based coating composition [abstract]. Jung teaches it is preferable for the epoxy-based binder composition cures at ambient temperatures [p. 0228]. Jung teaches the use of modified polyamines are preferred curing agents for the epoxy resin due to their viscosity [p. 0202-0226]. Jung teaches the number of active hydrogen equivalents of the polyamine curing agent to the number of epoxy equivalents of the epoxy resin is preferably in a range of 0.5:1 to 1.2:1 [p. 0229-0231].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Burckhardt in a manner that the amount of the curing (hardening) agents and the amount of epoxy resin have a ratio of active hydrogen equivalents to epoxy equivalents in the range of 0.5:1 to 1.2:1 in order for the composition to cure at room temperature. In the case where the claimed ranges "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).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burckhardt et al (herein ‘Burckhardt’; US 2014/0179830 A1) in view of Mayer et al (herein ‘Mayer’; US 2022/0227991 A1). The disclosure of Burckhardt is above and is applied here as such.
Burckhardt teaches the hardener or accelerator in component A of the composition are especially polyamines, wherein examples include IPDA, and polyether amines such as those that are commercially available under the trade names Jeffamine from Huntsman [p. 0080]. However, Burckhardt is silent with respect to the molecular weight of the polyether amines.
Mayer teaches a two-component epoxy resin composition for use as an adhesive that includes a first component including at least one epoxy resin A that contains on average more than one epoxy group per molecule; and a second component including a hardener B for epoxy resins [abstract, p. 0001]. Mayer teaches hardener B is preferably a polyamine having a molecular weight from 350 to 2000, which can be obtained under the name Jeffamine (from Huntsman) [p. 0077, 0082-0084].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select a polyether amine from the Jeffamine line having a molecular weight from 350 to 2000 Da when preparing the composition of Burckhardt, as Mayer teaches polyamines in this molecular weight range are suitable for curing epoxy resins. In the case where the claimed ranges "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).
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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
