Detailed Office Action
The communication dated 2/12/2026 has been entered and fully considered. Claims 14-19 are withdrawn from examination. Claims 1-19 remain pending.
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 .
Election/Restrictions
Applicant's election with traverse of Invention I (claims 1-13) in the reply filed on 2/12/2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden to the Examiner. This is not found persuasive because in the restriction requirement of 12/31/2025, the Examiner outlined the search burden that arises due to different classifications/keywords of the four different inventions. Applicant has not provided a specific rebuttal to the Examiner’s detail reasoning. The requirement is still deemed proper and is therefore made FINAL. Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Inventions II, III, and IV.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
Claim 1, item (d): replace “optional” with “optionally”.
Claim 1, item (e): replace “DICY” with “dicyandiamides (DICY)”.
Claim 2, item (d): replace “optional” with “optionally”. Appropriate correction is required.
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.
Claims 2-3 and 8-13 are 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.
Claim 2 in lines 1/2 indicates that this claim contains detailed descriptions for items (a) through (f). The claim, however, proceeds to provide descriptions for additional items of (g) through (k). It, therefore, is unclear whether items (g) through (k) are part of the claim. A statement before item (g) is required to indicate that these additional items are part the claim. For the purpose of examination, the Examiner interprets these items to be part of claim 2. Claims 3 depends on claim 2 and is rejected as well.
Claim 8 recites the limitation "the polyalkylene glycol segment" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the one or more dicyandiamides (DICY)" in lines 1/2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the one or more flame retardant" in lines 1/2. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the one or more filler" in lines 1/2. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the phrase “e.g.” or “for example” in line 6. Examples and preferences may lead to confusion over the intended scope of a claim. In these instances, it is not clear whether the claimed narrower range (after e.g.) is a limitation {see MPEP 2173.05(d)}.
Claim 12 recites the limitation "the one or more accelerators" in lines 1/2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the one or more polyetheramine flexibilizer" in lines 1/2. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
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, 7-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over KRAMER (US-2009/0264558), hereinafter KRAMER, in view of SCHMITT (US-2021/0230421), hereinafter SCHMITT. Note that the italicized text below are the instant claims.
Regarding claim 1, KRAMER discloses A liquid epoxy adhesive composition comprising:(a) at least one epoxy resin {[0083]-[0084]};
(b) one or more carboxyl-terminated butadiene rubbers {[0043]};
(c) rubber particles, optionally core-shell rubber particles (CSR) and/or particles of size 500 nm or less {[0133]-[0134]};
(d) optional one or more blocked polyurethane toughening agents {[abstract] note that limitation (d) is optional, note presence of this compound and since it is present, it acts as a toughening agent};
(e) at least one heat-activated latent curing agent comprising DICY {[0108] note hardener is curing agent and elevated temperature indicates it is heat activated};
(f) at least one accelerator different from the curing agent {[0108] note the teaching that an accelerator can be also be used and it is different from DICY}.
wherein (b) comprises at least one carboxyl-terminated butadiene acrylonitrile copolymer (CTBN) {[0043]}
KRAMER discloses the use of CTBN as the compound under item (b) {[0043]}. KRAMER is, however, silent on item (b) also comprising at least one carboxyl-terminated butadiene homopolymer (CTB) or the remainder limitation of claim 1 reciting “wherein (b) comprises at least one carboxyl-terminated butadiene homopolymer (CTB)”.
In the same filed of endeavor that is related to toughened epoxy compositions, SCHMITT discloses that one or more rubber toughening agents can be used {[0037]}, and these rubber agents can be CTB and CTBN {[0038]}. Note that since SCMITT teaches that more than one rubber agent can be present, the presence of both CTB and CTBN is allowed.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated teachings of SCHMITT in the composition of KRAMER and have used both CTB and CTBN. As discussed above, SCHMITT teaches that both compounds can be used {[0037]} and therefore, an artisan would have been motivated to include both to ensure the toughening functionality of the composition.
Regarding claim 7, modified KRAMER discloses wherein the core shell rubber (CSR) particles:(a) are monomodally or bimodally dispersed;(b) have a mean particle size of 50 nm to 500 nm;(c) have a core comprising polybutadiene, a butadiene/styrene copolymer, or an acrylic polymer or copolymer; and/or (d) are dispersed in DGEBA epoxy resin {[0133] note option (c) is disclosed}.
Regarding claim 8, modified KRAMER discloses wherein the optional one or more blocked polyurethane toughening agent is present and comprises a polytetramethylene glycol (poly-THF or PTMEG), having an equivalent molecular weight in a range of from 2000-5000 Daltons; wherein the polyalkylene glycol segment optionally is flanked at both ends by polyalkylene (extender) segments,; and the polyurethane toughening agent is end capped at both ends, wherein each end cap is independently a substituted phenol or bisphenol (or a hydroxyheteroaryl analog), an amine, methacryl, acetoxy, oxime, and/or pyrazole {[abstract], [0161] note poly-THF in table 1, [0058] note molecular weight, [0076] note end-capped, note the optional limitation, [0173], [0169]}.
Regarding molecular weight, KRAMER discloses a range of 600 to 6000 Daltons {[0058]} that encompasses the claimed range. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Regarding claim 11, modified KRAMER discloses wherein the one or more filler comprises one or more of calcium carbonate, calcium oxide, calcium silicate, aluminosilicate, organophilic phyllosilicates, naturally occurring clays such as bentonite, wollastonite or kaolin glass, silica, polyhedral oligomeric silsesquioxane (POSS), mica, talc, optionally functionalized graphite, optionally functionalized graphene, microspheres (polymeric or glass beads), or hollow glass microspheres, chopped or milled fibers [e.g. carbon, glass, or aramid], pigments, zeolites (natural or synthetic), or thermoplastic fillers {[0139]}.
Claims 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over KRAMER and SCHMITT as applied to claim 1 above, and further in view of LUTZ (US 8,088,245), hereinafter LUTZ, and AGARWAL (US-2003/0104212), hereinafter AGARWAL, as evidenced by DOW (Dow, D.E.R. 330), hereinafter DOW.
Regarding claims 2-6, the combination of KRAMER and SCHMITT discloses all the limitations of claim 1 as discussed above. Furthermore, and regarding claims 2 and 4-6, modified KRAMER discloses (a) one or more diglycidyl ether of a bisphenol-A (DGEBA) epoxy resins or bisphenol-F (DGEBF) epoxy resins, present in a range of from 20 wt.% to 80 wt.% {[0179] note DGEBA in table 3 example 1 amounts to 28 wt%};
(b) at least two selected from a carboxyl-terminated butadiene homopolymer (CTB)-epoxy adducts, a carboxyl-terminated butadiene acrylonitrile copolymer (CTBN)- epoxy adduct, or an adduct of carboxyl-terminated butadiene homopolymer (CTB) and carboxyl-terminated butadiene acrylonitrile copolymer (CTBN) and epoxy, each independently present in a range of from 1 wt.% to 30 wt.% {[0179] note modified KRAMER has both CTB and CTBN and CBTN in table 3 (polydis, see [0117]) amounts to 9.3 wt% that also applies to CTB}.
Modified KRAMER, however, is silent on the adducts forms of CTBN and CTB as recited in the limitation above and also in claims 4-6.
In the same filed of endeavor that is related to epoxy resins, LUTZ discloses adducts (claim 2), wherein the at least one carboxyl-terminated butadiene acrylonitrile (CTBN) is adducted with DGEBF, DGEBA or both adducts are present (claim 4), wherein the one or more carboxyl-terminated butadiene polymers (CTB) is adducted with DGEBF, DGEBA or both adducts are present (claim 5), wherein the at least one carboxyl-terminated butadiene acrylonitrile (CTBN) is adducted with carboxyl- terminated butadiene homopolymer (CTB) and one or more of DGEBF and DGEBA (claim 6) {[C8, L7-14], [C8, L46-51]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of LUTZ in the combination composition of KRAMER and SCHMITT and have used adducted CTBN and CBT as claimed above.
As disclosed by LUTZ, the advantage of this composition is to improve mechanical properties over a wide temperature range and its heat resistance {[C1, L32-56]}.
Regarding the next limitation of claim 2, modified KRAMER discloses (c) core shell rubber (CSR) particles, present in a range of from 5 wt.% to 40 wt.% {[0133]-[0134]}.
Modified KRAMER, however, is silent on the weight percent range of the core shell rubber particles. As disclosed above, Kramer discloses a weight percent value of 9.3 wt% for the liquid rubber that has the functionality of toughening. Therefore, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have also added these particles in similar weight percent range since they also act as toughening agents {[0133]}.
Regarding the next limitations of claim 2, modified KRAMER discloses (d) optional one or more blocked polyurethane toughening agents, present in a range of from 0 wt.% to 20 wt.% {[0179] note table 3, example 1 and also this is an optional limitation};
(e) one or more dicyandiamides (DICY), present in a range of from 2 wt.% to 7 wt.% {[0179] note table 3 example 1};
(f) one or more urea-based accelerator, present in a range of from 0.3 wt.% to 2.0 wt.% {[0108]}.
Modified KRAMER, however, is silent on the weight percent range of the accelerator. As disclosed above, Kramer discloses similar ranges for the hardening agent. Therefore, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have also added the accelerators in similar or lower weight percent range since they accelerate the curing agents {[0108]}.
Regarding the next limitations of claim 2, modified KRAMER (g) one or more filler, present in a range of from 0 wt.% to 35 wt.% {[0179] note table 3 example 1};
(h) one or more phenol novolac epoxies, present in a range of from 1 wt.% to 20 Wt.% {[0062], [0179] note table 3 example 1 and bisphenol that can be replaced with the novolac epoxies};
(i) one or more flame retardants, present in a range of from 0 wt.% to 35 wt.% {note optional since zero percent is recited};
and (k) one or more thixotropic agents, present in a range of from 0 wt.% to 25 wt.% {note optional since zero percent is recited}.
Modified KRAMER, however, is silent on the presence of a polyetheramine flexibilizer or item (j). The Examiner notes that KRAMER discloses presence of a plasticizer in the epoxy composition that plays the same role as a flexibilizer {[0113], [0152]}, therefore an artisan would have been motivated to look to prior art to determine an appropriate flexibilizer for such epoxy composition.
In the same field of endeavor that is related to epoxy resin, AGARWAL discloses (j) one or more polyetheramine flexibilizer, present in a range of from 3 wt.% to 30 wt.% {[abstract], [0017] note flexibilizing epoxy resins that are adducts of amine terminated polyalkylene glycols and bisphenol A diglycidyl ethers, [0016] note polyether chains, [0036] note weight percent of adduct or the flexibilizer, [0057]-[0058] note Cardolite or flexibilizer is 8.46 wt%}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of AGARWAL in the combination composition of KRAMER, SCHMITT, and LUTZ and have included the claimed flexibilizer. As disclosed by AGARAWAL, this flexibilizer will reduce the extent of crazing in the epoxy composition {[0016]}.
Regarding claim 3, modified KRAMER discloses wherein the one or more of diglycidyl ether of the bisphenol-A (DGEBA) epoxy resin has an Epoxy Equivalent Weight (EEW) in a range of from 180 to 195, where EEW = MW epoxy resin/Number (#) of epoxy groups {[0179]/[0161] note that D.E.R. 330 is the DGEBA that as evidenced by DOW has an EEW of 176-185 (see page 1)}.
The Examiner notes that the disclosed range of 176-185 partially overlaps with the claimed range. A prima facie case of obviousness is established when a claimed range partially overlaps the prior art range {see MPEP 2144.05 (I)}.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over KRAMER and SCHMITT as applied to claim 1 above, and further in view of BANK (US-2018/0291164), hereinafter BANK.
Regarding claim 9, the combination of KRAMER and SCHMITT discloses all the limitations of claim 1 as discussed above. Furthermore, modified KRAMER discloses and the accelerator is or comprises urea, a guanidine, or a substituted urea {[0108]}.
Combination above, however, is silent on the DICY being micronized and the size range of this micronized DICY.
In the same filed of endeavor that is related to epoxy compositions, BANK discloses wherein the one or more dicyandiamide (DICY) is a micronized dicyandiamide, wherein d90 of the micronized dicyandiamide has a particle diameter of 40 microns or less {[0008]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of BANK in the combination composition of KRAMER and SCHMITT, and have used micronized DICY with the claimed particle size range. As disclosed by BANK, the advantage of this micronized DICY is the faster cure rate {[0005]}.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over KRAMER and SCHMITT as applied to claim 1 above, and further in view of EAGLE (US 9,346,983), hereinafter EAGLE.
Regarding claim 10, the combination of KRAMER and SCHMITT discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on the presence of a flame retardant in the epoxy composition.
In the same filed of endeavor that is related to epoxy composition, EAGLE discloses wherein the one or more flame retardant present, and when presents comprises one or more of aluminum trihydrate (ATH), an ammonium polyphosphate, melamine, melamine polyphosphate, a phosphonate ester (e.g., diethyl bis(hydroxyethyl) aminomethyl phosphonate, a halogen-free phosphorus ester, or any combination of an unsubstituted, mono-, di-, or tri-butylated phenyl phosphates {[C1, L57-64]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of BANK in the combination composition of KRAMER and SCHMITT, and have a flame retardant as described by EAGLE in the composition. The advantage is prevention of spread of fire and since KRAMER epoxy is used in vehicles {[0011]}, it can benefit from this flame retardant.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over KRAMER and SCHMITT as applied to claim 1 above, and further in view of ANTELMANN (US-2007/0027274), hereinafter ATELMANN.
Regarding claim 12, the combination of KRAMER and SCHMITT discloses all the limitations of claim 1 as discussed above. Furthermore, modified KRAMER discloses wherein the urea-based accelerator is one or more of urea, substituted urea having one, two, three, or four alkyl groups or a methylene bridged bis(phenylurea) N-substituted with one, two, three, or four alkyl groups, and/or wherein the accelerator becomes activated in a temperature range of 100 °C to 180 °C {[0108] note elevated temperature and the methyl or alkyl group, [0155] note the hardening or activation temperature range}.
The Examiner notes that KRAMER discloses a temperature range of 100-220 °C that encompasses the claimed range. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Combination of KRAMER and SCHMITT, however, is silent on the accelerator being micronized.
In the same field of endeavor that is related to epoxy resins, ANTELMANN discloses wherein the one or more accelerators different from the curing agent is or comprises a micronized urea- based accelerator {[0029]-[0030]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of ANTELMANN in the combination composition of KRAMER and SCHMITT, and have used micronized accelerator in the composition of this combination. As disclosed by ATELMANN, the advantage is the excellent reactivity {[0020]}.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over KRAMER and SCHMITT as applied to claim 1 above, and further in view of LUTZ454 (WO-2018236454-A1), hereinafter LUTZ454.
Regarding claim 13, the combination of KRAMER and SCHMITT discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on the details of the polyetheramine flexibilizer as recited in claim 13.
In the same field of endeavor that is related to epoxy adhesive, LUTZ454 discloses wherein the one or more polyetheramine flexibilizer is or comprises an amine end-capped polyalkylene glycol, having an average weight averaged molecular weight in a range of from about 1000 to 3000 Daltons, the polyetheramine flexibilizer optionally comprising a DGEBA adduct {[P5, L10-20] note that 2000 in Jeffamine D-2000 is the molecular weight}.
As disclosed by LUTZ454, the advantage of this formulation is its use in transportation and high temperature with desired mechanical strength and desired elastic modulus {[P1]}, that as disclosed above is applicable to the KRAMER’s disclosed application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-13 of copending Application No. 18/359,949, hereinafter APPL949 in view of SCHMITT.
Regarding instant claim 1, APPL949 in claim 1, claims all the limitations, except the presence of CTB.
In the same filed of endeavor that is related to toughened epoxy compositions, SCHMITT discloses that one or more rubber toughening agents can be used {[0037]}, and these rubber agents can be CTB and CTBN {[0038]}. Note that since SCMITT teaches that more than one rubber agent can be present, the presence of both CTB and CTBN is allowed.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated teaching of SCHMITT in the composition of APPL949 and have used both CTB and CTBN. As discussed above, SCHMITT teaches that both compounds can be used {[0037]} and therefore, an artisan would have been motivated to include both to ensure the toughening functionality of the composition.
Instant claim 2 is claimed by claim 2 of APPL949.
Instant claim 3 is claimed by claim 3 of APPL949.
Instant claims 4-6 are claimed by claim 5 of APPL949.
Instant claim 7 is claimed by claim 6 of APPL949.
Instant claim 8 is claimed by claims 7-8 of APPL949.
Instant claim 9 is claimed by claim 9 of APPL949.
Instant claim 10 is claimed by claim 10 of APPL949.
Instant claim 11 is claimed by claim 11 of APPL949.
Instant claim 12 is claimed by claim 12 of APPL949.
Instant claim 13 is claimed by claim 13 of APPL949.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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