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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-10 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 1 recites limitations within parentheses in the recitation of component (A) and component (C). Parentheses render the claim indefinite as it is not clear if the limitations within the parentheses are required or are optional. For purposes of further examination, the limitations within the parentheses are interpreted as being required.
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.
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.
Claim(s) 1-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (English machine translation of JP 2016108453 A) in view of Okamura et al. (English machine translation of JP 2010168596 A).
Regarding Claim 1: Saito et al. teaches a two-component thermally curable resin composition comprising an epoxy resin (component (A)), a zirconium or titanium catalyst (component (B)), a cross-linkable silyl-containing organic polymer (component (D)), a curing agent for the epoxy resin (component (E)), and a filler such as alumina (heat dissipating filler, component (F)) ([0008], [0009], [0034]-[0035]).
Saito et al. does not teach the composition further comprising an acrylic-based polymer excluding component (D). However, Okamura et al. teaches addition of an acrylic polymer together with an epoxy group and a crosslinkable silyl group-containing polymer ([0008]-[0009] and [0011]). Saito et al. and Okamura et al. are analogous art because they are concerned with the same field of endeavor, namely curable epoxy resin compositions. At the time of the invention a person of ordinary skill in the art would have found it obvious to utilize the acrylic polymer of Okamura et al. in the composition of Saito et al. and would have been motivated to do so because Okamura et al. teaches the addition can improve weather resistance without impairing the physical properties of the cured composition ([0006] and [0010]).
Regarding Claim 2: Saito et al. teaches the epoxy resin and metal catalyst in one component (agent A) and the silyl containing polymer and epoxy curing agent in a separate component (agent B) ([0009]).
Regarding Claim 3: Okamura et al. teaches that the acrylic polymer is -10 °C or lower (liquid at room temperature) ([0038]).
Regarding Claim 4: Okamura et al. teaches the acrylic polymer in 5-200 parts by weight relative to the silyl group containing polymer and the epoxy resin is present in 1-200 parts by weight relative to the silyl group containing polymer ([0039] and [0059]) over lapping and rendering obvious the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding Claim 5: Saito et al. teaches the composition further comprising a flame retardant ([0033]).
Regarding Claim 7: Saito et al. teaches the epoxy resin (component (A)) and metal catalyst (component (B)) in one component (agent A) and the silyl containing polymer (component (D)) and epoxy curing agent (component (E)) in a separate component (agent B) ([0009]).
Neither Saito et al. nor Okamura et al. specify the component to which the flame retardant, alumina, or acrylic polymer should be added. However, the selection of any order of mixing ingredients is prima facie obvious (MPEP 2144.04).
Regarding Claim 8: Saito et al. teaches a cured product prepared from the composition ([0034] and [0053]).
Regarding Claims 9-10: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) render obvious all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. the thermal conductivity, flame retardancy, and resin elongation, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (English machine translation of JP 2016108453 A) in view of Okamura et al. (English machine translation of JP 2010168596 A) as applied to claim 5 above, and further in view of Yano et al. (US Pub. No. 2019/0225795).
Saito et al. in view of Okamura et al. renders obvious the composition of claim 5 as set forth above.
Saito et al. does not specify a specific flame retardant. However, Yano et al. teaches aluminum hydroxide as a flame retardant for a two-component curable epoxy resin composition (abstract, [0091], and [0113]). Saito et al. and Yano et al. are analogous art because they are concerned with the same field of endeavor, namely curable epoxy resins comprising silicon group-containing organic polymers. At the time of the invention a person of ordinary skill in the art would have found it obvious to include the aluminum hydroxide of Yano et al. as the flame retardant in the composition of Saito et al. and would have been motivated to do so because Saito et al. does not teach a specific flame retardant leaving one of ordinary skill in the art to look to the prior art for suitable examples of flame retardants to use in a two part epoxy composition with a reasonable expectation of success. Yano et al. teaches that aluminum hydroxide is a suitable flame retardant for such compositions.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 September 18, 2026
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