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.
Election/Restrictions
Claims 31-40 and 46-50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 1, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 42 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 42, applicants claim the powder as consisting of mica, bioactive glass or a combination thereof. This is the same limitation set forth in claim 41. Therefore, claim 42 does not further limit the subject matter of claim 41 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 41-42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agarwal (US 2008/0188609).
Agarwal exemplifies an adhesive comprising the following (p. ):
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408
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Agarwal discloses the mica as having a particle size D50 of 10-100 microns, which meets applicants’ “micronized” limitation.
Agarwal anticipates instant claims 41-42.
Claims 41-43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hermansen (US 4,940,633).
Hermansen discloses an adhesive comprising a powder filler, having a particle size of 2-200 micron, comprising a blend of a mica and tungsten, where the adhesive is an epoxy (claims 1-6). Hermansen discloses that fumed silica powder can be added to retard settling (col. 4, ll. 8-11).
Hermansen anticipates instant claims 41-42.
As to claim 43, Hermansen discloses the epoxy to include those of diglycidyl ether of Bisphenol A (col. 3, ll. 9-17).
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.
Claims 44-45 are rejected under 35 U.S.C. 103 as obvious over Hermansen, as applied above to claims 41-43, and further in view of WO 2016/077095, Bremmer (3,294,742) and Corley (US 4,579,931), as evidenced by Jukeikis (Design of a Laboratory Study of Contaminant Film Darkening in Space, The Aerospace Corporation, 1993, 91 pages) and Yeh (Room Temperature Curing Structural Adhesive Systems, 29th National SAMPE Symposium, 1984, pp. 46-56).
Hermansen anticipates instant claims 41-42, as described above and applied herein as such, as Hermansen discloses an adhesive/sealant used in bonding/sealing metal structures for use in aerospace, marine, military, automotive and rail applications.
Hermansen discloses the adhesive as Epiphen 825A, which as evidenced by Jukeikis is a novolac epoxy resin, modified with a polythiol and cured with an amine (p. 56).
Hermansen does not teach or suggest the glass transition temperature (Tg) or the heat deflection temperature (HDT), as claimed.
WO ‘095 teaches that the Tg of an epoxy resin system increases as the polymerization reactions proceed, teaching that it is generally desirable for the resin to develop a glass transition temperature in excess of the mold temperature so the part can be demolded without damage. WO ‘095 teaches that the polymer must in addition achieve a glass transition temperature high enough for the part to perform properly in its intended use (pp. 2-3). WO ‘095 teaches that a Tg of greater than 110°C is generally regarded as a minimum requirement for many structural composites (p. 3).
Epiphen 825A has excellent resistance to elevated temperature exposure, and can be post cured at 200F (93°C), as evidenced by Yeh (p. 47).
This suggests Epiphen 825A has a Tg of at least or greater than 93°C, based on the teachings of WO ‘095.
Bremmer teaches that cured epoxy novolac resins customarily result in a heat distortion temperature of from 40-50°C above that of cured epoxy resins which are made by employing a bisphenol (col. 9, ll. 46-56). Corley teaches that a higher heat distortion temperature and glass transition temperature are obtained by use of an epoxy novolac compared to Epoxy Resin A (col. 13, ll. 39-42), which is a diglycidyl ether of Bisphenol A (col. 13, ll. And col. 7, ll. 5-8).
Applicants disclose the following in the instant specification:
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Therefore, one of ordinary skill in the art would expect the cured Epiphen 825A of Hermansen to possess a Tg of at least 90°C and a HDT of at least 120°C, as applicants disclose that epoxy resins of bisphenol A diglycidyl ether cured with amine hardeners can meet the claimed limitations, where Bremmer and Corley both teach that epoxy novolacs resins possess higher Tg and HDT than bisphenol A diglycidyl ether epoxy resins.
Hamensen in view of Bremmer and Corley is prima facie obvious over instant claims 43-44.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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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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/Brieann R Johnston/Primary Examiner, Art Unit 1766