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 .
Status of Claims
Claims 1-12, 14-16, and 27-31 are pending in the current application.
Claims 29-31 are withdrawn from consideration in the current application.
Claims 13, 17-26, and 32-35 are canceled in the current application.
Election/Restrictions
Claims 29-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 4, 2026.
Applicant's election with traverse of Group I (claims 1-12, 14-16, 27, and 28) in the reply filed on May 4, 2026 is acknowledged. The traversal is on the grounds that:
Applicant argues that Nakajima does not disclose or make obvious the claimed special technical feature, because the present invention chain extender improves toughness, no or reduced chain extender amount can cause inferior T-peel strength, an increase in chain extender amount can reduce lap shear; whereas Nakajima’s polythiol compounds are present in large quantities and are not subordinate chain extenders that contribute to toughness and lap shear.
This is not found persuasive for the following reasons. It is noted that the features upon which applicant relies (i.e., improved toughness, chain extender amount, specific T-peel strength and lap shear properties) are not recited in the claimed special technical feature. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, Nakajima discloses a polythiol curing agent of 1,2-ethanedithiol that is identical to the chain extender having at least two reactive groups disclosed by the present invention (Nakajima, [0025]; Spec as originally filed, [0022]). "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. Id. See MPEP 2112.01. Therefore, Nakajima’s polythiol curing agent of 1,2-ethanedithiol would behave and impart the same properties (such as toughness and lap shear properties) as the 1,2-ethanedithiol chain extender in the context of claim 1 of the present invention. Alternatively, Nakajima’s polythiol (mercaptan) curing agent can also reasonably be interpreted as the claim 1 room temperature curative, and then Nakajima’s alkanolamine compound can be interpreted as the claim 1 chain extender having two reactive groups. Nakajima’s alkanolamine includes ethanolamine that is identical to an example chain extender having at least two reactive groups disclosed by the present invention (Nakajima, [0032]; Spec as originally filed, [0022]).
Applicant argues that no serious search burden exists between Groups I, II, and III.
This is not persuasive for the following reasons. Independent Claim 1 of Group I requires an epoxy/elastomer adduct and either an amine-terminated or mercaptan-terminated elastomer, whereas independent claim 29 of Group II and independent claim 30 of Group III do not specifically require such features. Moreover, independent claim 30 of Group III requires first and second aluminum or polymeric material layers, whereas independent claim 1 of Group I and independent claim 29 of Group II do not specifically require such features. Additional terminology and classification areas must be independently searched and considered to address the aforementioned distinct and disparate claim limitations. Therefore, a serious search burden is considered to exist.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Claims 7-12 and 14 recite the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A. The specification as originally filed at [0082] discusses the term “about,” but remains silent regarding a quantitative definition for how it may or may not broaden the scope of numeric ranges. For the purpose of examination, limitations preceded by the term “about” are interpreted as including reasonable deviation/error associated with measurement as would be determined by one of ordinary skill in the art.
Claim 27 recites the term “substantially.” The term "substantially" is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). See MPEP 2173.05(b) III D. The specification as originally filed remains silent regarding a definition for the term “substantially.” For the purpose of examination, limitations preceded by the term “substantially” are interpreted as including reasonable deviation/error associated with measurement as would be determined by one of ordinary skill in the art.
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 10, 11, and 15 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 10 recites the relative term “about 2% to about 40%” that renders the claim indefinite. The term is not defined with a basis by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if this range is a weight%, volume%, molar%, or defined by some other basis. For the purposes of examination, the term is interpreted as instead reciting “about 2% to about 40% by weight.”
Claim 11 recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim). This may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “from about 0.2% to about 25% by weight,” and the claim also recites “or even from about 6% to about 10% by weight” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the claim is interpreted as instead reciting “from about 0.2% to about 25% by weight
Claim 15 recites the phrase "such as" that 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). For the purposes of examination, the claim is interpreted as instead reciting “dimercaptans, ,
Claim 15 is indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, the claim is interpreted as instead reciting “selected from the group consisting of 1-naphthylamine, …, oleylamine, , , and Alternatively, claim 15 could be amended to recite “selected from 1-naphthylamine, …, oleylamine, , ,
Correction is required.
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, 3-9, 15, 16, 27, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (US 2020/0248050 A1).
Regarding Claim 1, Nakajima teaches a two-component structural adhesive comprising a first component and a second component; where the first component comprises an epoxy resin composition (Nakajima, Abstract, [0008]-[0022]), and the second component comprises a polythiol (mercaptan) ambient temperature curing agent (room temperature curative), an alkanolamine compound such as ethanolamine (i.e., a chain extender having two reactive groups), and an amine curing catalyst (Nakajima, [0009], [0023]-[0042]). Nakajima teaches the epoxy resin composition may also contain a carboxyl-terminated butadiene-acrylonitrile copolymer modified epoxy-containing compound (i.e., an epoxy/elastomer adduct) (Nakajima, [0011]-[0013]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried the carboxyl-terminated butadiene-acrylonitrile copolymer modified epoxy-containing compound from the finite number of listed epoxy-containing compounds disclosed by Nakajima with a predictable and reasonable expectation of success (MPEP 2143). Nakajima teaches the second component also comprises a mercaptan-terminated polysulfide (i.e., a mercaptan-terminated elastomer) (Nakajima, [0025]-[0027]).
Regarding Claim 3, Nakajima teaches the epoxy resin composition contains a diacid adduct (Nakajima, [0010]-[0021]).
Regarding Claim 4, Nakajima teaches the adhesive exhibits particular T-peel strength (Nakajima, [0008], [0024], [0091]). Although Nakajima remains silent regarding measuring T-peel strength according to the claim, Nakajima discloses a two-component structural adhesive that appears substantially identical to the claimed invention as recited by claims 1, 3, 5-9, 15, and 16 that exhibits particular T-peel, lap shear, and wedge impact strength properties (Nakajima, [0008]-[0042], [0088]-[0091]; Specification as originally filed, [008]-[0023]). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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. Id. See MPEP 2112.01, I & II. In view of the foregoing, one of ordinary skill in the art would readily understand that if measured by the claimed method, Nakajima’s adhesive embodiments would render obvious the claimed T-peel strength range of the claim where any differences would be minor and obvious (MPEP 2143).
Regarding Claim 5, Nakajima teaches the adhesive exhibits lap shear strength of at least 10.0 MPa as tested by ASTM D1002-10 (Nakajima, [0088]). Nakajima’s lap shear range encompasses the claimed range of greater than 20 MPa, and therefore, renders obvious the claimed range (MPEP 2144.05). Although Nakajima does not measure lap shear according to the claimed method, Nakajima discloses a two-component structural adhesive that appears substantially identical to the claimed invention as recited by claims 1, 3, 4, 6-9, 15, and 16 that exhibits particular T-peel, lap shear, and wedge impact strength properties (Nakajima, [0008]-[0042], [0088]-[0091]; Specification as originally filed, [008]-[0023]). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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. Id. See MPEP 2112.01, I & II. In view of the foregoing, one of ordinary skill in the art would readily understand that if measured by the claimed method, Nakajima’s adhesive embodiments would render obvious the claimed lap shear strength range of the claim where any differences would be minor and obvious (MPEP 2143).
Regarding Claim 6, Nakajima teaches the adhesive exhibits wedge impact strength of at least 10 N/mm as tested by ISO 11343 (Nakajima, [0090]). Nakajima’s wedge impact range encompasses the claimed range of greater than 21 N/mm, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 7, Nakajima teaches the alkanolamine compound can include ethanolamine (i.e., a difunctional chain extender) that is included in an amount of 11% to 30% by weight (Nakajima, [0032]-[0035]). Nakajima’s alkanolamine content falls within the claimed range of about 0.5% to 30% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, Nakajima teaches the polythiol (multifunctional mercaptan) ambient temperature curing agent (room temperature curative) is included in an amount of 30% to 75% by weight (Nakajima, [0025]-[0029]). Nakajima’s polythiol content falls within the claimed range of about 0.5% to 90% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 9, Nakajima teaches the epoxy adduct is included in an amount of 0.5% to 50% by weight (Nakajima, [0022]). Nakajima’s epoxy adduct content overlaps the claimed range of about 1% to 60% by weight, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 15, Nakajima teaches the alkanolamine compound includes ethanolamine (i.e., a difunctional chain extender) (Nakajima, [0032]).
Regarding Claim 16, Nakajima teaches the adhesive comprises the polythiol ambient temperature curing agent (i.e., a mercaptan room temperature curative) (Nakajima, [0025]-[0028]).
Regarding Claim 27, Nakajima teaches the adhesive composition comprises the alkanolamine compound, where the alkanolamine may serve a dual purpose as a catalyst for curing at room temperature and may be serve as a react if the adhesive is subjected to an external heat source for an optional second-step of curing (Nakajima, [0033], [0043]). Nakajima teaches the inclusion of second-step curing catalysts is optional, and the adhesive may be substantially free of second-step curing catalyst material (Nakajima, [0043]-[0044], [0049]).
Regarding Claim 28, Nakajima teaches the adhesive forms a film having a thickness of 0.25 mm (Nakajima, [0113], [0127]). Nakajima’s adhesive film thickness falls within the claimed range of at least 0.2 mm, and therefore, satisfies the claimed range (MPEP 2131.03).
Claims 2, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (US 2020/0248050 A1) as applied to claims 1 and 4 above, and further in view of Kosal et al. (WO 2020/092360 A1).
Regarding Claim 2, Nakajima teaches the two-component structural adhesive as discussed above for claim 1. Nakajima teaches the adhesive can comprise other fillers (Nakajima, [0075]-[0076]).
Nakajima remains silent regarding a phenol-terminated urethane flexibilizer.
Kosal, however, teaches a structural adhesive comprising an epoxy/elastomer adduct, an epoxy/diacid adduct, an amine compound, a flexibilizer, a phenoxy resin, a curing agent, a curing accelerator, and fillers (Kosal, Abstract, [008]-[0012], [0026]). Kosal teaches the flexibilizer can be a phenol-terminated urethane based toughening agent (Kosal, [0044]-[0046]).
Since Nakajima and Kosal both disclose structural adhesives comprising epoxy/elastomer adducts, epoxy/diacid adducts, amine compounds, and curing agents, and Nakajima suggests including other fillers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Kosal’s phenol-terminated urethane flexibilizer into Nakajima’s adhesive to yield a composition that maintains impact strength at low temperatures and minimizes reduction of glass transition temperature as taught by Kosal (Kosal, [0045]).
Regarding Claim 12, modified Nakajima teaches the flexibilizer is included in an amount of at least 2% and less than 50% by weight (Kosal, [0046]). Modified Nakajima’s flexibilizer range falls within the claimed range of about 2% to about 50% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 14, Nakajima teaches the two-component structural adhesive as discussed above for claim 1. Nakajima teaches the adhesive can comprise other fillers (Nakajima, [0075]-[0076]).
Nakajima remains silent regarding a phenoxy dissolved in an epoxy resin in a range of about 0.5% to 10% by weight of the epoxy resin composition.
Kosal, however, teaches a structural adhesive comprising an epoxy/elastomer adduct, an epoxy/diacid adduct, an amine compound, a flexibilizer, a phenoxy resin, a curing agent, a curing accelerator, and fillers (Kosal, Abstract, [008]-[0012], [0026]). Kosal teaches the phenoxy resin is dissolved in an epoxy resin in a range of about 2% to 10% by weight of the adhesive (Kosal, [0011], [0048]). Kosal’s phenoxy resin range falls within the claimed range of about 0.5% to about 10% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Since Nakajima and Kosal both disclose structural adhesives comprising epoxy/elastomer adducts, epoxy/diacid adducts, amine compounds, and curing agents, and Nakajima suggests including other fillers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Kosal’s phenoxy resin into Nakajima’s adhesive to yield a composition that has enhanced production and adhesive properties as taught by Kosal (Kosal, [0048]).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (US 2020/0248050 A1) as applied to claims 1 and 4 above, and further in view of Lutz et al. (US 2009/0048370 A1).
Regarding Claim 10, Nakajima teaches the two-component structural adhesive as discussed above for claims 1 and 4. Nakajima teaches the adhesive comprises an alkanolamine such as ethanolamine, and can comprise other fillers (Nakajima, [0032], [0075]-[0076]).
Nakajima remains silent regarding an amine-terminated elastomer in an amount of about 2% to 40% by weight.
Lutz, however, teaches a two-component structural adhesive comprising an epoxy resin, a reactive toughener, a hardener component comprising an amine-terminated rubber (elastomer), and a curing catalyst (Lutz, Abstract, [0009]-[0014]). Lutz teaches the amine-terminated rubber is included in an amount of 4% to 40% by weight (Lutz, [0032]-[0041]). Lutz’s amine-terminated rubber range falls within the claimed range of about 2% to 40% by weight, and therefore, satisfies the claimed range (MPEP 2131.03).
Since Nakajima and Lutz both disclose structural adhesives comprising epoxy resins, amine compounds, and curing agents, and Nakajima suggests including other fillers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Lutz’s amine-terminated rubber into Nakajima’s adhesive to yield a composition that exhibits excellent impact resistance as taught by Lutz (Lutz, [0014]-[0015]).
Regarding Claim 11, modified Nakajima teaches the epoxy/diacid adduct is included in an amount of 0.5% to 50% by weight (Nakajima, [0020]-[0022]). Modified Nakajima’s epoxy/diacid adduct range overlaps the claimed range of about 0.2% to about 25% by weight, and therefore, renders obvious claimed range (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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