Detailed Office Action
The communication dated 6/16/2026 has been entered and fully considered. Claim 2-3, 5-6, 11-20, 26-29, and 39-124 are cancelled. Claims 22 and 35-38 are withdrawn from examination. Claims 1, 4, 7-10, 21-25, and 30-38 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 without traverse of Species A1 and B1 in the reply filed on 6/16/2026 is acknowledged. Claims 22 and 35-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species A2 and B2.
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, 4, 9-10, 21, 23-25, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over MUENZ (US-2009/0176903), hereinafter MUENZ. Note that the italicized text below are the instant claims.
Regarding claims 1 and 4, MUENZ discloses An expandable adhesive composition {[abstract]} comprising:
(A) at least one liquid epoxy resin {[0073] note epoxy resin could be in the form of liquid};
(B) at least one blowing agent {[0039]};
(C) at least one hardener {[0038] note curing agent is the hardener};
(D) at least one semi-crystalline thermoplastic in particulate form {[0021], [0090]};
(E) at least one thermally-conductive filler (claim 4) {[0087] note aluminum powder, [0032] note metal fiber}.
The Examiner notes that MUENZ, however, is explicitly silent on the thermoplastic powder being semi-crystalline, but discloses that polyester that is also a thermoplastic is semi-crystalline or partially crystalline {[0021]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have chosen the thermoplastic powder of MUENZ to be also semi-crystalline, since MUENZ teaches that another thermoplastic component of the mixture can be semi-crystalline, therefore the presence of a semi-crystalline thermoplastic polymer powder is permissible and conformable to the mixture.
Regarding claims 9-10, modified MUENZ discloses wherein the epoxy resin comprises an epoxy resin selected from those formed by reaction of epichlorohydrin with bisphenols, selected from bisphenol A, bisphenol AP, bisphenol AF, bisphenol BP, bisphenol B, bisphenol C, bisphenol E, bisphenol F, bisphenol G, bisphenol M, bisphenol S, bisphenol P, bisphenol Z (claim 9), wherein the epoxy resin comprises an epoxy resin selected from epoxy resins resulting from reaction of epichlorohydrin with bisphenol A {[0073]}.
Regarding claims 21 and 23-24, modified MUENZ discloses wherein the blowing agent is selected from expandable graphite, and hydrocarbon gases encapsulated in a polymeric shell (claim 21), wherein the blowing agent is a hydrocarbon gas encapsulated in poly(acrylonitriles) and/or acrylate copolymers (claim 23), wherein the blowing agent is selected from a propane, butane or pentane, encapsulated in poly(acrylonitriles) and/or acrylate copolymers (claim 24) {[0081] note that lower alkyl hydrocarbon reads on propane, butane and pentane}.
Regarding claim 25, modified MUENZ discloses wherein the blowing agent is used at 0.25-2.35 wt%, based on the total weight of the adhesive composition {[0039]}.
The Examiner notes that the disclosed range encompasses the claimed range. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range. Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30. Also, see MPEP 2144.05 (I).
Regarding claims 30-32, modified MUENZ discloses wherein the hardener is a latent hardener capable of being activated on exposure to heat (claim 30), wherein the hardener is selected from dicyandiamide, hydrazides and anhydride hardeners (claim 31), wherein the hardener is dicyandiamide (claim 32) {[0028], [0074], [0078]}.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over MUENZ as applied to claim 1 above, and further in view of LIN (US-2018/0037708), hereinafter LIN.
Regarding claims 7-8, modified MUENZ discloses all the limitations of claim 1 as discussed above. MUENZ, however, is silent on the viscosity of the liquid epoxy resin.
In the same field of endeavor that is related to expandable epoxy resin composition, LIN discloses wherein the at least one liquid epoxy resin comprises epoxy resins that are flowable at 250C, having a viscosity at 250C of less than 1,500,000 mPas, when measured according to ASTM D-445 (claim 7), wherein the at least one epoxy resin comprises an epoxy resin having a viscosity at 250C of less than 50,000 mPa.s, when measured according to ASTM D-445 {note that as shown above MUENZ discloses liquid epoxy thus flowable at 25 °C, [0034] note that the whole composition viscosity is disclosed, thus epoxy resin is even lower}.
Alternatively, LIN discloses that at lower viscosity dripping can more easily occur and the shape cannot be maintained and at higher viscosity the workability of the material is greatly reduced {[0034]}. Thus, LIN recognizes the viscosity of the epoxy resin as a result-effective variable.
It is well established that determination of optimum values of result-effective variables (in this case the effect of viscosity on handling of the adhesive) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}. At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized the viscosity which is a result-effective variable through routine experimentation to have determined the optimum viscosity for handling the adhesive that in certain cases will meet the claimed limitations.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over MUENZ as applied to claim 1 above, and further in view of KATOU (US-2018/0215842), hereinafter KATOU.
Regarding claim 34, modified MUENZ discloses all the limitations of claim 1 as discussed above. MUENZ, however, is silent on the list of alternative hardeners recited in this claim.
In the same field of endeavor that is related to adhesive composition, KATOU discloses wherein the hardener is selected from phthalic anhydride, tetrahydrophthalic anhydride, hexahydrophthalic anhydride, methyltetrahydrophthalic anhydride, methylhexahydrophthalic anhydride, methyl-5-norbornene-2,3-dicarboxylic anhydride, alkenylsuccinic anhydrides, and trimellitic anhydride {[0140]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the hardener of modified MUENZ with that disclosed by KATOU, since it has been held that simple substitution of one known element for another to obtain predictable results is within the skill of one of ordinary skill in the art {see MPEP 2143 (I)(B)}. Predictable results will be obtained since both hardener are used to cure epoxy resin.
Furthermore, and as disclosed by KATOU, the advantage of this hardener is being liquid and readily mixed with liquid epoxy {[0140]}.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over MUENZ as applied to claim 1 above, and further in view of LIN.
Regarding claim 34, modified MUENZ discloses all the limitations of claim 1 as discussed above. MUENZ, however, is silent on the list of alternative hardeners recited in this claim.
In the same field of endeavor that is related to expandable epoxy resin composition, LIN discloses wherein the hardener is selected from adipic dihydrazide, sebacic dihydrazide, dodecanedihydrazide, isophthalic dihydrazide, and salicyclic dihydrazide {[0041]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the hardener of modified MUENZ with that disclosed by LIN, since it has been held that simple substitution of one known element for another to obtain predictable results is within the skill of one of ordinary skill in the art {see MPEP 2143 (I)(B)}. Predictable results will be obtained since both hardener are used to cure epoxy resin.
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, 4, 7-10, 21, 23-25, and 30-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7-10, 21, 23-25, and 30-34 of copending Application No. 18/877,362 (reference application), hereinafter APPL362. Although the claims at issue are not identical, they are not patentably distinct from each other because instant independent claims 1 and 4 are claimed by claims 1 and 4 of APPL362 with the exception of the limitation of “semi-crystalline”.
The Examiner submits that there are very limited options for the thermoplastic polymer: (1) amorphous, (2) fully crystalline, and (3) semi-crystalline. It would have been obvious to one of ordinary skill in the art to have tried these options and have chosen option (3) {see obvious to try in MPEP 2143 (I)(E)}.
Instant claims 7, 8, 9, 10, 23, 24, 25, 30, 31, 32, 33, and 34 are claimed by claims 7, 8, 9, 10, 23, 24, 25, 30, 31, 32, 33, and 34 of APPL362, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
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