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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (Claims 1-6) in the reply filed on 5/12/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claims 1 to 5 in the preamble state “an adhesive for a medical device”, which is an intended use and does not set forth any additional limitations upon the adhesive described in the claims. As such, this intended use will not be afforded patentable weight.
The examiner also notes that as written, the phenol resin of claim 1 does not preclude the use of a phenol resin which has been functionalized with other groups, such as epoxides.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yohei (WO 2014103552) in view of Lutz (US 20080251203, US Application reference #3 from IDS dated 12/12/2024).
Regarding Claims 1 and 4,
Yohei teaches an epoxy composition useful as an adhesive (Paragraph 1) which is comprised of an epoxy resin that may be a mixture of two or more resins which include bisphenol A and bisphenol F epoxy resins (Paragraph 13), an imidazole curing agent (Paragraph 15) which includes 2-ethyl-4-methylimidazole (Paragraph 17) which is listed in the applicant’s specification to meet the melting point requirement, a phenolic resin such as phenol novolac which is liquid at 20 °C (Paragraph 22) and inorganic filler (Paragraph 8). Yohei further teaches that the inorganic filler includes silica which is preferably of an average diameter of 0.01 to 50 mm (Paragraph 19), which contains the range of the instant claim. Yohei also teaches that the particle size affects the ability to uniformly distribute the particles in the resin mixture and the thermal stress of the cured composition (Paragraph 19), affording the ordinarily skilled artisan motivation to stay within the stated range. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
While Yohei teaches the use of inorganic fillers, Yohei does not teach that the silica is fumed silica or the use of talc. Lutz teaches an epoxy resin composition used as an adhesive (Abstract) which preferably contains talc and fumed silica as filler (Paragraph 52), which Lutz teaches can be used to modify the rheology of the composition and to reduce cost per weight (Paragraph 52). One of ordinary skill in the art would recognize that the rheology of the uncured composition would have effects on the application of the adhesive and the ability to adhere two articles together and would be motivated to adjust the viscosity of the composition to afford the desired properties to the uncured composition. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the fillers of Lutz for use in the composition taught by Yohei to achieve the predictable result of a composition with modified rheological properties before curing with a reasonable expectation of success.
With regard to the amounts of the components, Yohei teaches that the amount of imidazole curing agent (equivalent to component b) is 5 to 35 parts by weight (Paragraph 23), the phenolic resin (component c) is preferably from 0.3 to 15 parts by weight (Paragraph 29), and that the inorganic fillers be present in amounts of 20 to 65 parts by weight relative to 100 parts epoxy resin (Paragraph 8). These ranges overlap with the ranges of the instant claims. While Yohei does not teach a specific ratio between different inorganic fillers, one of ordinary skill in the art would adjust the amounts of the fillers to meet the desired physical properties of the cured and uncured compositions as described above and it would have been obvious prior to the effective filing date of the instant application to have used the fillers in any ratio for this reason. It further would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 2,
Yohei teaches that the epoxy resin composition can contain two or more different resins (Paragraph 13) and that such resins include alicyclic and alcohol ether epoxy resins such as 1,4-cyclohexanedimethanol diglycidyl ether (Paragraph 13).
Regarding Claim 3,
Yohei teaches that the composition can further contain a silane coupling agent (Paragraph 30).
Regarding Claim 5,
Yohei teaches that the phenolic resin (equivalent to component C of the instant claim) is preferred to be used in an amount of 0.3 to 15 parts by weight (Paragraph 20) and that the imidazole curing agent (equivalent to component B of the instant claim) is used in amounts of 5 to 35 parts by weight (Paragraph 23). These amounts would allow for a ratio between the two that overlaps with the range of the instant claim. Yohei teaches that the phenolic resin can be used to suppress thickening during storage and to slow the curing rate of the composition (Paragraph 22). One of ordinary skill in the art would also recognize that the amount of curing agent would affect the rate at which the composition cures and combined with Yohei’s teaching that the phenolic resin slows curing rates would adjust the amounts of the two components relative to one another to achieve the desired curing rate. As such, it would have been obvious prior to the effective filing date of the instant application to have selected any appropriate ratio of the phenolic resin and imidazole curing agent to achieve the desired cure rate and it would further have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 6,
Yohei teaches that composition is cured (Paragraph 36) and is useful as an adhesive (Paragraph 1). While Yohei does not teach that the composition is used as an adhesive for a medical device, the language of the instant claim does not impart any further limitation on the adhesive composition by stating it is for a medical device and as such is considered to be intended use and not given patentable weight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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