DETAILED ACTION
Pending Claims
Claims 1-7, 9-11, 13, 14, 16, 21, 22, and 28-32 are 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 .
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 Rejections - 35 USC § 112, 2nd paragraph (b)
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 1-7, 9-11, 13, 14, 16, 21, 22, and 28-32 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.
Regarding claims 1-7, 9-11, 13, 14, 16, 21, 22, and 28-32, the material (composition) of claim 1 features: iii) from about 0.05 to about 20 weight percent of an epoxy/diacid adduct. The basis of the weight percentage is unclear. Specifically, it is unclear if this weight percentage is based on the overall material; or if this weight percentage is based on the total of the recited components i), ii), iii), and iv). Claims 2-7, 9-11, 13, 14, 16, 21, 22, and 28-32 are rejected because they are dependent from claim 1. For the purpose of the prior art search, the claimed amount has been interpreted as based on the overall material.
Further regarding claim 10, similar to claim 1, the basis of the weight percentage is unclear. For the purpose of the prior art search, the claimed amount has been interpreted as based on the overall material.
Further regarding claim 7, similar to claim 1, the basis of the weight percentage is unclear. For the purpose of the prior art search, the claimed amount has been interpreted as based on the overall material.
Further regarding claim 9, similar to claim 1, the basis of the weight percentage is unclear. For the purpose of the prior art search, the claimed amount has been interpreted as based on the overall material.
Further regarding claim 32, the phrase "for example" (see “e.g.”) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding claim 32, claim 32 contains the trademark/trade name “Kevlar”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe polyamide fibers and, accordingly, the identification/description is indefinite.
Claim Objections
Claims 7, 9, 10, and 32 are objected to because of the following informalities:
For improved clarity, claim (7) should state: wherein at least one of the at least two different epoxy elastomer adducts is present in an amount of at least about 5% but less than about 50% by weight of the material or of the material. Appropriate correction is required.
For improved clarity, claim (9) should state: wherein the epoxy/diacid adduct is present in an amount of from about 0.2% to about 15% by weight of the material or of the material. Appropriate correction is required.
For improved clarity, claim (10) should state: wherein the amine reaction product is present in an amount of from about 0.01% to about 15% by weight of the material or of the material. Appropriate correction is required.
For improved clarity, claim (32) should state: including one or more reinforcement components selected from the group consisting of silica, diatomaceous earth, glass, clay , glass [[or]] bubbles, carbon fibers, [[or]] ceramic fibers, nylon fibers, aramid fibers, [[or]] polyamide fibers and montmorillonite
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 1-7, 9-11, 13, 14, 16, 21, 22, and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Devanne et al. (US 2017/0240774 A1) in view of Czaplicki (US 2011/0098382 A1), Desai et al. (US 2016/0083633 A1), and Sturgill et al. (US 2010/0272908 A1).
Regarding claims 1, 7, 9, 13, 14, 28, and 32, Devanne et al. disclose: (1) a material (Abstract; paragraphs 0058-0115; Example 2 in paragraphs 0147-0148) comprising: i) an epoxy/elastomer adduct (Example 2 in paragraphs 0147-0148: “CTBN modified epoxy resin”; see also paragraphs 0059-0062); ii) a phenoxy resin (Example 2 in paragraphs 0147-0148: “phenoxy resin”; see also paragraphs 0063-0064); iii) additives (Example 2 in paragraphs 0147-0148; see also paragraphs 0065-0115); and iv) a silane modified epoxy resin (Example 2 in paragraphs 0147-0148: “silane modified epoxy resin”);
(7) wherein the epoxy elastomer adduct is present in an amount of at least about 5% but less than about 50% by weight of the material or at least about 15% but less than about 30% by weight of the material (Example 2 in paragraphs 0147-0148: “6%”; see also paragraph 0060);
(13) wherein the silane-modified epoxy resin is present in the range of about 8% to 18% by weight of the material (Example 2 in paragraphs 0147-0148: “16%”);
(14) including a curing agent (Example 2 in paragraphs 0147-0148: “dicyandiamide”; see also paragraphs 0072-0074);
(28) wherein the material includes a curing agent in the range of about 2% by weight to about 7% by weight of the material (Example 2 in paragraphs 0147-0148: “5%”; see also paragraph 0073);
(32) including one or more reinforcement components selected from the group consisting of silica, diatomaceous earth, glass, clay, glass beads, glass bubbles, carbon fibers, ceramic fibers, nylon fibers, aramid fibers, polyamide fibers, pyrophyllite, sauconite, saponite, nontronite, wollastonite, and montmorillonite (Example 2 in paragraphs 0147-0148: “amorphous silica”; see also paragraphs 0106-0110).
The exemplary embodiment of Devanne et al. is formulated with CTBN modified epoxy resin as a singular epoxy/elastomer adduct (see Example 2 in paragraphs 0147-0148). Accordingly, the exemplary embodiment fails to disclose: (1) i) at least two different epoxy/elastomer adducts. However, the general teachings of Devanne et al. disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts,” (see paragraph 0060).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Devanne et al. with at least two different epoxy/elastomer adducts because: (a) the exemplary embodiment of Devanne et al. is formulated with CTBN modified epoxy resin as a singular epoxy/elastomer adduct; and (b) the general teachings of Devanne et al. disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts.”
The exemplary embodiment of Devanne et al. is formulated with a non-dissolved phenoxy resin (see Example 2 in paragraphs 0147-0148). Accordingly, the exemplary embodiment fails to disclose: (1) ii) a phenoxy resin dissolved in a bisphenol F epoxy. However, the general teachings of Devanne et al. disclose that “in order to enhance the production of the structural adhesive the phenoxy resin may be supplied to the other components as a solution,” and “while any solvent may be used it is particularly preferred to use a liquid epoxy resin as the solvent as this can also contribute to the adhesive properties upon activation,” (see paragraph 0064). Furthermore, Czaplicki discloses a similar epoxy-based adhesive (see Abstract) and demonstrates that bisphenol-F epoxy resin is recognized in the art as a suitable liquid epoxy resin solvent for a phenoxy resin solution used in this type of epoxy-based adhesive (see paragraphs 0019 & 0064). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the phenoxy resin in the exemplary embodiment of Devanne et al. dissolved in a bisphenol F epoxy because: (a) the exemplary embodiment of Devanne et al. is formulated with a non-dissolved phenoxy resin; (b) the general teachings of Devanne et al. disclose that “in order to enhance the production of the structural adhesive the phenoxy resin may be supplied to the other components as a solution,” and “while any solvent may be used it is particularly preferred to use a liquid epoxy resin as the solvent as this can also contribute to the adhesive properties upon activation;” (c) Czaplicki discloses a similar epoxy-based adhesive and demonstrates that bisphenol-F epoxy resin is recognized in the art as a suitable liquid epoxy resin solvent for a phenoxy resin solution used in this type of epoxy-based adhesive; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
The epoxy-based adhesive of Devanne et al. is formulated with a core/shell impact modifier (see Example 2 in paragraphs 0147-0148; see also paragraphs 0065-0071), as well as other optional additives (see Example 2 in paragraphs 0147-0148; see also paragraphs 0079-0115). They fail to disclose: (1) iii) from about 0.05 to about 20 weight percent of an epoxy/diacid adduct based on the overall material; (9) wherein the epoxy/diacid adduct is present in an amount of from about 0.2% to about 15% by weight of the material or from about 2% to about 5% by weight of the material.
Czaplicki discloses a similar epoxy-based adhesive formulated with a core/shell impact modifier (see Abstract; paragraphs 0020-0025), as well as other optional additives (see paragraphs 0049-0052). Czaplicki demonstrates that other impact modifiers are recognized in the art as suitable additives for this type of epoxy-based adhesive (see paragraph 0050). Desai et al. also disclose a similar epoxy-based adhesive formulated with a core/shell impact modifier (see paragraphs 0067 & 0125-0126; see also Examples 2, 5-8 & 10 in Table 11). Desai et al. demonstrate that the instantly claimed epoxy/diacid adduct (see paragraphs 0119-0124; see also Examples 2, 5-8 & 10 in Table 11 & paragraph 0176) and relative amount thereof (see paragraph 0124; see also Examples 2, 5-8 & 10 in Table 11) is recognized in the art as a suitable additive (and amount thereof) for this type of epoxy-based adhesive. Furthermore, Sturgill et al. demonstrate that these epoxy/diacid adducts are recognized in the art as impact modifiers/toughening agents for epoxy-based adhesive formulations (see paragraphs 0034 & 0039). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the epoxy-based adhesive of Devanne et al. with the instantly claimed epoxy/diacid adduct (and amount thereof) because: (a) the epoxy-based adhesive of Devanne et al. is formulated with a core/shell impact modifier, as well as other optional additives; (b) Czaplicki discloses a similar epoxy-based adhesive formulated with a core/shell impact modifier, as well as other optional additives; (c) Czaplicki demonstrates that other impact modifiers are recognized in the art as suitable additives for this type of epoxy-based adhesive; (d) Desai et al. also disclose a similar epoxy-based adhesive formulated with a core/shell impact modifier; (e) Desai et al. demonstrate that the instantly claimed epoxy/diacid adduct and relative amount thereof is recognized in the art as a suitable additive (and amount thereof) for this type of epoxy-based adhesive; (f) Sturgill et al. further demonstrate that these epoxy/diacid adducts are recognized in the art as impact modifiers/toughening agents for epoxy-based adhesive formulations; and (g) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 2-4, 21, 22, and 29-31, the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} are as set forth above and incorporated herein. They fail to disclose the following future properties:
(2) wherein the material, when cured, has a T-peel of at least 14; (4) wherein the material, when cured, has a glass transition temperature as defined by ASTM D7028-07 of at least 80 °C;
(3) wherein the material, when cured, has a strain to failure of greater than 8%; (21) wherein the material, when cured, has a strain to failure of at least 16%;
(22) wherein the material, when cured, has a modulus of at least 900 MPa;
(30) wherein the material when cured exhibits a lap shear strength of at least about 20 MPa;
(31) wherein the material exhibits a T-Peel strength when cured from about 6 N/mm to about 18 N/mm; and
(29) wherein the material when cured exhibits a tensile modulus from about 900 MPa to about 1700 MPa.
However, the skilled artisan would have expected the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} to obviously embrace embodiments capable of yielding a cured product having these instantly claimed properties because the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} obviously satisfies all of the material/chemical limitations (and relative amounts thereof) of the instantly claimed material.
Therefore, the skilled artisan would have expected the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} to obviously embrace embodiments capable of yielding a cured product having the instantly claimed properties because: the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} obviously satisfies all of the material/chemical limitations (and relative amounts thereof) of the instantly claimed material.
Regarding claims 5 and 10, the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} are as set forth above and incorporated herein. The hardener of Devanne et al., including their exemplary dicyandiamide, can be provided with one or more accelerators, such as urea accelerators and imidazole accelerators (see Example 2 in paragraphs 0147-0148; see also paragraph 0074). They fail to disclose: (5) wherein the material includes an amine reaction product; (10) wherein the amine reaction product is present in an amount of from about 0.01% to about 15% by weight of the material or from about 0.5% to about 5% by weight of the material.
The supporting teachings of Desai et al. demonstrate that amine reaction products are recognized in the art as suitable additives for epoxy-based adhesive formulations (see: “Ajicure MT-25” and “Ajicure PN-40” in Table 11 & paragraphs 0186-0187; see also paragraphs 0098-0111), including those formulated with a dicyandiamide hardener and a urea accelerator (see Table 11; see also paragraph 0096). These include amounts of approximately 0.7% and approximately 2% (see Table 11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material resulting from the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} with the instantly claimed amine reaction product (and amount thereof) because: (a) the hardener of Devanne et al., including their exemplary dicyandiamide, can be provided with one or more accelerators, such as urea accelerators and imidazole accelerators; (b) the supporting teachings of Desai et al. demonstrate that amine reaction products are recognized in the art as suitable additives for epoxy-based adhesive formulations, including those formulated with a dicyandiamide hardener and a urea accelerator; (c) the amine reaction products of Desai et al. are provided in amounts of approximately 0.7% and approximately 2%; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 11, the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} are as set forth above and incorporated herein. They fail to disclose: (11) wherein the amine reaction product is present in a sufficient amount so that the material, when cured, displays a T-Peel strength of about 6 N/mm to about 30 N/mm. However, the skilled artisan would have expected the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} to obviously embrace embodiments capable of yielding a cured product having the instantly claimed property because the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} obviously satisfies all of the material/chemical limitations (and relative amounts thereof) of the instantly claimed material.
Therefore, the skilled artisan would have expected the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} to obviously embrace embodiments capable of yielding a cured product having the instantly claimed T-peel strength because: the material resulting from the combined {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} obviously satisfies all of the material/chemical limitations (and relative amounts thereof) of the instantly claimed material.
Regarding claim 6, the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} are as set forth above and incorporated herein. Devanne et al. fail disclose an embodiment: (6) wherein one of the at least two different epoxy/elastomer adducts comprises a polydisulfide polymer. Rather, the exemplary embodiment of Devanne et al. is formulated with CTBN modified epoxy resin as a singular epoxy/elastomer adduct (see Example 2 in paragraphs 0147-0148). The general teachings of Devanne et al. disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts,” (see paragraph 0060). The adducts include those derived from a polysulfide elastomer (see paragraph 0061), which obviously embraces the instantly claimed polydisulfide. Furthermore, they disclose that epoxidized polysulfides are advantageous in the epoxy-based adhesive with respect to environmental exposures to humidity and salt water (see paragraph 0113).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material resulting from the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} with an epoxy/elastomer adduct comprising a polydisulfide polymer because: (a) the exemplary embodiment of Devanne et al. is formulated with CTBN modified epoxy resin as a singular epoxy/elastomer adduct; (b) the general teachings of Devanne et al. disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts” (c) the adducts of Devanne et al. include those derived from a polysulfide elastomer, which obviously embraces the instantly claimed polydisulfide; and (d) Devanne et al. further disclose that epoxidized polysulfides are advantageous in the epoxy-based adhesive with respect to environmental exposures to humidity and salt water.
Regarding claim 16, the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (16) wherein an epoxy component of the epoxy/diacid adduct includes bisphenol-F diglycidyl ether (DGEBF) epoxy. Rather, the exemplary adduct used in the supporting teachings of Desai et al. is formed from a bisphenol-A diglycidyl ether (see Examples 2, 5-8 & 10 in Table 11 & paragraph 0176). However, the general teachings of Desai et al. disclose that the adduct can also be derived from a bisphenol-F diglycidyl ether (see paragraphs 0119-0124: “bis(2-hydroxyphenyl)-methane” in paragraph 0120).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material resulting from the combined teachings of {Devanne et al., Czaplicki, Desai et al. and Sturgill et al.} with an epoxy/diacid adduct includes bisphenol-F diglycidyl ether (DGEBF) epoxy because: (a) the exemplary adduct used in the supporting teachings of Desai et al. is formed from a bisphenol-A diglycidyl ether; and (b) the general teachings of Desai et al. disclose that the adduct can also be derived from a bisphenol-F diglycidyl ether.
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 1-7, 9, 11, 13, 14, 21, 22, and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,187,842 in view of Devanne et al. (US 2017/0240774 A1) and of Czaplicki (US 2011/0098382 A1).
Claims 10 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,187,842 in view of Devanne et al. (US 2017/0240774 A1), Czaplicki (US 2011/0098382 A1), and Desai et al. (US 2016/0083633 A1).
Regarding claims 1, 3, 5, 9, 14, 21, 22, and 29, the patented claim is drawn to a curable material that satisfies the components iii) & iv) of instant claim (1), the strain to failure of instant claim (3), the amine reaction product of instant claim (5), the curing agent of instant claim (14), the modulus of instant claim (22), and the tensile modulus of instant claim (29). The patented claim also obviously satisfies amount of instant claim (9) and the strain to failure of claim (21) because it has been found that 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.
The patented claim features an epoxy/elastomer adduct. It fails to disclose: (1) i) at least two different epoxy/elastomer adducts. However, the teachings of Devanne et al. disclose a similar epoxy-based adhesive, including an exemplary embodiment formulated with CTBN modified epoxy resin as a singular epoxy/elastomer adduct (see Example 2 in paragraphs 0147-0148). The general teachings of Devanne et al. further disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts,” (see paragraph 0060). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
The patented claim features a phenoxy resin dissolved in an additional epoxy resin. It fails to disclose: (1) ii) a phenoxy resin dissolved in a bisphenol F epoxy. However, the teachings of Czaplicki disclose a similar epoxy-based adhesive (see Abstract) and demonstrate that bisphenol-F epoxy resin is recognized in the art as a suitable liquid epoxy resin solvent for a phenoxy resin solution used in this type of epoxy-based adhesive (see paragraphs 0019 & 0064). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claims 2, 4, 11, 30, and 31, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to explicitly disclose the instant claimed properties. However, the skilled artisan would have expected the material resulting from the combined {patented claim 12, Devanne et al. and Czaplicki } to obviously embrace embodiments capable of yielding a cured product having these instantly claimed properties because the material resulting from the combined {patented claim 12, Devanne et al. and Czaplicki } obviously satisfies all of the material/chemical limitations (and relative amounts thereof) of the instantly claimed material.
Regarding claim 6, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose an epoxy/elastomer adduct comprising a polydisulfide polymer. However, the general teachings of Devanne et al. disclose that “the epoxy/elastomer adduct may be a combination of two or more particular adducts,” (see paragraph 0060). The adducts include those derived from polysulfide elastomer (see paragraph 0061), which obviously embraces the instantly claimed polydisulfide. Furthermore, they disclose that epoxidized polysulfides are advantageous in the epoxy-based adhesive with respect to environmental exposures to humidity and salt water (see paragraph 0113). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claim 7, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed amount of epoxy/elastomer adduct. However, the exemplary embodiment (see paragraphs 0147-0148) and the general teachings of Devanne et al. (see paragraph 0060) demonstrate that the instantly claimed amounts are recognized in the art as suitable amounts of epoxy/elastomer adduct in this type of epoxy-based adhesive.
Regarding claim 13, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed amount of silane-modified epoxy resin. However, the exemplary embodiment (see paragraphs 0147-0148) of Devanne et al. demonstrates that the instantly claimed amounts are recognized in the art as suitable amounts of silane-modified epoxy resin in this type of epoxy-based adhesive.
Regarding claim 28, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed amount of curing agent. However, the exemplary embodiment (see paragraphs 0147-0148) and the general teachings of Devanne et al. (see paragraph 0073) demonstrate that the instantly claimed amounts are recognized in the art as suitable amounts of curing agent in this type of epoxy-based adhesive.
Regarding claim 32, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed reinforcement components. However, the exemplary embodiment (see paragraphs 0147-0148) and the general teachings of Devanne et al. (see paragraph 0108) demonstrate that the instantly claimed reinforcement components are recognized in the art as suitable additives for this type of epoxy-based adhesive. In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claim 10, the combined teachings of {patented claim 12, Devanne et al. and Czaplicki} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed amount of amine reaction product. Desai et al. also disclose a similar epoxy-based adhesive formulated with an amine reaction product (see Examples in Table 11). These include amounts of approximately 0.7% and approximately 2% (see Table 11). This teaching demonstrates that the instantly clamed amount of amine reaction product is recognized in the art as a suitable amount of amine reaction product in this type of epoxy-based adhesive.
Regarding claim 16, the combined teachings of {patented claim 12, Devanne et al., Czaplicki and Desai et al.} are as set forth above and incorporated herein. The patented claim fails to disclose the instantly claimed epoxy/diacid adduct including bisphenol-F diglycidyl ether (DGEBF) epoxy. The exemplary adduct used in the supporting teachings of Desai et al. is formed from a bisphenol-A diglycidyl ether (see Examples 2, 5-8 & 10 in Table 11 & paragraph 0176). However, the general teachings of Desai et al. disclose that the adduct can also be derived from a bisphenol-F diglycidyl ether (see paragraphs 0119-0124: “bis(2-hydroxyphenyl)-methane” in paragraph 0120). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
December 6, 2025