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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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 54 and 62 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 54 recites the limitation "the reinforcement component" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the limitation is referring to the “mineral reinforcement” or “fiber reinforcing components” of previous claims or referring to a new “reinforcement component’ that was not introduced in a previous claim. For the purpose of further examination “the reinforcement component” will be interpreted as the “mineral reinforcement” and/or the “fiber reinforcing components”.
The term “discrete elastomeric particles improve fracture toughness and impact resistance” in claim 62 is a relative term which renders the claim indefinite. The term “improve fracture toughness and impact resistance” is vague as it does not provide a standard for how or to what extend the fracture toughness and impact resistance are affected by the discrete elastomeric particles. For the purpose of further examination, the presence of the discrete elastomeric particles will be interpreted to read upon the limitations of claim 62.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 45-46, 49, 52, 55-60, and 63-66 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Czaplicki et al (US 20140113983 A1).
Regarding Claims 45, 55, and 65-66: Czaplicki teaches a structural adhesive material (abstract) comprising 10.4 wt% Butvar B90 (para 95 Example 7) where Butvar B-90 is Polyvinyl Butyral (para 86, table 1), 8.9 wt% Biostrength 150 (para 95 Example 7) a core/shell polymer (para 86, table 1) and 9.5 wt% Kane Ace MX 267 (para 95 Example 7) a core/shell polymer (para 86, table 1) reading on the limitation of at least about 10% by weight polymeric particle. Czaplicki further teaches the material comprising one or more calcium or silicate mineral fillers such as calcium carbonate sodium carbonate, mica, and wollastonite (para 59-60) and a polymeric additive comprising a carboxyl terminated butadiene acrylonitrile rubber/ epoxy adduct (para 49) in an amount of between 5% to 70 wt% more preferably between 10% and 50 wt% (para 50) overlapping the claimed range of 2% to 15% by weight. Czaplicki teaches the material comprising of curing agents, Amicure CG 1200 and Omicure U 52 (para 95 example 7, para 86 table 1).
The reference does not expressly teach a strain to failure of at least 2% and modulus at 80. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, a material comprising at least about 10% by weight polyvinyl butyral and a thermoplastic epoxy, wherein the ratio of polyvinyl butyral to thermoplastic epoxy is about 1 to 10 to about 1 to 4; and at least 2% but less than 15% by weight adducted carboxyl-terminated polymer (e.g., an adduct of a carboxyl-terminated polymer and an epoxide terminated molecule). Therefore, the claimed effects and physical properties, i.e. a strain to failure of at least 2% and modulus at 80, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
Regarding Claims 46 and 57: Czaplicki teaches the limitations of claim 45, as seen above. Czaplicki further teaches the material comprising of thermoplastic modifier in an amount of 3% to 40% by weight (para 28). Czaplicki teaches that thermoplastic epoxy resin is a suitable thermoplastic modifier (para 16). Czaplicki teaches an amount of 10.4% by weight of polyvinyl butyral (para 95 example 7) and 3% thermoplastic epoxy wherein polyvinyl butyral and thermoplastic epoxy are present in a ratio of about 3.5 to 1.
Regarding Claim 49: Czaplicki teaches the limitations of claim 45, as seen above. Czaplicki further teaches fillers comprising of ceramic, nylon or polyamide fibers (para 59).
Regarding Claim 52 and 58: Czaplicki teaches the limitations of claim 45, as seen above. Czaplicki further teaches an adhesive material that has an expanded volume of less than 400% (para 20).
Regarding Claims 56: Czaplicki teaches the limitations of claim 55, as seen above. Czaplicki further teaches the material comprising a polymeric carboxyl terminated butadiene acrylonitrile rubber/ epoxy adduct (para 49) in an amount of between 5% to 70% by weight (para 50) and powdered mineral type filler in an amount of between about 5% and 40% by weight (para 61). The compounds can be present in a ratio of about 1 to 15 parts polymeric carboxyl terminated butadiene acrylonitrile rubber/ epoxy adduct to about 1 to 8 parts powdered mineral type filler overlapping the claimed ratio of about 1 to 2 parts to about 3 to 7 parts.
Regarding Claims 59 and 60: Czaplicki teaches the limitations of claim 57, as seen above. Czaplicki further teaches preferred flexibilizers comprising epoxy terminated polyethers or polyurethane modified epoxies (para 36).
Regarding Claim 63: Czaplicki teaches the limitations of claim 57, as seen above. The reference does not expressly teach a modulus at room temperature of over 900 MPa. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, , the additive may allow both modulus and strain to failure to be increased simultaneously as opposed to a material without the additive. After curing, the material may exhibit a tensile modulus of at least about 500 MPa, more typically at least about 700 MPa, and even more typically at least about 900 MPa. After curing, the material may exhibit a tensile modulus of about 1500 MPa or less, more typically about 1200 MPa or less, and even about 1000 MPa or less (para 30). The additive for increasing modulus, strain to failure, and/or volumetric expansion may be any additive capable of achieving both while maintaining other desired properties of the activatable material. An exemplary additive is polyvinyl butyral (PVB). Polyvinyl butyral may be approximately at least about 5% by weight, more typically at least about 10% by weight, and even more typically at least about 15% by weight of the activatable material (para 31). Therefore, the claimed effects and physical properties, i.e. a modulus at room temperature of over 900 MPa, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
Regarding Claim 64: Czaplicki teaches the limitations of claim 57, as seen above. Czaplicki further teaches the cured adhesive material having a glass transition temperature above 80°C more preferably above 90°C (para 13).
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.
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.
Claim(s) 50-51 and 53-54 is/are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al (US 20140113983 A1) in view of Kassa et al (US 20130270731 A1).
Regarding Claims 50 and 54: Czaplicki teaches all of the limitations of claim 49, as seen above. However, Czaplicki is silent on a ratio of the mineral reinforcement to fiber reinforcing component from about 3 to 7 parts mineral reinforcement to about 1 to 2 parts fiber reinforcing component and the reinforcement component is a fiber with an aspect ratio of from about 15:1 to about 10:1.
Kassa teaches a material comprising of a ratio of a mineral reinforcement/calcium carbonate to fiber reinforcement/aramide pulp of 8.48 to 1.41/ about 6 to 1 (para 76). Kassa and Czaplicki are analogous are because they are directed to the same field of endeavor namely structural foam materials for use in automotive vehicles. It would have been obvious for one of ordinary skill in the art before the filling date of the instant application to modify the material of Czaplicki with the mineral to fiber reinforcement ratio of Kassa. Czaplicki discloses that the use of fillers can impart properties such as strength, dimensional stability, and impact resistance to the adhesive they can however reduce elongation properties (para 58). Kassa discloses that in addition to performing the normal functions of a filler, silicate minerals and mica in particular improved the impact resistance of the cured expandable material (para 70). Kassa further discloses that the fillers or other components of the material may be thixotropic for assisting in controlling flow of the material as well as properties such as tensile, compressive or shear strength (para 71). The filler reinforcements provide different properties to the final foam material product and changing the ratio of the fillers would result in the creation of new products. One of ordinary skill in the art would be motivated to modify the ratio of the fillers to obtain different products with different properties.
Kassa teaches a self-support filler comprising of wollastonite wherein the wollastonite has a needle-like structure/fiber with an aspect ratio of 3:1 to 20:1 (para 73) which overlaps the aspect ratio of the claims. It would have been obvious for one of ordinary skill in the art before the filling date of the instant application to modify the material of Czaplicki with the fiber and aspect ratio of Kassa. A high aspect ratio in fibers increases the reinforcement capability. One of ordinary skill in the art would be motivated to use a fiber with an aspect ratio of about 15:1 to 10:1 to increase the strength and stability of the foam material.
Regarding Claims 51 and 53: Modified Czaplicki teaches the limitation of claim 50, as seen above. Czaplicki further teaches an adhesive foam with a blowing agent and an expanded volume of less than 400% (para 20).
Claims 61 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Czaplicki et al (US 20140113983 A1) in view of Wilford (US 5521274 A).
Regarding Claims 61 and 62: Czaplicki teaches all of the limitations of Claim 45 as seen above. However, Czaplicki is silent on an adduct that phase separates during cure to produce discrete elastomeric particles.
Wilford teaches a polysulfide-modified epoxy/elastomer adduct that phase separates, during cure, into discrete polysulfide rubber/elastomer particles (abstract). Wilford and Czaplicki are analogous are because they are directed to the same field of endeavor namely cured adhesive compositions comprising modified epoxy resins. It would have been obvious for one of ordinary skill in the art before the filling date of the instant application to modify the material of Czaplicki with the polysulfide-epoxy adduct of Wilford. Wilford discloses that the phase separation increases lap shear strength without significantly decreasing the Tg of the epoxy resin (Col. 1, Lines 31-39). One of ordinary skill would have been motivated to modify the material of Czaplicki to increase the toughness of the final adhesive foam product.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.B./
Examiner, Art Unit 1767
/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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