DETAILED ACTION
Summary
Applicant’s amendment dated 18 February 2026 is acknowledged. Claims 10-20 are pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejections for Claims 10-15 are maintained as the arguments are not persuasive and new grounds of rejection are necessitated by new claims 16-20. For this reason, this office action is properly made final.
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 .
Claim Rejections - 35 USC § 103
Claims 10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over INOUBLI (US-20170369696-A1).
Regarding Claim 10, INOUBLI teaches a multistage polymer in the form of polymeric particles for use in composites comprising thermosetting resins (Abstract). INOUBLI teaches that its thermoset resin may include epoxy resins ([0164]) and that its epoxy resin composition comprises between 1-50 wt% of the multistage polymer particles ([0168]) which satisfies the requirement that the particles are present in an amount of 1-50wt% and the thermosetting resin is present in the remaining 50-99 wt%.
INOUBLI teaches a multistage polymer with a core (A) and shells (B) and (C) ( [0030]-[0032], [0079]+Fig 1). INOUBLI teaches that its (B) shell polymer is grafted onto its (A) polymer ([0077], [0096]). INOUBLI teaches that its core (A) polymer an acrylic polymer based on a C1-C12 (meth)acrylate, a diene polymer such as isoprene or butadiene ([0087]), or a silicone rubber-based polymer ([0090]). This core rubber polymer satisfies the compositional requirements of the elastic body that are recited by the claim. INOUBLI teaches that its (B) polymer is preferably a (meth)acrylic polymer ([0091]). This satisfies the compositional requirements of the graft part that is recited by the claim.
INOUBLI teaches that its composition preferably comprises no solvents ([0124]) and that the composition of its invention does not comprise any voluntarily added solvent ([0127]). This satisfies the requirement that the composition does not substantially contain solvent.
INOUBLI does not specifically teach a required amount of sulfur or phosphorus. INOUBLI teaches an emulsion polymerization process ([0128]-[0131]). In an example, INOUBLI teaches a three step polymerization of the particles ([0172], [0173], [0174]). INOUBLI teaches in this example, that its core polymer ([0172]) contains 0.3 parts sodium tetrapyrophosphate (23% P) and 0.004 ferrous sulfate (21% S) out of 0.1+21.0+0.1+0.1+0.3+0.004+77.8+0.2+2.8+0.5+0.8 =104.604 total parts of solid components which calculates to 0.29wt% sodium tetrapyrophosphate, or 660 ppm phosphorus and 0.0038 wt% ferrous sulfate, or 8 ppm sulfur. In the first shell of this example ([0173]), INOUBLI teaches 0.1+0.1 parts sodium formaldehyde sulfoxylate (27% S) out of 75+22.6+1.4+6(0.1)+0.9 = 100.5 total parts of solids components which calculates to 0.199wt% sodium formaldehyde sulfoxylate, or 539.3 ppm sulfur. In the second shell, INOUBLI teaches 3.15 parts sodium formaldehyde sulfoxylate (27% S) out of 10000+0.032+3.15+21.33+960.03+106.67+10.67+5.33 = 11107.21 parts of solid components which calculates to 0.0284 wt% sodium formaldehyde sulfoxylate, or 76.9 ppm sulfur. Summing the sulfur in the core and first shell calculates to 8*(75/100.5)+539.3 = 545 ppm. Summing the sulfur in all three layers calculates to 545*(10000/11107.21) + 76.9 = 567.8 ppm. This considers only the particles which are 1-50 wt% of the composition ([0168]), after consideration of this range, this calculates to a range of sulfur in the full composition of 5.7-283 ppm. There is only phosphorus in the core of the particles, this calculates to amount of phosphorus in the total particle of 659(75/100.5)(10000/11107.21) = 443.2 ppm. This when applied to the 1-50 wt% range of particles in the full composite calculates to 4.4-222 ppm. The 5.7-283 ppm sulfur and 4.4-222 ppm phosphorus in the example taught by INOUBLI are within the range of not more than 2300 ppm sulfur and not more than 1200 ppm phosphorus that are recited by the claim.
INOUBLI teaches emulsion polymerization ([0034]) in the absence of solvents where monomers and water are not considered solvents ([0127]). INOUBLI exemplifies de-ionized water ([0172]) to create its particles. INOUBLI teaches separating the aqueous phase and the solid phase containing the polymer particles ([0140]) by coagulation or by spray drying ([0140]). INOUBLI teaches that its drying step for the particles results in a polymer composition which is 3 wt% water or less ([0146]). INOUBLI teaches that its particles are present in an amount of 1-50wt% which calculates to an amount of water in the full composition of less than 1.5wt%. The claim recites that the water content is between 2000-40,000 ppm, which corresponds to 0.2-4wt% water. The 1.5 wt% or less water taught by INOUBLI overlaps with the 0.2-4wt% recited by the claim. INOUBLI does not specify the amount of water in its exemplary compositions, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of INOUBLI and use amounts of water that are within the range taught in its specification that are also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 12, modified INOUBLI teaches the invention of Claim 10 where INOUBLI exemplifies emulsion polymerization using sodium tetrapyrophosphate ([0172]) which contains phosphorus.
Regarding Claim 13, modified INOUBLI teaches the invention of Claim 10. The claim does not recite any limitations on the composition of resin (E). The grafted particles, which are solid ([0140]) could be interpreted as the resin which would satisfy the claim. Also, the base thermosetting resin could be interpreted as a resin which satisfies the claim. INOUBLI teaches that its thermosetting polymer may be a prepolymer in a soft, solid or viscous state ([0066]). INOUBLI also teaches that its resin component may be a mixture of at least two resins ([0167]).
Regarding Claim 14, modified INOUBLI teaches the invention of Claim 10. INOUBLI teaches curing of its thermosetting polymer ([0066]). INOUBLI teaches that an objective of its invention is to propose an impact modified cured epoxy resin composition ([0021]).
Claims 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over INOUBLI (US-20170369696-A1) in view of WAKITA (US-20160024355-A1).
Regarding Claim 11, modified INOUBLI teaches the invention of Claim 10. INOUBLI teaches that an objective of its invention is to create multistage polymer particles which are rapidly and easily dispersible in liquid and/or reactive epoxy resins ([0016]) but INOUBLI does not quantify this dispersibility. WAKITA in an invention of (meth)acrylate polymer particles ([0016]) produced in two steps using two monomer mixtures ([0021]) in an epoxy resin ([0162]) where the particles can be added to the epoxy directly bypassing the use of a solvent ([0198]), teaches excellent dispersibility of its particles when included in amounts of 50 parts per 100 or less ([0191]). WAKITA measures its dispersibility using fineness gauges according to JIS K-5600 ([0235]) which is a similar method as the recited JIS K5101 method. WAKITA teaches many examples with a dispersibility of 10.5 µm or less (Tables 7-12). For dispersibility measurements, lower µm values are better ([0236]-[0238]). It is presumed that compositions with dispersibilities of 10.5 µm or less as measured by JIS-K5600 would have dispersibilities of 100 µm or less if measured by the recited method of JIS-K5101 which would satisfy the claim. WAKITA teaches that this gives its resin combination excellent storage stability which gives excellent reduction in elastic modulus and insulating properties ([0015]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of INOUBLI, if needed, with the teachings of WAKITA and create a polymer composition with improved dispersibility for the purpose of providing excellent storage stability which gives improved elastic modulus and insulating properties ([0015]).
Regarding Claim 15, modified INOUBLI teaches the invention of Claim 10. INOUBLI teaches that its composite materials are widely used in several industry sectors such as automatic and electronics ([0005], [0009]) but does not specifically teach its use as an adhesive. WAKITA in an invention of (meth)acrylate polymer particles ([0016]) produced in two steps using two monomer mixtures ([0021]) in an epoxy resin ([0162]) where the particles can be added to the epoxy directly bypassing the use of a solvent ([0198]), teaches that its composition is an adhesive ([0020]) can be used for various applications such as electronic materials, semiconductors and adhesives ([0358]). An adhesive agent is an obvious use of the composite epoxy resin taught by INOUBLI based on the teachings of WAKITA.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over INOUBLI (US-20170369696-A1) in view of HATAE (US-20140107295-A1).
Regarding Claim 16, INOUBLI teaches a multistage polymer in the form of polymeric particles for use in composites comprising thermosetting resins (Abstract). INOUBLI teaches that its thermoset resin may include epoxy resins ([0164]) and that its epoxy resin composition comprises between 1-50 wt% of the multistage polymer particles ([0168]) which satisfies the requirement that the particles are present in an amount of 1-50wt% and the thermosetting resin is present in the remaining 50-99 wt%.
INOUBLI teaches a multistage polymer with a core (A) and shells (B) and (C) ( [0030]-[0032], [0079]+Fig 1). INOUBLI teaches that its (B) shell polymer is grafted onto its (A) polymer ([0077], [0096]). INOUBLI teaches that its core (A) polymer an acrylic polymer based on a C1-C12 (meth)acrylate, a diene polymer such as isoprene or butadiene ([0087]), or a silicone rubber-based polymer ([0090]). This core rubber polymer satisfies the compositional requirements of the elastic body that are recited by the claim. INOUBLI teaches that its (B) polymer is preferably a (meth)acrylic polymer ([0091]). This satisfies the compositional requirements of the graft part that is recited by the claim.
INOUBLI teaches that its primary particles have a weight average particle size between 50-500 nm ([0063]). Here, the weighted average measurement is interpreted as being equivalent to the recited volume average measurement because INOUBLI teaches a single type of polymer particle so each particle is presumed to have the same density. The 50-500 nm taught by INOUBLI is within the 0.03-0.5 µm (30-500 nm) that is recited by the claim.
INOUBLI teaches that its composition preferably comprises no solvents ([0124]) and that the composition of its invention does not comprise any voluntarily added solvent ([0127]). This satisfies the requirement that the composition does not substantially contain solvent.
INOUBLI does not specifically teach a required amount of sulfur or phosphorus. INOUBLI teaches an emulsion polymerization process ([0128]-[0131]). In an example, INOUBLI teaches a three step polymerization of the particles ([0172], [0173], [0174]). INOUBLI teaches in this example, that its core polymer ([0172]) contains 0.3 parts sodium tetrapyrophosphate (23% P) and 0.004 ferrous sulfate (21% S) out of 0.1+21.0+0.1+0.1+0.3+0.004+77.8+0.2+2.8+0.5+0.8 =104.604 total parts of solid components which calculates to 0.29wt% sodium tetrapyrophosphate, or 660 ppm phosphorus and 0.0038 wt% ferrous sulfate, or 8 ppm sulfur. In the first shell of this example ([0173]), INOUBLI teaches 0.1+0.1 parts sodium formaldehyde sulfoxylate (27% S) out of 75+22.6+1.4+6(0.1)+0.9 = 100.5 total parts of solids components which calculates to 0.199wt% sodium formaldehyde sulfoxylate, or 539.3 ppm sulfur. In the second shell, INOUBLI teaches 3.15 parts sodium formaldehyde sulfoxylate (27% S) out of 10000+0.032+3.15+21.33+960.03+106.67+10.67+5.33 = 11107.21 parts of solid components which calculates to 0.0284 wt% sodium formaldehyde sulfoxylate, or 76.9 ppm sulfur. Summing the sulfur in the core and first shell calculates to 8*(75/100.5)+539.3 = 545 ppm. Summing the sulfur in all three layers calculates to 545*(10000/11107.21) + 76.9 = 567.8 ppm. This considers only the particles which are 1-50 wt% of the composition ([0168]), after consideration of this range, this calculates to a range of sulfur in the full composition of 5.7-283 ppm. There is only phosphorus in the core of the particles, this calculates to amount of phosphorus in the total particle of659(75/100.5)(10000/11107.21) = 443.2 ppm. This, when applied to the 1-50 wt% range of particles in the full composite calculates to 4.4-222 ppm. The 5.7-283 ppm sulfur and 4.4-222 ppm phosphorus in the example taught by INOUBLI are within the range of not more than 2300 ppm sulfur and not more than 1200 ppm phosphorus that are recited by the claim.
INOUBLI teaches that an objective of its invention is to create multistage polymer particles which are rapidly and easily dispersible in liquid and/or reactive epoxy resins ([0016]) but INOUBLI does not quantify this dispersibility. HATAE, in an invention of an epoxy resin composition with vinyl particle particles (Abstract) where the particles can have a core-shell structure ([0065]) that are spray dried ([0082]) and included in amounts of 1-50 parts relative to 100 parts of the epoxy ([0088], [0089]), teaches that when the volume average primary particle diameter of its vinyl polymer particles is 200 nm or more, the aggregation powder obtained from the drying step is easily dispersed into primary particles in the epoxy resin ([0053]). HATAE measures its dispersibility using grind gauges according to JIS K-5600 ([0143]) which is a similar method to the recited JIS K5101 method. HATAE teaches many examples with a dispersibility of 5 µm or less ([0144], Table 2). HATAE teaches that its improved dispersibility allows for improved optical properties such as transparency ([0082]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of INOUBLI, if needed, with the teachings of HATAE and create a polymer composition with improved dispersibility for the purpose of improved optical properties such as transparency.
INOUBLI teaches emulsion polymerization ([0034]) in the absence of solvents where monomers and water are not considered solvents ([0127]). INOUBLI exemplifies de-ionized water ([0172]) to create its particles. INOUBLI teaches separating the aqueous phase and the solid phase containing the polymer particles ([0140]) by coagulation or by spray drying ([0140]). INOUBLI teaches that its drying step for the particles results in a polymer composition which is 3 wt% water or less ([0146]). INOUBLI teaches many thermosetting resins including epoxy resins crosslinked by a hardener ([0164]) but is silent on whether its thermosetting resins include any water. HATAE teaches and exemplifies alicyclic epoxy resins which do not contain water ([0027]-[0028]), Table 2). INOUBLI teaches that its particles are present in an amount of 1-50wt% which calculates to an amount of water in the full composition of less than 1.5wt%. The claim recites that the water content is between 2000-40,000 ppm, which corresponds to 0.2-4wt% water. The 1.5 wt% or less water taught by INOUBLI overlaps with the 0.2-4wt% recited by the claim. INOUBLI does not specify the amount of water in its exemplary compositions, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of INOUBLI and use amounts of water that are within the range taught in its specification that are also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 17, modified INOUBLI teaches the invention of Claim 16 where INOUBLI exemplifies emulsion polymerization using sodium tetrapyrophosphate ([0172]) which contains phosphorus.
Regarding Claim 18, modified INOUBLI teaches the invention of Claim 16. The claim does not recite any limitations on the composition of resin (E). The grafted particles, which are solid ([0140]) could be interpreted as the resin which would satisfy the claim. Also, the base thermosetting resin could be interpreted as a resin which satisfies the claim. INOUBLI teaches that its thermosetting polymer may be a prepolymer in a soft, solid or viscous state ([0066]). INOUBLI also teaches that its resin component may be a mixture of at least two resins ([0167]). HATAE teaches that its epoxy resin is in a liquid state at normal temperature, or is in a solid state at normal temperature but liquefies during heating before the curing is sufficiently performed ([0027]).
Regarding Claim 19, modified INOUBLI teaches the invention of Claim 16. INOUBLI teaches curing of its thermosetting polymer ([0066]). INOUBLI teaches that an objective of its invention is to propose an impact modified cured epoxy resin composition ([0021]). HATAE teaches forming a cured object by curing its composition ([0090]).
Regarding Claim 20, modified INOUBLI teaches the invention of Claim 16. INOUBLI teaches that its composite materials are widely used in several industry sectors such as automatic and electronics ([0005], [0009]) but does not specifically teach its use as an adhesive. HATAE teaches that its composition may be used in applications in electronics such as adhesion layers and adhesive pastes ([0094]).
Response to Arguments
Applicant's arguments filed 18 February 2026 have been fully considered but they are not persuasive.
The prior art rejections set forth in the previous office action are maintained. New grounds of rejection under 35 USC 103 over INOUBLI in view of HATAE have been set forth for the new claims 16-20.
Applicant argues that although INOUBLI teaches water content of its polymer particles, the water content of its thermoplastic resin is not taught, so a person of ordinary skill cannot estimate the water content of the full resin composition from the teachings of INOUBLI. In response, INOUBLI teaches great detail of the composition of its particles including the residual water content following its drying steps, but only includes broad general teachings, and no exemplary embodiments, of its thermosetting resins ([0164]) including epoxy resins crosslinked by a hardener ([0164]). INOUBLI does not teach that any of its thermosetting resins are aqueous resins. Given the broad range recited for the water content and that the instant specification contains no discussion of any significant contribution to the water content originating from the resin, it is reasonable to conclude that the water content of the compositions taught by INOUBLI is within the recited range.
Applicant argues that its resin compositions containing a specific amount of water provide excellent dispersibility of the fine polymer particles and a cured product having excellent surface appearance, while INOUBLI shows no technical relationship between the water content of the composition and the dispersibility or surface appearance of its cured product. In response, INOUBLI teaches homogeneous dispersions are a necessary part of its invention for the purpose of satisfying impact performance ([0015]) and that its particles are easily dispersible in liquid and/or reactive epoxy resins ([0016]). WAKITA teaches that its particles are excellent in dispersibility ([0151]) and includes teaching for moisture content of less than 1.5 mass% in its particles for the purpose of restraining the generation of cracks which would improve the surface appearance. HATAE teaches good dispersibility for the purpose of improving optical properties as transparency ([0082]) which suggests that there is not a problem with air bubble as measured by the surface appearance test in the instant examples (cur spec: [0342]). The prior art teaches compositions below the upper bound of water content of 40000 ppm (4 wt%). The evidence provided in the instant examples does not show a link between compositions with a water content above the lower bound of 2000 ppm (0.2 wt%) and the improvement in the dispersibility and surface appearance properties. To the extent that any improvement in these properties has been shown, it is limited to specific exemplary embodiments and is not commensurate with the claims which recite a broad range of grafted particles and thermosetting resins. Note that the comparative examples with less than 2000 ppm water are all also missing the resin (E) (cur spec: Table 3) and that in the inventive Example 1 which is also missing resin (E), additional mixing of the coagulate is required to obtain good dispersibility (cur spec: Table 2).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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