DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 24, 2025 has been entered.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered but they are not persuasive.
A) Applicant’s argument that the claims focus on particular aspects of the invention which the cited reference does not provide adequate pointers to choose and combine to arrive at the claims is not persuasive. Applicants point to the particular A, R, R1 and R2, particular epoxy and the combination of them in the way presently claimed. However, in example 2, Lal et al. teaches the epoxy bisphenol A diglycidyl ether (para. 40), which is the claimed 4,4’-isopropylidenediphenol-epichlorohydrin copolymer. The amines used in example 2 are listed in table 1a. The very first amine curing agent having the disclosed structure required by the reference in paragraph 13 that is tested in Lal et al. is acetic acid salt of N-hydroxyethylpiperidine (second line of table 1a). This is the claimed curing agent of Formula (I) where A is -CH2-, R is a C2 alkylene chain, R1 and R2 are hydrogen, and X is a C2 carboxylate anion. This is the very first disclosed example that is of the inventive concept in Lal et al. and it points to the claimed A, R, R1 and R2, particular epoxy and the combination of them in the way presently claimed. Since this example is the first inventive example disclosed, a person having ordinary skill in the art would be aided in the selection of variables by the disclosed example. There is a reasonable expectation of success since a person having ordinary skill in the art reading Lal et al. would expect the first inventive example disclosed to be successful at the disclosed problem.
B) Applicant’s argument that the reasons provided in the previous replies as to why the obviousness rejection is in error, is incorporated by reference is not persuasive as these arguments have been addressed in previous Actions.
C) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Further, in this case, Lal et al. provides examples (para. 40) either falling within the claimed range, or extremely close to the claimed range, and therefore a person having ordinary skill in the art need not make any “untaught selections”.
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 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.
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 31, 32, 34, 37, 38, 40-43, and 47-50 are rejected under 35 U.S.C. 103 as being unpatentable over Lal et al. (US 2014/0303342).
Regarding claim 31: Lal et al. teaches a curable composition comprising a resin comprising 4,4’-isopropylidenediphenol-epichlorohydrin copolymer/glycidyl ether of bisphenol A (para. 19) and one or more curing agents (para. 13). Lal et al. teaches a curing agent acetic acid salt of N-hydroxyethylpiperidine (second line of table 1a, the amines used in the example of para. 40). This is the claimed curing agent of Formula (I) where A is -CH2-, R is a C2 alkylene chain, R1 and R2 are hydrogen, and X is a C2 carboxylate anion. Lal et al. teaches the broad ratio of epoxy to amine salt of 75-99:25-1 (para. 27), which overlaps the ratio 12:1, and also teaches the narrower weight ratio of the epoxy resin to curing agents of 100:8 (para. 40), which is 12.5:1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close (MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to have the ratio of the resin to curing agent within the claimed range and would have been motivated to do so since Lal et al. teaches that this range is acceptable to achieve the disclosed composition.
Lal et al. further teaches a monofunctional epoxide that is a glycidyl ether of a C14 alcohol (para. 23), a filler and a pigment as additives, and that the additives can be in total in an amount of about 10% by weight of the composition (para. 24). If equal amounts of the two additives were used, then up to about 5 wt% of each would be used, which overlaps the claimed range.
While Lal et al. does not explicitly teach the gel time at 21 °C, the reference does teach the gel time of 1-2 days at 25 °C (Tables 2a and 2b). Further, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). A chemical composition and its properties are inseparable (MPEP 2112.01). A person having ordinary skill in the art would recognize the similarity in gel time properties when measured at 21 °C vs. 25 °C.
Regarding claim 32: Lal et al. teaches a defoamer (para. 24).
Regarding claim 34: Lal et al. teaches X is a carboxylate anion of 1-40 carbon atoms (para. 14) such as acetic acid salt (table 1a), which has 2 carbon atoms.
Regarding claims 37 and 38: Lal et al. teaches a curing temperature of 50-150 °C (para. 10), which overlaps the claimed ranges.
Regarding claims 40-42: Lal et al. teaches the basic claimed composition as set forth above. Not disclosed is the gel time at 21 °C. However, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II).
Regarding claim 43: Lal et al. teaches a method of curing a cured-in-place liner (para. 9) comprising placing the cured-in-place liner in a pipe and heating (para. 37) using the claimed curable composition.
Regarding claim 47: Lal et al. teaches the ratio of 12.5:1 as set forth above. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art, but are merely close (MPEP 2144.05)
Regarding claims 48 and 49: Lal et al. teaches a curing temperature of 50-150 °C (para. 10), which overlaps the claimed ranges.
Regarding claim 50: Lal et al. teaches the basic claimed composition as set forth above. Not disclosed is the gel time at 21 °C. However, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II).
Conclusion
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767