DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/14/2026 has been entered.
Claims 21-27, 30, 32-40 are pending.
Double Patenting
Claims 21-27, 30, 32-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,131,766.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21: US ‘766 claims a process to prepare the claimed composition in claims 1-3 of US ‘766, and therefore arrives at the present claim 1 in an anticipatory type manner.
Regarding claims 22-27, 30, 32-40: See claims 2-17 of US ‘766.
Claims 21-27, 30, 32-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,180,632.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21: US ‘632 claims a process to prepare the claimed composition in claims 1-2, 4, 18 of US ‘632, and therefore arrives at the present claim 1 in an anticipatory type manner.
Regarding claims 22-27, 30, 32-40: See claims 2-20 of US ‘766.
Claim Rejections - 35 USC § 103
Claims 21-22, 24-27, 30, 32-34, 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over Nava et al. (US 2016/0096918) in view of Anders (US 2011/0083766).
Regarding claim 21: Nava discloses a process comprising:
Preparing a curable composition comprising an peroxide initiator, including cumene peroxide ([0064] Nava), and a quaternary ammonium salt (abstract Nava) (equivalent to a cumene-quat curing system), wherein the curing system comprises an unsaturated polyester, a peroxide liquid initiator, a quaternary ammonium salt component, and an inhibitor component ([0049] Nava), wherein the peroxide initiator can be cumene peroxide ([0064] Nava) (equivalent to a single component).
The inhibitor component is used in an amount of 0.0001-0.5 percent by weight based on the weight of the reactants ([0051] Nova). As defined by the present invention, an amount of 0.7 percent by weight includes a diluted amount of inhibitor of 0.07 percent by weight of the curable quat cumene quat curing system. (Example 1 utilizes 0.7 wt% of a 10% 4-hydroxy-tempo in styrene), and therefore the amount of inhibitor of Nava clearly lies within the claimed amount. For instance, an amount of 0.7 percent by weight of a 10% concentration inhibitor solution results in an amount of inhibitor, e.g. 4-hydroxy TEMPO, of less than 0.07 percent by weight based on the weight of the reactants as well as based on the curable cumene quat curing system, and therefore the disclosed inhibitor component used in an amount of 0.0001-0.5 percent by weight based on the weight of the reactants ([0051] Nova) is within the claimed range of 0.7-0.94 percent by weight of the curable quat curing system.
Nava doesn’t mention the unsaturated polyester is used specifically for a cured in place pipe, and curing the cured in place pipe in a cured in place rehabilitation process, although teaches the process can be used in combination with other resins and used for a coating on a substrate, including a marine vessel ([0059] Nava).
Anders discloses a cured in place liner system for pipe rehabilitation, which comprises an unsaturated polyester which is cured in place. One skilled in the art would have been motivated to have used the composition of Nava for a cured in place liner system for pipe rehabilitation since Nava teaches the process can be used in combination with other resins and used for a coating on a substrate, including a marine vessel ([0059] Nava), although doesn’t recite specific uses. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the composition of Nava for applying the curable cumene quat curing system to a cure in place pipe, and curing the cured-in-place rehabilitation.
The combination of Nava and Anders does not specifically discuss a pot life. However, the curable cumene-quat system produced in the combination of Nava and Anders and Jansen is substantially identical to the curable cumene-quat system produced in the instant specification. In particular, Example 1 discloses a single process utilizing cumene hydroperoxide (CHP) as the peroxide initiator, a quaternary ammonium salt (alkyl dimethyl benzyl ammonium chloride QUAT), and an unsaturated polyester DION 495-00). While dimethyl p-toludine is used as the initiator, acetylacetone (equivalent to 2,4-pentanedione) is a suitable substitute for the tertiary amine ([0040] Nava). Likewise, a wide variety of inhibitors are disclosed ([0049] Nava).
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, the combination of Nava and Anders suggests a pot life of greater than about 18 hours around 25 °C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 22: The combination of Nava and Anders does not specifically discuss a pot life. However, the curable cumene-quat system produced in the combination of Nava and Anders and Jansen is substantially identical to the curable cumene-quat system produced in the instant specification. In particular, Example 1 discloses a single process utilizing cumene hydroperoxide (CHP) as the peroxide initiator, a quaternary ammonium salt (alkyl dimethyl benzyl ammonium chloride QUAT), and an unsaturated polyester DION 495-00). While dimethyl p-toludine is used as the initiator, acetylacetone (equivalent to 2,4-pentanedione) is a suitable substitute for the tertiary amine ([0040] Nava). Likewise, a wide variety of inhibitors are disclosed ([0049] Nava). Further, the addition of acetylacetone is suggested by the combination of Nava and Anders and Jansen.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, the combination of Nava and Anders suggests a pot life of greater than about 24 hours around 25 °C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 24: Nava lists cumene peroxide ([0064] Nava).
Regarding claim 25: Nava lists acetylacetone (equivalent to 2,4-pentanedione) ([0040] Nava).
Regarding claim 26: The inhibitor may be in an amount of 0.0001 to about 0.5 percent based on the weight of the reactants ([0051] Nava) (equivalent to 1 to 5000 ppm of the curable composition).
Regarding claim 27: Nava lists 4-hydroxy-2,2,6,6-tetramethylpiperidinyloxy as a suitable inhibitor ([0050] Nava) (equivalent to 4-hydroxy TEMPO).
Regarding claim 30: The compositions comprise a metal (abstract Nava).
Regarding claim 32: The combination of Nava and Anders does not specifically mention the cured in place pipe is cured at 140 F in less than 15 minutes.
However, the curable cumene-quat system produced in the combination of Nava and Anders and Jansen is substantially identical to the curable cumene-quat system produced in the instant specification. In particular, Example 1 discloses a single process utilizing cumene hydroperoxide (CHP) as the peroxide initiator, a quaternary ammonium salt (alkyl dimethyl benzyl ammonium chloride QUAT), and an unsaturated polyester DION 495-00). While dimethyl p-toludine is used as the initiator, acetylacetone (equivalent to 2,4-pentanedione) is a suitable substitute for the tertiary amine ([0040] Nava). Likewise, a wide variety of inhibitors are disclosed ([0049] Nava). Further, the addition of acetylacetone is suggested by the combination of Nava and Anders and Jansen.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, the combination of Nava and Anders suggests a cured in place pipe is cured at 140 F in less than 15 minutes. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 33: Nava discloses a process comprising:
Preparing a resin curing system, wherein the resin curing system comprises a resin, a liquid peroxide initiator, an inhibitor component ([0049] Nava), wherein the peroxide initiator can be cumene peroxide ([0064] Nava) (equivalent to a single component).
The combination of Nava and Anders does not specifically discuss a pot life. However, the curable cumene-quat system produced in the combination of Nava and Anders and Jansen is substantially identical to the curable cumene-quat system produced in the instant specification. In particular, Example 1 discloses a single process utilizing cumene hydroperoxide (CHP) as the peroxide initiator, a quaternary ammonium salt (alkyl dimethyl benzyl ammonium chloride QUAT), and an unsaturated polyester DION 495-00). While dimethyl p-toludine is used as the initiator, acetylacetone (equivalent to 2,4-pentanedione) is a suitable substitute for the tertiary amine ([0040] Nava). Likewise, a wide variety of inhibitors are disclosed ([0049] Nava). Further, the addition of acetylacetone is suggested by the combination of Nava and Anders and Jansen.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, the combination of Nava and Anders suggests a pot life of greater than about 18 hours around 25 °C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
The inhibitor component is used in an amount of 0.0001-0.5 percent by weight based on the weight of the reactants ([0051] Nova). As defined by the present invention, an amount of 0.7 percent by weight includes a diluted amount of inhibitor of 0.07 percent by weight of the curable quat cumene quat curing system. (Example 1 utilizes 0.7 wt% of a 10% 4-hydroxy-tempo in styrene), and therefore the amount of inhibitor of Nava clearly lies within the claimed amount. For instance, an amount of 0.7 percent by weight of a 10% concentration inhibitor solution results in an amount of inhibitor, e.g. 4-hydroxy TEMPO, of 0.07 percent by weight of the curable cumene quat curing system, and therefore the disclosed inhibitor component used in an amount of 0.0001-0.5 percent by weight based on the weight of the reactants ([0051] Nova) is within the claimed range of 0.7-0.94 percent by weight of the curable quat curing system.
Regarding claim 34: Nava discloses the drift on gel time is 30 to about 90 days or longer, indicating the compositions can be stored at about room temperature, including 25 °C, for greater than 24 hours before applying the curable cumene quat curing system to a cured in place pipe.
Regarding claim 36: Nava lists cumene hydroperoxide ([0064] Nava).
Regarding claim 37: Nava lists 4-hydroxy-2,2,6,6-tetramethylpiperidinyloxy as a suitable inhibitor ([0050] Nava) (equivalent to 4-hydroxy TEMPO).
Regarding claim 38: The inhibitor may be in an amount of 0.0001 to about 0.5 percent based on the weight of the reactants ([0051] Nava) (equivalent to 1 to 5000 ppm of the curable composition).
Regarding claim 39: The compositions comprise a metal (abstract Nava).
Regarding claim 40: The combination of Nava and Anders does not specifically mention the cured in place pipe is cured at 140 F in less than 15 minutes.
However, the curable cumene-quat system produced in the combination of Nava and Anders and Jansen is substantially identical to the curable cumene-quat system produced in the instant specification. In particular, Example 1 discloses a single process utilizing cumene hydroperoxide (CHP) as the peroxide initiator, a quaternary ammonium salt (alkyl dimethyl benzyl ammonium chloride QUAT), and an unsaturated polyester DION 495-00). While dimethyl p-toludine is used as the initiator, acetylacetone (equivalent to 2,4-pentanedione) is a suitable substitute for the tertiary amine ([0040] Nava). Likewise, a wide variety of inhibitors are disclosed ([0049] Nava). Further, the addition of acetylacetone is suggested by the combination of Nava and Anders and Jansen.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, the combination of Nava and Anders suggests a cured in place pipe is cured at 140 F in less than 15 minutes. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Claims 23, 35 is are rejected under 35 U.S.C. 103 as being unpatentable over Nava and Anders as applied to claims 21, 33 above, and further in view of Rubenstein (US 3,111,569).
Regarding claims 23, 35: The combination of Nava and Anders does not mention storing the prepared curable cumene-quat curing system for two weeks in a refrigerated area before applying the cumene-quat curing system to a cured in place pipe.
Rubenstein is directed to an unsaturated polyester resin, an organic peroxide catalyst, and inhibitor which is cured in place (col. 32 ll. 20-40 ff). Rubenstein teaches the tapes comprising the adhesive composition are refrigerated if long storage is considered (col. 51 ll. 34-39 Rubenstein). One skilled in the art would have been motivated to have stored the curable cumene quat curing system of Nava in view of Anders for two weeks in a refrigerated area before applying the curable cumene quat curing system to a cured in place pipe since Rubenstein teaches it is known in the art to refrigerated if long storage is considered. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have stored the curable cumene quat curing system of Nava in view of Anders for two weeks in a refrigerated area before applying the curable cumene quat curing system to a cured in place pipe.
Response to Arguments
Applicant's arguments filed 5/14/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 8 Remarks) Nava discloses 0.0001 to about 0.5 percent based on the weight of the reactants. However, this is based on the weight of the reactants, which is different from the weight of the curable cumene quat curing system, and therefore cannot be compared to the concentration of the inhibitor component in the present invention. In contrast, claim 21 now recites a curable cumene quat curing system comprising a quaternary ammonium salt.
This argument is not found persuasive since the “curable cumeme quat curing system” is defined in claim 1 as “comprising an unsaturated polyester resin, a single component liquid initiator, and an inhibitor component”. In other words, claim 1 defines the amount as based on reactants in the composition. Applicant has not addressed the rejection of record that specifically points to the fact that Example 1 and dependent claims included diluted amounts of the inhibitor component, and it is still unclear if claim 21 includes a diluted inhibitor with a solvent, which appears to be the case here as evidenced by claims 28-29 as well as Example 1.
Regarding the double patent rejection response set forth on page 9-10 of the Remarks filed 12/11/2025, Applicant's request for abeyance is acknowledged to the extent that Applicant's lack of response to the cited rejection will not be treated as non-responsive under 37 CFR 1.111(b). However, since the rejection is considered proper it will be maintained until such time as a complete response is filed, or conditions appropriate for removal of the rejection are presented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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