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
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, 3, and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (CN 110256938 A) in view of Teragaki et al. (US 2021/0214549) and Lee et al. (US 2016/0150644).
Regarding Claims 1, 3, 5, 7, and 11, Cai discloses a two-component aqueous epoxy primer for a metal substrate, where component (a) comprises an aqueous epoxy resin emulsion (i.e. epoxy matrix in an aqueous epoxy resin emulsion) and an epoxy-terminated polysulfide primer, and component (b) comprises an aqueous curing system with epoxy reactive curing agent (pg 1, para 5).
Cai discloses zinc may be used, but it is not required (pg 4, para 5). Therefore it would be obvious to produce the primer not comprising zinc.
Cai does not disclose the rubber modified epoxy resin as claimed.
Teragaki discloses a two component epoxy resin composition (paras 0001, 0174) comprising rubber modified epoxy resin that has glass transition temperature of -25 C or lower (paras 0135, 0142). The rubber modified epoxy resin is made by reacting epoxy compound such as bisphenol A with rubber such as carboxyl group terminated NBR (para 0136). Teragaki discloses this produces primer with adhesion and impact peel-resistant adhesion (para 0136).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Cai to incorporate the teachings of Teragaki and produce the two-component aqueous epoxy primer of Cai using the rubber modified epoxy resin of Teragaki. Doing so would produce primer with adhesion and impact peel-resistant adhesion. When the rubber modified epoxy resin is included in the aqueous carrier of the film-forming composition of Cai, it would be in the form of a dispersion in an aqueous solvent.
Cai in view of Teragaki does not disclose the EEW of the rubber modified epoxy.
Lee discloses a resin composition comprising epoxy resin and rubber modified epoxy resin (0016) where the rubber modified epoxy resin has an epoxy equivalent weight of 300-500 g/eq and a weight average molecular weight of 30,000-60,000 to increase the adhesiveness, heat resistance and insulation properties of the resin composition (para 0020).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Cai in view of Teragaki to incorporate the teachings of Lee and use a rubber modified epoxy resin having an epoxy equivalent weight of 300-500 g/eq and a weight average molecular weight of 30,000-60,000. Doing so would increase the adhesiveness, heat resistance and insulation properties of the resin composition.
There is no disclosure in Cai that the primer is applied and cured in an amount to form a 20 micron dry paint film thickness. However, Cai discloses epoxy primer may be applied to a variety of wet film thicknesses which are then dried and cured (pg 5, para 5). It would have been obvious to one of ordinary skill in the art to apply the primer at any thickness, including that presently claimed, depending on the end use of the primer and the desired properties.
Alternatively, given that claim 1 is drawn to a composition and not an article, it is noted that while there is no disclosure that the primer is applied and cured in an amount to form a 20 micron dry paint film, applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. applied and cured in an amount to form a 20 micron dry paint film, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art primer and further that the prior art structure which is a primer identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding Claim 6, Cai in view of Teragaki and Lee discloses all the limitations of the present invention according to Claim 4 above. Cai discloses that the epoxy resin matrix has an epoxy equivalent weight of 400-2500 (para 0031). Further, Cai discloses an epoxy resin matrix known under the tradename Epikote 6250-WH-53 which is identical to that used in the present invention. Therefore, given that Cai in view of Teragaki and Lee discloses epoxy resin component identical to that presently claimed including epoxy resin matrix identical to that used in the present invention and rubber modified epoxy resin with epoxy equivalent weight that overlaps that presently claimed, it is clear that the epoxy resin component would necessarily have epoxy equivalent weight that overlaps that presently claimed.
Alternatively, Cai discloses that the lower the epoxy equivalent weight, the higher the reactivity (see page 2, para 10). Therefore, it would have been obvious to one of ordinary skill in the art to control the epoxy equivalent weight of the epoxy resin component of Cai in view of Teragaki and Lee to values, including those presently claimed, in order to produce an epoxy resin component with desired reactivity.
Regarding Claim 8, Cai in view of Teragaki and Lee discloses all the limitations of the present claims according to Claim 1 above. Cai further discloses the aqueous epoxy resin emulsion comprises epoxy resin having an EEW of 400-2500 g/eq (pg 2, para 15).
Regarding Claim 9, Cai in view of Teragaki and Lee discloses all the limitations of the present claims according to Claim 1 above. Cai further discloses the aqueous epoxy resin emulsion comprises epoxy resin selected from polyglycidyl ethers of phenolic resins (pg 2, para 16).
Regarding Claim 10, Cai in view of Teragaki and Lee discloses all the limitations of the present claims according to Claim 9 above. Cai further discloses the epoxy resin the epoxy resin is a diglycidyl ether of a polyhydric phenol having a structural formula as claimed (pg 3, para 1).
Regarding Claim 12, Cai in view of Teragaki and Lee discloses all the limitations of the present claims according to Claim 11 above. Cai further discloses the aqueous epoxy resin emulsion may have a solids content of 40-60 wt% (pg 3, para 9).
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the present claims are directed to a “shop primer” which is used to form a temporary coating that is removed later in a production process, and therefore the claimed thickness should not be considered intended use, but is a known feature in the art.
However, applicant has provided no evidence that the term “shop primer” would be understood by a person having ordinary skill in the art to require a particular limited thickness. Examiner further maintains the rejection as set forth above, that given that Claim 1 is drawn to a composition and not an article, applying and curing the paint is considered an intended use. Since the prior art structure discloses a primer identical to that set forth in the present claims, such primer is capable of performing the recited intended use.
Applicant argues that the primer of Cai is not a shop primer, but is drawn to durable thick coat primers, and a person having ordinary skill in the art would not be motivated to apply the coating of Cai as a thin coat shop primer.
While Cai discloses “thick” coat primers, Cai does not limit this thickness, but rather discloses “a variety of wet film thicknesses….preferably… from about 45 to about 200 microns” (pg 5, lines 24-25). Since the 45 microns is only a preferable embodiment, there is nothing in the disclosure of Cai that teaches away from using other thicknesses, and since applicant has provided no evidence establishing the criticality of their 20 micron thickness, Examiner maintains the rejection above, that it would be obvious to apply the primer of Cai at thickness including that claimed and that the primer of Cai would be suitable for achieving said thickness and therefore reads on the present claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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