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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Interpretation
The “formulation” of claim 10 is construed as a composition of matter that results from the immediate mixing of a 2-component coating composition. See Page 3, Lines 8-13. The composition comprises peroxide/initiator and thus, is construed as the resulting blend prior to curing to form the 2-component intumescent coating.
Claim Rejections - 35 USC § 112
Claims 24 and 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24 has been amended to recite “obtainable by mixing a fraction which is accelerator free and contains the initiator and a fraction that does not contain an initiator and optionally contains an accelerator”. Written support for the limitation at issue is not found within the specification as originally filed. Rather, the specification only speaks of:
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at Page 3. Thus, the specification is only seen to support a first fraction with reactive resin, blowing agent, accelerator, additive, and filler and a second fraction with reactive resin, blowing agent, initiator, additive, and filler. As the breadth encompassed by the limitation is unsupported by the specification, claim 24 fails to comply with the written description requirement.
Claim 25 requires the reactive resin be prepared by polymerizing a monomer mixture to a degree of polymerization of not more than 70% (per claim 10) and then adding a second monomer mixture. Applicant urges support for such is found within the examples, particularly example 2. However, example 2 makes clear the “not more than 70%” figure pertains to the polymer content after polymerization and any subsequent addition of additional monomer. Thus, written support is not found for a process involving first polymerizing to a degree of polymerization of not more than 70% and then subsequently adding second monomer mixture.
Claim Rejections - 35 USC § 103
Claim(s) 10, 11, 13-21, 24, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt (US 2012/0164462 A1) in view of Tsuchiya (JP2003-171579A) in view of. As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 10, 11, 20, and 21, Schmitt teaches intumescent coating formulations comprising acrylic mixture of polymer and unreacted monomers, azo/peroxide initiator, intumescent blowing agents, and nucleating agents/adjuvants (construed as fillers) (Abstract; ¶ 16, 38, 43-44). The polymeric component includes acid-functional monomer (¶ 33-36). The formulations may result from two component compositions (¶ 48). Schmitt differs from the subject matter claimed in that particular monomer/polymer resin systems resulting from partial polymerization of monomer mixture is not described.
Tsuchiya is also directed toward acrylic compositions for metals, the acrylic resin being a mixture of (meth)acrylate polymers/monomers (Abstract). Tsuchiya teaches it was known acrylic resins for metal coatings can be created either by adding monomer to already created monomer or by partially polymerizing monomer mixtures (¶ 7). The particular acrylic systems of Tsuchiya are noted for being capable of forming highly durable coatings without generation of air bubbles (¶ 8). It would have been obvious to one of ordinary skill in the art to utilize the acrylic resin/monomer mixtures of Tsuchiya within the metal coatings of Schmitt because doing so would afford highly durable coatings without generation of air bubbles in accordance with the teachings of Tsuchiya. Tsuchiya describes embodiments where the acrylic resin has a Tg of -17 degrees C and is prepared via polymerizing a monomer mixture comprising at least one acid-functional monomer to a polymerization ratio of 45% (Example 2; ¶ 28 and Table 1).
Schmitt teaches acrylic mixtures of 10-60 wt% polymer and 30-60 wt% monomer relative to total weight of coating (¶ 27-28). Schmitt teaches 0.5-5 wt% of azo/peroxide and 40-85 wt% of intumescent blowing agent components (¶ 29, 45). Such ranges overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Schmitt suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Schmitt. See MPEP 2123.
With respect to amount of filler, Schmitt teaches the further inclusion of materials of titanium dioxide as a nucleating agent for the intumescent materials (¶ 43). Tsuchiya teaches titanium dioxide is also a known pigment/adjuvant, whereby if the content is too small, color tone and rust preventative action is prevented whereas if the content is too high, the coating becomes too viscous (¶ 19; Examples). Thus, the prior art indicates the relative quantity of titanium oxide material is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill to discover workable or optimal contents of filler/pigment materials such as titanium dioxide within the scope of the present claims so as to achieve desirable nucleating agent, color tone, rust prevention, and viscosity characteristics.
Regarding Claim 13, Tsuchiya teaches the use of acid monomers such acrylic acid (¶ 28), but differs from the subject matter claimed in that 2-carboxyethyl acrylate is not described. Schmitt teaches beta-carboxyethyl acrylate is known to be useful for the acrylate materials, whereby improvement in adhesion to metal surfaces is achieved (¶ 33). It would have been obvious to one of ordinary skill in the art to utilize 2-carboxyethyl acrylate within the acrylic resins because doing so would promote adhesive to metal surfaces as taught by Schmitt.
Regarding Claims 14-19, Tsuchiya teaches embodiments where resin is obtained from 40 pbw of methyl methacrylate, 55 pbw of 2-ethylhexyl acrylate, 5 pbw of acrylic acid, and 0 pbw of di- or trifunctional (meth)acrylate (¶ 28), equivalent to 100 wt% of (meth)acrylate with 40 wt% MMA and 0 wt% di- or trifunctional (meth)acrylate. The obtained resin has a Mw of 56,000 g/mol.
Regarding Claim 24, Schmitt teaches prior to application, an organic peroxide component is added (¶ 48), which is construed as a fraction that is accelerator free and contains the initiator being added/mixed with a fraction that does not contain an initiator. Alternatively, case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Regarding Claim 25, Schmitt teaches intumescent coating formulations comprising acrylic mixture of polymer and unreacted monomers (Abstract). Likewise, Tsuchiya teaches the creation of resins with fractional polymerization ratios. Thus, the combination of references is suggestive of formulations with acrylic polymer and unreacted monomers. To the extent a particular protocol is being required to result in such a polymer/monomer mixture, case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Response to Arguments
Applicant's arguments filed 7/20/2026 have been fully considered but they are not persuasive.
Applicant generally argues Schmitt fails to describe the required Tg characteristic and describes a preference for polymers that would lead to higher Tg’s than that claimed. This is not found persuasive. The particular Tg characteristic is met by combination with Tsuchiya. Schmitt imposes no particular restriction on the Tg of the resin used.
Applicant urges the claimed formulation is what would result after the mixing of a two component system, which is not suggested by Schmitt. This is not found persuasive as the claims at issue are directed to a particular formulation and not a 2 component coating system with individually defined components.
Applicant urges there is no disclosure within Tsuchiya that partially polymerizing a (meth)acrylic polymer to not more than 70% would result in a Tg less than 23 degrees C. In response, Applicant is kindly referred to Tsuchiya at Example 2, where the acrylic resin has a Tg of -17 degrees C and is prepared via polymerizing a monomer mixture comprising at least one acid-functional monomer to a polymerization ratio of 45% (Example 2; ¶ 28 and Table 1). The partially polymerized product is subsequently incorporated into a coating composition prior to application (¶ 28).
Applicant further argues Tsuchiya teaches away from intumescent materials/coatings since Tsuchiya seeks to avoid foaming. This is not found persuasive. Firstly, Applicant appears to be confusing the appearance of bubbles during coating formation (what Tsuchiya is describing and seeking to avoid) with foaming as a result of a chemical reaction of intumescent components in response to heat/fire. These are not the same thing. Tsuchiya does not criticize, discredit, or otherwise discourage the use of intumescent components within the coating compositions. Therefore, Tsuchiya is not teaching away. Secondly, the rejection of record is predicated on utilizing the resins of Tsuchiya within the intumescent coatings of Schmitt and not incorporating Schmitt’s intumescent materials into the coatings of Tsuchiya. Therefore, it is unclear what relevance any preference/non-preference for intumescent components within Tsuchiya has with respect to the rejections of record.
Applicant argues there would be no motivation to combine Tsuchiya with Schmitt. Applicant argues one of ordinary skill would not have a reasonable expectation of success in using Tsuchiya’s resins within the compositions of Smith, reasoning Tsuchiya does not pertain to an intumescent formulation. The Examiner maintains Tsuchiya’s express teaching of forming highly durable coatings without generation of air bubbles provides sufficient motivation to support the combination of references. Applicant has failed to provide any evidence or explanation as to why one of ordinary skill would not have a reasonable expectation of success in using such resins within the compositions of Schmitt merely due to the presence of intumescent additives.
Applicant argues the references fail to describe perceived benefits, such as ability to use heat or light activated initiators, ease of workability, and foam control. In response, the prior art need not recognize the criticality of a limitation, but rather the prior art needs to only teach that limitation. The rejections of record have shown that the claimed limitation is present in the prior art. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See MPEP 2144(IV).
Applicant argues claim 25 has written support within the disclosure, referring to the description of second monomer mixture within page 5, line 15 of Example 2. This is not found persuasive. The only description of a “subsequent addition of a second monomer mixture” is found within example 2 of the specification at lines 15-17. When construed with the limitations of claim 10, claim 25 requires:
30 to 50 wt% of a reactive resin preparable by polymerizing a monomer mixture comprising at least one acid-functional monomer to a degree of polymerization of not more than 70%, and subsequent addition of a second monomer mixture, wherein the resultant polymer has a glass transition temperature of less than 23°C
Example 2 indicates roughly 25 wt% of monomers is polymerized to a target polymer weight of 60,000 g/mol, after which 75 wt% of a second monomer mixture is added. The example notes after second monomer mixture is added, the target polymer content is 25%. Thus, Example 2 does not provide support for the concept of polymerizing a monomer mixture partially to not more than 70% and then adding second monomer mixture; rather, the example indicates roughly full polymerization commences after which the resulting polymer is diluted to 25% of polymer. As written support for the subject matter claimed is not found within the specification as originally filed, claim 25 fails to comply with the written description requirement.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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