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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/2026 has been entered.
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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 are 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 10 requires a formulation comprising 30-50 wt% of resin, 35-60 wt% of blowing agent, 0.1-2.5 wt% of peroxide, optional accelerator, optional additive, and 5-30 wt% filler. Claim 24 recites “wherein the formulation is divided into two fractions of which one fraction is accelerator-free and contains the initiator”. Written support is not found for a protocol where a composition composed of 30-50 wt% of resin, 35-60 wt% of blowing agent, 0.1-2.5 wt% of peroxide, optional accelerator, optional additive, and 5-30 wt% filler is provided and then divided into differing fractions, one having peroxide the other not. While applicant refers to page 3, lines 46-61, the cited section refers to two component compositions that are created without peroxide whereby one of the components contains accelerator, an initiator is added to the component without accelerator, and then the two components are mixed together to provide the claimed formulations (see page 3, lines 8-13 and 46-61). As written support for the subject matter claimed is not found, claim 24 fails to comply with the written description requirement.
Claim 25 requires a 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 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 is a product claim directed toward a specific formulation composition, but contains a process of use step (see “is divided into…”). A single claim which claims both a product and method steps of using the product is generally indefinite as it creates confusion as to when direct infringement occurs. See MPEP 2173.05(p)(II). Accordingly, the intended scope of the claim is unclear.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 24 recites “wherein the formulation is divided into two fractions of which one fraction is accelerator-free and contains the initiator”. To the extent Applicant means to claim a two-component composition, the “formulation” of claim 10 is a composition of matter comprising 30-50 wt% of resin, 35-60 wt% of blowing agent, 0.1-2.5 wt% of peroxide, optional accelerator, optional additive, and 5-30 wt% filler resulting from the immediate mixing of a 2-component coating. See page 3, lines 8-13 of the specification. Since claim 24 in effect requires the formulation of claim 10 to not be a combined formulation of the listed materials, claim 24 fails to include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 implied to be accelerator-free.
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 1/9/2026 have been fully considered but they are not persuasive.
The examiner has adequately responded to Applicant’s arguments of 10/24/2025, which appear both within the previously submitted remarks and Declaration, within the office action mailed 11/25/2025 the discussion of which is incorporated herein by reference. The Examiner has reviewed each of the alleged “unrebutted evidence” and finds that each item was adequately addressed within the Response to Arguments section of the office action of 1/9/2026.
Applicant alleges the Declaration contains evidence that should be given more weight than argument. The examiner has reviewed the Declaration and only finds arguments that mirror what was in the submitted remarks. The examiner finds no experimental data or other factual evidence to consider. The contents of the Declaration were afforded their entitled weight per MPEP 716.01(c) and was not found to be sufficient to overcome the rejections of record. The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643, 2 USPQ2d 1437 (Fed. Cir. 1987). See MPEP 716.01(d). The examiner declines to give the Declaration more weight than it is entitled to.
The Examiner adds the following comments in response to statements/argumentation not seen to be presented within the response of 10/24/2025.
Applicant urges a Tg corresponds to a glass transition temperature of amorphous polymers, rather than a melting point. The Examiner agrees with such and this was precisely what the Examiner stated within the last office action.
Applicant generally argues Schmitt teaches adding initiator to the entire composition rather than separating the composition into two components. This is not found persuasive. Claim 10 is not directed toward a particular two component composition with the makeup of each component defined. The Examiner maintains the peroxide initiator added can be reasonably construed as a component that forms a curable formulation for a 2-component intumescent coating. The Examiner declines to read limitations regarding a 2 component composition used to create the formulations from the specification into the claims.
Applicant argues Tsuchiya fails to describe intumescent additives within its coatings. Applicant alleges Tsuchiya describes foaming as undesirable. This is not found persuasive. 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. It is also again noted 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.
Applicant’s arguments with respect to claims 22 and 23 are acknowledged, but are moot in view of the cancellation of these claims.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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