DETAILED ACTION
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1 December 2025 has been entered.
Claims 1, 4, 5, 7-12, 14, 16, 19, and 22-31 as amended are pending, with claims 25 and 26 withdrawn.
Claim Objections
Claims 4, 5, 7-12, 14, 16, 19, 22-24, 27-31 objected to because of the following informalities: the recitation of “a composition as claimed in claim 1” or “a coating composition as claimed in claim 1” or “a coating composition according to claim 1” in claims 4, 5, 7-12, 14, 19, 22-24, 27-31 should be changed to “the coating composition as claimed in claim 1”. In claim 16, “A coating as claimed in claim 14” should be changed to “The coating as claimed in claim 14”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 recites “an aromatic epoxy-based binder”, “a curing agent”, “hollow, inorganic, spherical, filler particles”, “hollow, organic, spherical, filler particles,” “a thickener”, “the total amount of epoxy-based binder,” without indicating whether these are the same components as recited previously or in claim 1.
Claim Rejections - 35 USC § 102
Claim(s) 1, 4, 7, 8, 11, 12, 14, 16, 19, 23, and 28-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”).
The additional references are used to evidence that certain limitations are inherent in the teachings of US 2009/0212252. See MPEP 2131.01.
As to claims 1, 4, and 8, Elgimiabi C teaches a composition for coating (para. 0110). Elgimiabi C teaches an epoxy resin, thus an epoxy based binder (abstract) and a curing agent (abstract). Elgimiabi exemplifies polyetheramine curing agent (Jeffamine D-230) (para. 0129), which is polyoxyalkylene amine curing agent. Elgimiabi C teaches that the curing agent may be other listed curing agents (para. 0062-0064).
Elgimiabi C teaches compositions containing two different types of hollow microspheres (abstract). The first are hollow inorganic microspheres, specifically glass microspheres (para. 0081) as required by claim 4. The second are organic microspheres (para. 0082). Elgimiabi C teaches the use of a greater amount of inorganic than organic microspheres (para. 0089).
Elgimiabi C teaches example 2 (Table 3) of Composition A1 and B2 mixed at a 1:2 ratio (para. 0132). It is calculated, based on the density of the Dualite organic spheres (0.0655 g/cm3, para. 0129), and glass bubbles (0.32 g/cm3, for Scotchlite D32/4500, as evidenced by Elgimiabi, para. 0063), it is estimated that example 2 has inorganic spherical filler particles and hollow organic spherical filler particles in a ratio of approximately 1.67:1, which is within the range of claims 1 and 8.
Elgimiabi C does not explicitly discuss a thickener. However, the examples teach the use of imidazole derivatives, which as evidenced by Yin, para. 0036, is a thickening agent.
As to claim 7, Elgimiabi C teaches the use of organic hollow spherical particles having a size of 130 micrometers, and glass bubbles having an average particle size of 85 micrometers (para. 0129).
As to claim 11, Elgimiabi C teaches mixing the components (para. 0132).
As to claim 12, Elgimiabi C teaches a first mixture contiaining epoxy binder, glass bubbles, and organic microspheres, and a second composition containing cuiring agent and both types of spherical fillers (para. 0132). As discussed with respect to claim 1, this is calculated to have the recited ratio of fillers, and both fillers are present in at least one of the compositions.
As to claim 14, Elgimiabi C teaches coating onto a surface (para. 0133).
As to claim 16, Elgimiabi C does not discuss insulating coating. However, Elgimiabi C teaches the same composition, and is thus presumed to be insulating.
As to claim 19, the composition of Example 2 has no solvents.
As to claim 23, Elgimiabi C does not discuss the recited characteristics. However, the composition of Elgimiabi C, containing the recited components, especially the hollow microspheres, would be expected to have the thermal conductivity as recited.
As to claim 28, Elgimiabi C teaches curing at room (ambient) temperatures (para. 0133).
As to claims 29-31, Elgimiabi C, example 2, lacks the recited compounds.
Claim(s) 27 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”), US 2016/0115283 (“Yin”), and WO 00/22025 A1 (“Fletcher”).
The additional references are used to evidence that certain limitations are inherent in the teachings of US 2009/0212252. See MPEP 2131.01.
The discussion of Elgimiabi C with respect to claim 1 is incorporated by reference. Example 2 of Elgimiabi C teaches the use of epoxy resin Epikote 232, which as evidenced by Fletcher, p. 9, is a liquid epoxy resin with EEW in the recited range.
Claim Rejections - 35 USC § 103
Claim(s) 5, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”).
The discussion of Elgimiabi C with respect to claim 1 is incorporated by reference.
As to claim 5, Elgimiabi C exemplifies glass bubbles (inorganic spherical hollow particles) having average diameter of 85 micrometers (para. 0129). Elgimiabi C does not exemplify organic spherical hollow particles in the recited average diameter range; However, Elgimiabi C teaches a preferred diameter of organic microspheres between 20 and 180 micrometers (para. 0084), and as such, it would be obvious to modify the composition of Elgimiabi C with organic microspheres in the recited range as taught to be suitable by Elgimiabi C.
As to claim 22, Elgimiabi C suggests using more inorganic spherical particles than organic spherical particles, but does not exemplify the recited weight ratio. Elgimiabi C teaches 8 to 30 wt % of the inorganic spherical particles and 1 to 10 wt % of the organic spherical filler particles (para. 0090), which includes compositions within the recited range for the ratio. As such, modifiying the composition of Elgimiabi C to have the recited weight ratio of inorganic to organic spherical particles is obvious as within the suggested ranges of Elgimiabi C.
As to claim 24, Elgimiabi C, example 2, uses bisphenol type epoxy binder (para. 0129). Elgimiabi teaches curing at room temperature (para. 0131), and thus the curing agent is presumed to be curable at ambient temperature. Elgimiabi C teaches glass bubbles having the recited average size (para. 0129), and polyacrylonitrile based organic spherical particles of the recited particle diameter (para. 0129). As discussed with respect to claim 1, the imidazole is a thickener as evidenced by Yin, para. 0036. The amount of epoxy resins (Epikote 232 and Cardolites) of Example 2, Tables 1 and 2, is calculated to be approximately 49 wt %.
Elgimiabi C suggests using more inorganic spherical particles than organic spherical particles, but does not exemplify the recited weight ratio. Elgimiabi C teaches 8 to 30 wt % of the inorganic spherical particles and 1 to 10 wt % of the organic spherical filler particles (para. 0090), which includes compositions within the recited range for the ratio. As such, modifiying the composition of Elgimiabi C to have the recited weight ratio of inorganic to organic spherical particles is obvious as within the suggested ranges of Elgimiabi C. Given the relative density of the inorganic and organic spherical filler particles, the compositions of Elgimiabi C in the recited weight ratio would also have a volume ratio in the recited range.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) in view of EP 3333211 A1 (“Elgimiabi B”), as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”).
The discussion of Elgimiabi C with respect to claim 1 is incorporated by reference. Elgimiabi C teaches additional adjuvants (para. 0093), but does not specify the recited thickener. While the recited material is not recited, it is known that polyamide wax is suitable thixotropic (thickening agent) for use in curable epoxy resins (para. 0077, table 1) for controlling flow (para. 0058), and as such, the use of polyamide wax for similar purposes is an obvious substitution suggested by Elgimiabi B.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0212252 (“Elgimiabi C”) in view of US 2013/0260042 (“Campbell”) as evidenced by US 2008/0167412 (“Elgimiabi”) and US 2016/0115283 (“Yin”).
The discussion of Elgimiabi C with respect to claim 1 is incorporated by reference.
Elgimiabi C teaches the use of further adjuvants, including adhesion promoters (para. 0093), but does not discuss organosilane adhesion promoters. However, as shown by Campbell, para. 0087, common adhesion promoters for epoxy coatings include organosilane compounds, and as such, the use of such an adhesion promoter is an obvious modification for improving adhesion known in the art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4, 5, 7-12, 14, 16, 19, 22-24, and 27-31 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764