DETAILED ACTION
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 .
The Office Action is in response to the application filed November 09, 2022.
Claim Analysis
Summary of Claim 1:
A composition for a coating, comprising:
epoxy-functional monomers;
a diluent; and
a sufficient amount of a hydrophobicity-modifying additive that is reactive in an epoxide polymerization to provide a coating formed from the composition having a contact angle of at least 900 when measured with an Ossila Goniometer following ASTM D7334 - 08(2013).
Drawings
The drawings are objected to because Fig. 1-6, 13-15, 20, 25 contain blurry images; Fig. 7-12, 16-18, 22-24 contain blurry text; and the lines of Fig. 12 are indifferentiable as all appear equally dark. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 41, 43, 125, and 127 objected to because it is unclear what is the “Ca” in “Ca magnesium silicate”. Ca is the symbol for Calcium, however, the instant Specification [¶ 00134] discloses Ca magnesium silicate is talc. “Calcium magnesium silicate” does not appear to be the intended meaning of Ca magnesium silicate, because calcium magnesium silicate is not talc. As such “Ca magnesium silicate” will be interpreted to be “magnesium silicate,” otherwise known as talc. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14, 40, 43, 48, 53, 56, 62, 64, 76-77, 127, 136, 142 and 144 are 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 pre-AIA the applicant regards as the invention.
Claim 14, 53, 56, 64, 136, 144 contains the trademark/trade names: Silikopon® ED, Silikopon® EF, EPOSIL Resin 5550®, Silmer®OHT Di-10, Silmer®OHT Di-50, Silmer®OHT Di-100, Silmer®OHFB10, Additol VXW 6208, Soldplus D610, K-Sperse A504, Additol VXW 6210N, BYK-A 530, Tego Airex 900®, BMI 689, and Thixatrol ST®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify copolymers, dispersants, defoamers, and a castor oil derivative and, accordingly, the identification/description is indefinite.
The term “low-temperature,” in the “low-temperature hardener” and “low-temperature curing catalyst” of Claim 76-77, is a relative term which renders the claim indefinite. The term “low-temperature” is not defined by the claim. While Claim 77 and the instant Specification provide examples of low-temperature hardener such as phenalkamine and low-temperature curing catalyst such as 2,4,6- tris[(dimethyllamino)methyl]phenol, the claim language does not define the "low-temperature” in terms of units of temperature. Furthermore, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “a reaction product of triethylenetetramine with phenol and formaldehyde and polyethylenepolyamines” of Claim 77 is unclear whether the reaction product is a product of (1) triethylenetetramine and phenol, (2) triethylenetetramine, phenol, and formaldehyde, or (3) triethylenetetramine, phenol, formaldehyde and polyethylenepolyamines. For the purpose of examination, “a reaction product of triethylenetetramine with phenol and formaldehyde and polyethylenepolyamines” will be interpreted to mean “reaction product is a product of triethylenetetramine and phenol” only.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-2, 4, 7, 14, 18, 20, 25, 28, 33, 40, 48-49, 62, 75-77, 86, 101, 108, 110, 113, 116, 120, 133, 142 are rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brown et al. (US 2010/0256291 A1; as disclosed in the IDS dated 09/19/2024; hereafter as “Brown”).
Regarding Claims 1-2, 20, 25, 40, 48, 62, Brown teaches a highly chemically and solvent resistant hydrophobic coating [Examples 1-13], corresponding to the composition for a coating of Claim 1. Brown further teaches:
Bis-A epoxy [Example 4], corresponding to the epoxy-functional monomer of Claim 1;
xylene [Example 4], corresponding to the diluent of Claim 1, and thereby reading on the xylene of Claim 20;
perfluoroalkyl polymer in Freon TF in an amount of 10 parts by weight [Example 4], corresponding to a sufficient amount of a hydrophobicity-modifying additive of Claim 1, and thereby reading on the fluoro-based additive of Claim 25;
said coating exhibited a contact angle to water of 120° [Example 2], corresponding to a coating formed from the composition having a contact angle of at least 90° of Claim 1, and thereby reading on the contact angle of about 90° to about 130° of Claim 40;
Zonyl 1300 micropowder in an amount of 120 parts by weight [Example 8] which improves the heavy and extreme rain performance of hydrophobic coatings [¶ 0154-0155], corresponding to a sufficient amount of wear-inhibiting additive to provide a coating with improved corrosion resistance of Claims 2 and 48; and
Zonyl 1300 micropowder in an amount of 10 parts by weight [Example 4], wherein a sufficient amount of microparticles does not exhibit surface roughness [¶ 0054], corresponding to a sufficient amount of the amphiphilicity-modifying additive provides a coating formed from the composition having a wet coefficient of friction of Claims 2 and 62.
However, Brown does not explicitly measure the contact angle of Claim 1 with an Ossila Goniometer following ASTM D7334 - 08(2013), measure the corrosion resistance of Claim 2 and 48 by salt fog resistance, or measure the wet coefficient of friction of Claims 2 and 62 with an ASM 925 COF meter.
Nevertheless, Brown teaches the same composition for a coating as required by the instant claim as set forth above. Therefore, the coating of Brown would inherently result in the same contact angle, corrosion resistance, and coefficient of friction as required by the instant claims if the coating of Brown was subjected to the same testing. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (epoxy monomers, diluent, and additive) for the same utility (to produce a composition) and for the same purpose (to produce a coating).
Regarding Claims 4, 7, 14, 18, 28, 33, 49, 75-77, 101, Brown further teaches:
additives may be incorporated to provide improved texture, thickness and processability, and the use of solvents to liquify and reduce the viscosity of the epoxy [Example 2; ¶ 0090], thereby reading on the rheological additive of Claim 4;
Epoxy and siloxane linkages [Claim 6], thereby reading on the epoxy-functional epoxide-siloxane monomers of Claim 7;
Polymerization product of an isocyanate-containing monomer [¶ 0095], thereby reading on a reaction product of isocyanate of Claim 14;
Dicyandiamide as a reactant agent for curing the epoxy [Example 2], thereby reading on a diluent that is reactive as a curing catalyst of Claim 18, thereby reading on the reactive hardener of Claim 75 and amide hardener of Claim 76, and hardener of Claim 101;
3-glycidoxypropyltrimethoxysilane [Example 3], thereby reading on the epoxy-functional silane of Claims 28, and the glycidoxypropyltrimethoxysilane of Claim 33;
Propylene glycol monomethyl ether acetate [Example 4], thereby reading on the polyatomic alcohol of Claim 49; and
Imidazole [Example 4], thereby reading on the imidazole of Claim 77.
Regarding Claim 86, Brown is silent to epoxy-functional elastomeric monomers, pre-polymers, or resins that comprise butene, which is interpreted to read on free of epoxy-functional elastomeric monomers, pre-polymers, or resins that comprise butene of Claim 86.
Regarding Claims 108 and 142, Brown teaches a solvent resistant hydrophobic coating [Examples 2, 4], corresponding to the additives composition for use in forming a coating of Claim 108. Brown further teaches:
said coating exhibited a contact angle to water of 120° [Example 2], corresponding to a coating formed from the composition having a contact angle of at least 90° of Claim 108, and thereby reading on the contact angle of about 90° to about 130° of Claim 142;
Zonyl 1300 micropowder in an amount of 120 parts by weight [Example 8] which improves the heavy and extreme rain performance of hydrophobic coatings [¶ 0154-0155], corresponding to a sufficient amount of wear-inhibiting additive to provide a coating with improved corrosion resistance of Claims 108 and 142; and
Zonyl 1300 micropowder in an amount of 10 parts by weight [Example 4], wherein an insufficient amount of microparticles does not exhibit surface roughness [¶ 0054], corresponding to a sufficient amount of the amiphiphilicity-modifying additive provides a coating formed from the composition having a wet coefficient of friction of Claims 108 and 142.
However, Brown does not explicitly measure the contact angle with an Ossila Goniometer following ASTM D7334 - 08(2013), measuring corrosion resistance by salt fog resistance, or measuring a wet coefficient of friction with an ASM 925 COF meter.
Nevertheless, Brown teaches the same composition for a coating as required by the instant claim as set forth above. Therefore, the coating of Brown would inherently result in the same contact angle, corrosion resistance, and coefficient of friction as required by the instant claims if the coating of Brown was subjected to the same testing. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (epoxy monomers, diluent, and additive) for the same utility (to produce a composition) and for the same purpose (to produce a coating).
Regarding Claims 110, 113, 116, 120, 133, Brown further teaches:
additives may be incorporated to provide improved texture, thickness and processability, and the use of solvents to liquify and reduce the viscosity of the epoxy [Example 2; ¶ 0090], thereby reading on the rheological additive of Claim 110;
perfluoroalkyl polymer in Freon TF [Example 4], thereby reading on the fluoro-based additive of Claim 113;
3-glycidoxypropyltrimethoxysilane [Example 3], thereby reading on the epoxy-functional silane of Claim 116, and on the glycidoxypropyltrimethoxysilane of Claim 120; and
Propylene glycol monomethyl ether acetate [Example 4], thereby reading on the polyatomic alcohol of Claim 133.
Claim Rejections - 35 USC § 103
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2010/0256291 A1; as disclosed in the IDS dated 09/19/2024; hereafter as “Brown”) in view of Foscante et al. (US4250074; hereafter as “Foscante”).
Brown teaches the coating, monomers, diluent and additives of Claims 1 and 108 as set forth above and incorporated herein by reference.
However, Brown is silent to wherein the epoxy-functional epoxide-siloxane monomers comprise an epoxide backbone comprising siloxane or polysiloxane side-chains of Claim 10.
Nevertheless, Foscante teaches a method of producing a polymer network comprising epoxy polymer and polysiloxane [Abstract] by polymerizing epoxy resin and silane groups [Column 2, Lines 42-55] which read on the epoxide backbone comprising poly-siloxane side-chains. Foscante further teaches said epoxy-polysiloxane polymer network demonstrates improved physical and chemical properties over polymer networks of each polymer alone [Abstract].
Brown and Foscante are considered to be analogous art as the claimed invention, as all are in the same field of coatings comprising epoxy and polysiloxane.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the epoxy and polysiloxane of Foscante with the coating composition of Brown, thereby arriving at the claimed invention.
Claims 41, 43, 53, 125, 127 and 136 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2010/0256291 A1; as disclosed in the IDS dated 09/19/2024; hereafter as “Brown”) in view of Haruji et al. (US 6639025 B2; cited in the IDS dated 09/19/2024; hereafter as “Haruji”).
Brown teaches the coating, monomers, diluent and additives of Claims 1 and 108 as set forth above and incorporated herein by reference.
However, Brown is silent to the wear-inhibiting additive of Claims 41, 43, 125, and 127.
Nevertheless, Haruji teaches elastomer-modified epoxy-polysiloxane compositions comprising 3 grams of titanium dioxide [Examples 1-2], which is equivalent to 10 wt. % titanium dioxide (3 grams titanium dioxide/29.3 grams total weight = 10 wt. %), thereby reading on the titanium dioxide of Claims 41 and 125, and wherein the titanium dioxide is present in a range of about 5 wt. T to about 30 wt. % of Claims 43 and 127. Haruji further teaches said titanium dioxide can function as a pigment [Examples 1-2].
However, Brown is silent to the polysiloxane of Claims 53 and 136.
Nevertheless, Haruji teaches a hydroxyl-functionalized polysiloxane [Claims 1 and 12], thereby reading on the hydroxyl-functionalized polysiloxane of Claims 53 and 136. Haruji further teaches said polysiloxane composition produces a coating with improved degree of flexibility, impact resistance, crack resistance, and abrasion resistance to cured coatings formed therefrom [Column 2, Lines 58-62].
Brown and Haruji are considered to be analogous art as the claimed invention, as all are in the same field of coatings comprising epoxy, diluent and additives.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the wear-inhibiting additive and polysiloxane of Haruji with the coating composition of Brown, thereby arriving at the claimed invention.
Claims 56 is rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2010/0256291 A1; as disclosed in the IDS dated 09/19/2024; hereafter as “Brown”) in view of Miralles et al. (US 2007/0123443 A1; hereafter as “Miralles”).
Brown teaches the coating, monomers, diluent and additives of Claims 1 as set forth above and incorporated herein by reference.
However, Brown is silent to the polyelectrolyte of Claim 56.
Nevertheless, Miralles teaches a detergent resistant car polish [Abstract] comprising Silquat 3180 [¶ 0018]. Miralles further teaches Silquat 3180 is a commercially available long chain silicone quaternary blend [¶ 0018].
Brown and Miralles are considered to be analogous art as the claimed invention, as all are in the same field of chemically resistant coatings comprising polysiloxane and Silquat 3180.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Silquat 3180 of Miralles with the coating composition of Brown, thereby arriving at the claimed invention.
Claims 63-64, and 143-144 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 2010/0256291 A1; as disclosed in the IDS dated 09/19/2024; hereafter as “Brown”) in view of Wang et al. (CN 105885620 A; translation incorporated herein; hereafter as “Wang”) and as evidenced by BYK (BYK-A 530; NPL; hereafter as “BYK”).
Brown teaches the coating, monomers, diluent and additives of Claims 1 and 108 as set forth above and incorporated herein by reference.
However, Brown is silent to the dispersant, defoamer, and rheological additive of Claims 63-64 and 143-144.
Nevertheless, Wang teaches a high-temperature-resistant, anticorrosive and abrasion-resistant coating comprising BYK-A 530 [Wang; Abstract; ¶ 0078], which BYK teaches is a silicone-modified defoamer [BYK; Page 1]. The BYK-A 530 of Wang thereby reads on the silicone-modified defoamer of Claims 63 and 143, and on the BYK-A 530 of Claims 64 and 144. Wang further teaches BYK-A 530 may also be used as a dispersant and that forming a uniform dispersion produces better properties such as high temperature resistance, wear resistance and corrosion resistance [Wang; ¶ 0036, 0078].
Brown and Wang are considered to be analogous art as the claimed invention, as all are in the same field of corrosion resistant coatings.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the BYK-A 530 of Wang with the coating composition of Brown, thereby arriving at the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 18, 28, 33, 63-64, 75-77, 101, 110, 116, 120, and 143-144 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-2, 4-7, 18, 20, 23, 41, 46-48, 50, 52-56, 58, 62, 66-70, and 75 of copending Application No. 18/566,743 (US 20240199173 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the epoxy-functional monomers, diluent, and hydrophobicity-modifying additive anticipate the instant claimed epoxy-functional monomers, diluent, and hydrophobicity-modifying additive. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764