NON-FINAL REJECTION AFTER FILING RCE
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 § 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 1-16 and 18-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Applicant’s independent claim 1 is deemed to be indefinite in regards to the newly added limitation of: “and wherein the component that acts as a blowing agent is selected from the group consisting of melamine, polyphosphates which at 190 to 300 °C are converted into phosphoric acid in combination with pentaerythritol, and a combination thereof.” [Emphasis added]. What exactly is Applicant trying to claim in the bolded section? Is Applicant trying to claim that when polyphosphates are selected to be the blowing agent that they must always be in combination with a pentaerythritol blowing agent?
Claims 2-16 and 18-20 are also being rejected here because they are either directly or indirectly dependent on rejected independent claim 1.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1-2, 4-6, 9-14, 16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Green et al. U.S. Patent Application Publication No.: 2008/0224105 A1.
Green et al. discloses a liquid intumescent coating composition comprising a resin system. The resin system comprises: 1) at least one polymeric component, 2) one or more ethylenically unsaturated monomeric components and 3) at least one intumescent ingredient. The coating composition is curable to a solid state in a free-radical polymerization reaction, see abstract.
Green et al. discloses that their liquid intumescent coating compositions are NOT based on high molecular weight thermoplastic resins, as used in prior-art intumescent formulations which results in unwanted slow curing times. Rather Green et al.’s liquid intumescent coating compositions do not need any solvent and have fast curing times of no longer than 60 minutes, see paragraphs [0007] and [0015]-[0017]. The concentration of the thermoplastic resin is usually between 10% to 50 wt.% of the liquid intumescent coating composition, see paragraph [0022]. The monomeric component, preferably in liquid form, is contained in a preferred amount of 30% to 90 wt.% of the liquid intumescent coating composition, see paragraph [0025]. The total concentration of the intumescent ingredients (e.g. ammonium polyphosphate, pentaerythritol and/or melamine) is usually from 40% to 85 wt.% of the liquid intumescent coating composition, see paragraph [0046].
Applicant’s liquid foamable intumescent formulations (claims 1-2, 4-6, 9 and 18-20) are deemed to be anticipated over Component A of Green et al.’s EXAMPLE FORMULATION 1 which comprises in part: 29.00 wt.% ammonium polyphosphate, 8.0 wt.% of pentaerythritol, 10.50 wt.% melamine, 31.60 wt.% of (meth)acrylic resin and 10.20 wt.% of methyl methacrylate monomer. NOTE: The Examiner calculated concentration of the (meth)acrylic resin in the resin system (i.e. (meth)acrylic resin + methyl methacrylate monomer) is about 75.60 wt.% and the Examiner calculated concentration of the methyl methacrylate monomer in the resin system (i.e. (meth)acrylic resin + methyl methacrylate monomer) is about 24.40 wt.%.
Applicant’s process for curing the liquid foaming intumescent formulations (claims 10-14 and 16-17) are deemed to be anticipated when said Component A of Green et al.’s EXAMPLE FORMULATION 1 is mixed with Component B which is dibenzoyl peroxide paste.
In the alternative Applicant’s claims are being rejected as being obvious over Green et al. because Green et al. does not verbatim state Applicant’s independent claim 1 limitation of: “a resin system, wherein the resin system comprises at least one first polymer having an average molecular weight Mₙ of between 1,000 and 35,000 g/mol and a glass transition temperature of less than 15°C,”.
It is held that one having ordinary skill in the art would be well motivated to select thermoplastic resins which fall within Applicant’s independent claim 1 limitation of: “a resin system, wherein the resin system comprises at least one first polymer having an average molecular weight Mₙ of between 1,000 and 35,000 g/mol and a glass transition temperature of less than 15°C,” in light of Green et al.’s disclosure of paragraphs [0007] and [0015]-[0017] to the use of lower molecular weight thermoplastic resins to speed up the curing time and to reduce viscosity which is the exact same reasons Applicant gives for the purpose of their invention.
Claim(s) 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al. U.S. Patent Application Publication No.: 2008/0224105 A1.
Green et al. has been described above and differ from Applicant’s claimed invention in that within Component A of Green et al.’s EXAMPLE FORMULATION 1, the concentration of the (meth)acrylic resin in the ((meth)acrylic resin + methyl methacrylate monomer) resin system falls outside of Applicant’s claimed range of the first polymer, and the concentration of the methyl methacrylate monomer in the ((meth)acrylic resin + methyl methacrylate monomer) resin system falls outside of Applicant’s claimed range for the at least one vinylic monomer.
It would have been obvious to one having ordinary skill in the art to use Green et al.’s disclosure of where the concentration of the thermoplastic resin is usually between 10% to 50 wt.% of the liquid intumescent coating composition, see paragraph [0022], and where the monomeric component is contained in a preferred amount of 30% to 90 wt.% of the liquid intumescent coating composition, see paragraph [0025], as strong motivation to actually make liquid intumescent coating compositions wherein the concentration of both the (meth)acrylic resin and the methyl methacrylate monomer fall within Applicant’s claimed concentration ranges. It is well established that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Response to Arguments
Applicant's arguments filed 04/28/26 with the amendment and entered on 05/11/26 with the RCE, have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
Applicant’s said amendment has overcome the previously made prior-art rejections made over Van Den Bergen U.S. Patent Application Publication No.: 2011/0129680 A1.
In light of applicant’s said amendment, a new rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been made over independent claim 1 and all claims either directly or indirectly dependent thereon.
Applicant's traversal argument over the applied prior-art reference to Green et al. U.S. Patent Application Publication No.: 2008/0224105 A1, is that Green et al.’s first polymer is a solid polymer and not a liquid polymer. Applicant then argues that Applicant’s at least one polymer of Applicant’s independent claim 1, has a glass transition temperature of less than 15 degrees C and thus must be in liquid form.
Applicant’s said argument is NOT accepted by the Examiner. It is well known in the art that the glass transition temperature of a polymer is where amorphous polymers transition from hard, glassy, brittle state to a soft, rubbery, flexible state upon heating Said soft, rubbery, flexible state is NOT the same as a liquid state. The Examiner’s position is also supported by Applicant’s own specification where on page 4, lines 23-27 Applicant states: “Liquid polymer does not in this context necessarily mean thin or even free-flowing. Rather, it is preferable that this first polymer present in the reactive resin of the intumescent formulation has a dynamic viscosity at room temperature of 23°C, determined in accordance with DIN EN ISO 2555 using a rotational viscometer (Brookfield DV2T), of less than 250 000 mPas, preferably less than 100 000 mPa.s.” [Emphasis added].
The following Examiner’s comments were made in the previous Final Rejection mailed 03/10/26, and are repeated here because they are still deemed to be relevant to the pending claims.
Applicant's arguments filed 11/25/25 with the amendment have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
In light of Applicant’s amendment to independent claim 1 and the addition of new claims 17-20 (especially new claims 18-20), the Examiner has set forth new prior-art rejections over Green et al. U.S. Patent Application Publication No.: 2008/0224105 A1. Please note that the Examiner has NOT rejected Applicant’s claims 3 and 15 over Green et al., because there is insufficient motivation within Green et al.’s disclosure to actually select Applicant’s specifically claimed first polymer species, as set forth within these claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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