FINAL REJECTION
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.
Claim 17 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 17 is indefinite in regards to the limitation of: “wherein the intumescent formulation is part of a curing coating composition which is a 2C system, the process comprising: mixing two part-compositions of the 2C system together, to obtain a mixture,”. Said limitation is indefinite because it does not explained what is meant by a “2C system” and what components are found within the “two-part-compositions”. It should be noted that independent claim 1 is drawn to a liquid foamable intumescent formulation that is only in one part, as such the individual components within said liquid foamable intumescent formulation cannot be separated.
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 and 16-20 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 polymerisation 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.
Claim(s) 1-9 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Den Bergen U.S. Patent Application Publication No.: 2011/0129680 A1.
Van Den Bergen discloses a flame retardant composition comprising at least one polymer precursor, at least one flame retardant (A) selected from cyclic phosphonate esters responding to formula (I) and at least one flame retardant (B) selected from phosphorus derivatives different from the cyclic phosphonates of formula (I) and their use to make fire resistant glass laminates, see abstract. NOTE: Said phosphorous containing flame retardants (A) and (B) are deemed to encompass applicant’s: “at least one component that acts as a blowing agent at a temperature of above 200°C,”, as set forth in independent claim 1.
Van Den Bergen’s paragraph [0008] teaches: “The flame retardant composition comprises at least one polymer precursor. The term polymer precursor is used to designate a monomer or oligomer or mixtures thereof which have suitable polymerisable functionality, preferably comprising at the chains ends or laterally along the chain, one or more acrylic, methacrylic or vinyl groups.”.
Van Den Bergen’s paragraph [0018] teaches: “The compositions used in the present invention preferably comprise at least one oligomer and at least one monomer such as described here above as polymer precursor.” [Emphasis added].
Van Den Bergen’s paragraph [0018] teaches in part: “The monomers are generally mono-, di-, tri- and/or tetra-(meth)acrylates. Suitable monomers include (meth)acrylic acid, beta-carboxyethyl acrylate, butyl(meth)acrylate, methyl(meth)acrylate, isobutyl (meth)acrylate, 2-ethylhexyl(meth)acrylate, . . . Preferred are mono(meth)acrylates, especially acrylic acid, butylacrylate, methylmethacrylate, 2-ethylhexylacrylate and isobornylacrylate. More preferred are n-butylacrylate, acrylic acid and 2-ethylhexylacrylate.”. NOTE: Said monomers directly encompass applicant’s claimed vinylic monomers, as set forth in independent claim 1 and dependent claims 4-5.
Van Den Bergen’s paragraph [0014] teaches in part: “Preferred oligomers used in the composition according to the invention are those having a molecular weight MW of from 1000 to 10000. Preferred are those having a MW of at least 2000, especially those having a MW of at least 4000. Preferred oligomers have a MW of at most 7000, more preferably of at most 6000 as determined by gel permeation chromatography (GPC).”.
The preferred oligomers are selected from one or more of urethane (meth)acrylates, polyester (meth)acrylates and epoxy (meth)acrylates, see paragraphs [0015]-[0017] and claim 10. NOTE: Said preferred oligomers directly encompass applicant’s claimed “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”, as set forth in independent claim 1 and dependent claims 3 and 15.
Van Den Bergen’s dependent claim 7 reads as followed: “Radiation curable composition according to claim 1 comprising from 25 to 94% by weight of one or more polymer precursor, from 3 to 40% by weight of flame retardant (A) and from 3 to 35% by weight of flame retardant (B).”
Applicant’s claims are deemed to be directly anticipated over Van Den Bergen’s Examples 1-7 as set forth in TABLE 1. All said examples discloses liquid foamable intumescent formulations which comprise in part: 1) at least two species of alkyl (meth)acrylate monomers that read directly on applicant’s claimed vinylic monomers of independent claim 1 and dependent claims 4-5, 2) EBECRYL 230 (an aliphatic difunctional urethane (meth)acrylate having a glass transition temperature of about -39oC according to allnex product datasheet) which reads directly on applicant’s “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”, as set forth in independent claim 1 and dependent claims 3 and 15, 3) AMGARD CU (a mixture of cyclic phosphonate esters) and 4) at least one flame retardant (B) selected from phosphorus derivatives different from the cyclic phosphonates of formula (I). Said phosphorous components read on applicant’s blowing agent of independent claim 1. Also note that the listed concentration amounts for the above listed components are deemed to fall directly within applicant’s claimed but indefinite concentration ranges as set forth in dependent claims 6-9.
Claim(s) 10, 13-14 and 17 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 Van Den Bergen U.S. Patent Application Publication No.: 2011/0129680 A1.
Van Den Bergen has been described above and applicant’s claims are deemed to be anticipated over Van Den Bergen’s process of laminating two glass plates together, using the disclosed curing compositions of Examples 1-7 as a bonding/intumescent layer, between said two glass plates. Van Den Bergen’s curing process involves first incorporating a UV initiator into the curable compositions and then irradiating said mixture with UV light for 20-25 minutes. Please note that Van Den Bergen’s taught curing process has NO indication at all of any delay of beyond 20 minutes to start the curing process. As such, Van Den Bergen’s curing process is deemed to fully meet applicant’s claimed limitation of : “applying the mixture to a substrate within 20 min., and curing the mixture within a further 120 min.”[Emphasis added], as set forth in dependent claim 10. Likewise, Van Den Bergen’s curing process has no indication of any heating step, and as such the curing temperature is deemed fall within applicant’s temperature range of dependent claim 13 which reads on room temperatures. Finaly, Van Den Bergen’s curing process has no indication of any weight loss by evaporation of the curing composition during mixing, application to a substrate and then curing. As such, Van Den Bergen’s curing process is deemed to fully met limitations of applicant’s dependent claim 14.
In the alternative, Van Den Bergen’s curing process could be said to “differ” from applicant’s very indefinite claims 10 and 13-14, in that there is not a verbatim statement to the effect of: “applying the mixture to a substrate within 20 min., and curing the mixture within a further 120 min.” [Emphasis added], as set forth in dependent claim 10.
In any case, Applicant’s claims are deemed to be clearly obvious over Van Den Bergen’s process of laminating two glass plates together using the disclosed curing compositions of Examples 1-7 as a bonding/intumescent layer between said two glass plates, for the reasons set forth above and because such adjusting curing time and curing temperatures, easily fall within the skill set of one having ordinary skill in the art.
Claim(s) 11-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Van Den Bergen U.S. Patent Application Publication No.: 2011/0129680 A1 in view of Chung U.S. Patent Application Publication No.: 2018/0229480 A1.
Van Den Bergen has been described above and differ from applicant’s claimed invention in there does not seem to be a direct disclosure to where Van Den Bergen’s peroxide curing initiators (see paragraph [0032]) are selected to be applicant’s specifically claimed organic peroxides.
Chung discloses impact-resistant lightweight polymeric laminates wherein glass plates can be bonded together with a liquid curable resin formulation that comprise in part: 1) (urethane acrylate, acrylated acrylic, allylic, amine modified acrylate, chlorinated polyester acrylate, epoxy acrylates, epoxy methacrylate, fatty acid modified acrylate, melamine acrylate, polyester acrylate, silicone acrylate, urethane methacrylate,) and 2) organic peroxides curing initiators such as diacyl peroxide, dialkyl peroxide, hydroperoxide, monoperoxycarbonate, peroxydicarbonate, peroxyester, peroxyketal, ketone peroxide, and the like, see paragraph [0124].
It would have been obvious to one having ordinary skill in the art to use the disclosure of the secondary reference to Chung, that applicant’s claimed organic peroxide species are well known curing initiators for urethane (meth)acrylates, epoxy (meth)acrylates and/or polyester (meth)acrylates, as motivation to actually use said organic peroxide curing initiators as the peroxide curing initiators in Van Den Bergen’s curing process which also uses urethane (meth)acrylates, epoxy (meth)acrylates and/or polyester (meth)acrylates. It is well known that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Response to Arguments
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.
Furthermore, Applicant’s new claims 18-20 have NOT been rejected over Van Den Bergen U.S. Patent Application Publication No.: 2011/0129680 A1, because there is insufficient motivation within Van Den Bergen’s disclosure to select ammonium polyphosphate, pentaerythritol and/or melamine as the intumescent components.
Finally, the prior-art rejections of Applicant’s claims 1-17 over Van Den Bergen remain for the reasons set forth above and for the reasons set forth in the Interview Summary Sheet mailed 11/26/25. It should be noted that Applicant’s traversal arguments made over the Van Den Bergen rejections, as set forth in the Amendment filed 11/25/25, are basically identical to Applicant’s traversal argument made in the interview held on 11/19/25 and mailed 11/26/25. As such, the Examiner’s rebuttal arguments, as set forth in the Interview Summary Sheet, are incorporated by reference in this office action.
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.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764