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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/22/2026, has been entered.
Claim Objections
Claims 1-12, 14-17 are objected to because of the following informalities: Claim 1 failed to provide the proper definition of the CDC, which is the abbreviation of Cathodic Dip Coating. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 16 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.
In this case, the claim 16 states wherein before step i) the heat- stable metal substrate S1 does not undergo any pretreatment at the locations of the surface of the heat-stable metal substrate S1 on which the fire protection composition is applied in step i), which indicates the heat-stable metal substrate S1 pretreatment is not required. However, the claim 16 is the dependent claim to the claim 14, which depends on the claim 1, wherein, the claim 1 requires the heat-stable metal substrate S1 is pretreated with a CDC coating solution.
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
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Djamshidian (WO2014131912, herein Djamshidian, a machine translation is being used for citation purpose), in the view of Kasemi (US20190177472, herein Kasemi).
Regarding Claims 1, 2, 7, 11, Djamshidian teaches fire protection composition [0013] comprising a component A and a component B;
wherein the component A comprises:
“10-70, weight-% of at least one liquid epoxy resin which has on average more than one epoxy group per molecule A1, based on the total weight of component A; 10-70, in weight-% of ammonium polyphosphate A2, based on the total weight of component A” [0015] lie in the claimed ranges.
“preferably 3-8, % by weight of at least one epoxy group-bearing reactive diluent A4, in particular selected from the group consisting of hexanediol diglycidyl ether” [0043] reads on the A3 and lies in the claimed range.
and the component B comprises:
“Jeffamine ® D-400” [0069] matches “Jeffamine® D-400” [Instant App. P4; 0076] as adduct B2.
“1,2-, 1,3- and 1,4-diaminocyclohexane” [0065] matches “1,2-, 1,3- or 1,4-diaminocyclohexane” [Instant App. P4; 0079] as B3;
“tertiary amine B2, in particular 2,4,6-tris (dimethylaminomethyl) phenol” [0071] matches “2,4,6-tris(dimethylaminomethyl)phenol.” [Instant App. P4; 0083] as B4.
Djamshidian teaches “D1 is a cycloaliphatic primary diamine” [0067-68] which matches B3; “D2 is an arylaliphatic primary diamine” [0068] which matches B2; “tertiary amine B2” [0071] matches B4.
Djamshidian further teaches “D1: D2: B1: B2 = 1: 0.5-2: 0.5-2: 0.3-1.2, in particular 1: 0.8-1 .5: 0.8-1 .5: 0.5-0.9.” hence, the B2:B3: B4 is (0.5-2):1:(0.3-1.2), hence, overlaps the claimed range.
Djamshidian does not explicitly teach the adduct B1 from (i) at least one polyamine having at least three amine hydrogens reactive toward epoxide groups with (ii) at least one epoxy. However, Kasemi teaches “further amines are also adducts having at least three amine hydrogens, formed from at least one polyamine having 2 to 12 carbon atoms and at least one epoxide” [0134], which is “EP adduct 2: reaction product of propylene-1,2-diamine and Araldite® DY-K” [0230] matches the adduct B1 formed with “Cresyl glycidyl ether Araldite® DY-K” [Instant App. P3; 0065] and “1,2-propylenediamine” [Instant App. P3; 0068], Kasemi further teaches the “0% to 10% originate from further amines” [0152]; meanwhile, “ further amines; Jeffamine® D-230, Jeffamine® D-400” [0121] which matches the “Jeffamine®D-230, Jeffamine® D-400” [Instant App. P4; 0076] matches claimed B2, hence the ratio between EP adduct 2 to B2 can be 1:1. Hence, overlaps the claimed B1:B2:B3:B4 ratio.
Djamshidian and Kasemi are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the epoxy resin composition development toward protective coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teachings of Kasemi and provide wherein said the specified adduct B1 and the claimed range into the composition development.
Doing so would lead to the desired property of “Curing typically gives rise to substantially clear, glossy and nontacky films of high hardness which have good adhesion to a wide variety of different substrates.” [0219] as taught by Kasemi.
Djamshidian and Kasemi collectively teach the corrosion-resistant fire protection composition as set forth above, the heat-stable substrate S1, and the heat-stable metal substrate Si is pretreated with a CDC coating solution is the statement of intended use and not being given weight. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).” See MPEP 2111.02.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Djamshidian and Kasemi teach all of the claimed ingredients, in the claimed amounts, molecular structures, and Djamshidian teaches “component A is mixed with component B before applying the fire protection coating” [0084], indicates the composition as being made by a substantially similar process, wherein, the instant application discloses components A and B are preferably mixed [Instant App. US20230272228; 0110]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., viscosity, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 3, Djamshidian teaches “Araldite® PY 304” [0032] reads on the epoxy liquid resin A1 from instant application specification, hence, can match all claimed structure feature of A1.
Regarding Claim 4, Djamshidian teaches epoxy group-bearing reactive diluent A4, in particular selected from the group consisting of hexanediol diglycidyl ether [0043] reads on A3.
Regarding Claim 5, Djamshidian teaches “component A comprises 1-10, in particular 5-10, % by weight of at least one triaryl phosphoric acid ester or trialkyl phosphoric acid ester A5, based on the total weight of component A.” [0049] which lies in the claimed range.
Regarding Claim 6, Djamshidian teaches “in particular 2-6, % by weight of 2-ethyl-2-[[(1-oxoallyl)oxy]methyl]-1,3-propanediyl diacrylate A6, based on the total weight of component A.” [0052] lies in the claimed range.
Regarding Claim 8, Djamshidian teaches “Particularly preferred are ether group-containing aliphatic primary diamines with a molecular weight of 200-600 g/mol.” [0070] lies in the claimed range.
Regarding Claim 9, Djamshidian teaches “1, 3- bis (aminomethyl) cyclohexane” [0065].
Regarding Claim 10, Djamshidian teaches “2,4,6-tris (dimethylaminomethyl) phenol” [0071] matches “B4 is particularly preferably a Mannich base, in particular 2,4,6-tris(dimethylaminomethyl)phenol.” [Instant App. P4; 0083].
Regarding Claim 12, Djamshidian teaches “component A is mixed with component B before applying the fire protection coating.” [0084], which indicates the separated storage of A and B before application.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Djamshidian (WO2014131912, herein Djamshidian, a machine translation is being used for citation purpose), and Kasemi (US20190177472, herein Kasemi) as applied in claim 1 set forth above, in the view of Hofstetter (US20100310878, herein Hofstetter) and Menzel (WO2013041395, herein Menzel, a machine translation is being used for citation purpose), as evidenced by Steel Electro Plating Data, 04/2003.
Regarding Claims 14-16, Djamshidian and Kasemi collectively teach the fire protection composition ingredients and amounts according to the specification set forth above. Djamshidian does not teach the heat-stable substrate S1 and the treatment, however, Hofstetter teaches heat-stable substrate including: aluminum reads on heat- stable metal substrate S1 and CDC-coated steel [0154], reads on step i') is carried out, wherein, the evidence ref_Steel Electro Plating Data proves the CDC coated steel condition as of the substrates of steel are typically immersed for 90 to 360 seconds at cathodic e-coat baths with temperature between 60 to 80°F (15 to 26 °C) [Steel Electro Plating Data, 04/2003; Page 2; Para. 2 and 6] meet the claimed wherein the metal substrate S1 is brought into contact with a CDC coating solution at a temperature between 20 and 100°C for 1-15 min. Djamshidian and Hofstetter are considered analogous arts because they are reasonably pertinent to the problem faced by the inventor, that of diglycidyl ether and arylaliphatic primary diamines based epoxy resin composition formation toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modified the teaching of Djamshidian and add the heat-stable substrate including: aluminum and CDC-coated steel [0154], into the coating application. Doing so would lead to the epoxy composition coating application toward more specific substrates selection owing to suitability.
Djamshidian does not explicitly teach the coating method step ii), however, Menzel teaches “the coating materials can also be used to produce coatings which, at 40 - 250°C,” [0175] overlaps the claimed range, “drying conditions are, for example, 5 to 60 minutes” [0048] overlaps the claimed range. Djamshidian and Menzel are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the hexanediol diglycidyl ether and ammonium polyphosphate-based epoxy resin composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the teachings of “the coating materials can also be used to produce coatings which, at 40 - 250°C” [0175], “whereby drying should be carried out after each application so that the solvent is substantially removed from the coating. Typical drying conditions are, for example, 5 to 60 minutes” [0048] into the coating process. Doing so would lead to the desired property of “coating light alloy rims in which the energy and/or time requirements for drying, film formation and/or curing can be reduced and/or the use of volatile organic compounds can be reduced.” [0219] as taught by Menzel.
Regarding Claim 17, Djamshidian, Kasemi, Hofstetter and Menzel collectively teach the method for coating heat-stable substrates as set forth above. The coating layer thickness is recognized as a result-effective variable, which can be controlled through processing conditions, including: the number of layers to provide the desired fire protection effect, with the optimized amount of materials coated on the selected substrate. The Supreme Court has clarified that an "obvious to try" line of reasoning may properly support an obviousness rejection. In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation, because "obvious to try" is not a valid rationale for an obviousness finding. However, in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), the Supreme Court held that "obvious to try" was a valid rationale for an obviousness finding, for example, when there is a "design need" or "market demand" and there are a "finite number" of solutions. 550 U.S. at 421, 82 USPQ2d at 1397. See 2144.05 IIB
Response to Arguments
Applicant’s arguments, filed 5/22/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Djamshidian (WO2014131912, herein Djamshidian, a machine translation is being used for citation purpose), Kasemi (US20190177472, herein Kasemi).
In this case, the applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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