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 .
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 1-4, 6-11, 15-19 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.
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 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 have modified Djamshidian 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.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 3, Djamshidian teaches “Araldite® PY 304” [0032] matches “Araldite® PY 304” [P6; Table 1], hence, inherently matches all claimed structure feature of A1.
Regarding Claim 4, Djamshidian teaches “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] lies in the claimed range.
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.
Regarding Claim 13, Djamshidian and Kasemi collectively teach all the composition limitations of the fire protection coating as disclosed in the specification.
The use of the fire protection composition for coating heat-stable substrates is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07]
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), in the view of Kasemi (US20190177472, herein Kasemi), and Menzel (WO2013041395, herein Menzel, a machine translation is being used for citation purpose).
Regarding Claims 14-16, Djamshidian and Kasemi collectively teach the fire protection composition ingredients and amounts according to the specification.
Djamshidian teaches “applying an insulation board as described above to the substrate, wherein the fire protection coating is arranged on the side facing away from the substrate” [0085] reads on the step i) applying a fire protection composition according to claim 1 to the surface of a heat-stable substrate S1, wherein, the insulation board matches the heat-stable substrate, which also indicate the claimed S1 does not undergo any pretreatment at the locations of the surface of the heat-stable substrate S1 on which the fire protection composition is applied in step i).
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.
Menzel further teaches “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] overlaps the claimed range, and indicates the coating composition still attached the substrates as the solvent existence, until the removal of the solvent, which matches the coated heat-stable substrate S1 is brought into contact with a CDC coating solution at a temperature.
Djamshidian and Menzel are both considered to be analogous to the claimed invention because they are in the same field of 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 have modified Djamshidian to add the teachings of Menzel and provide wherein said the specified coating process and parameters.
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.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 17, Djamshidian teaches “enable layer thicknesses of 0.1 - 2 mm. Epoxy-based fire protection coatings” [0020], lies in the claimed range.
Conclusion
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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/Z.L./
Examiner, Art Unit 1767
/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767