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 .
This action is responsive to the amendment filed on March 30, 2026.
Claims 1-10, 12-20, 23-24 are pending. Claims 18-20 are withdrawn. Claims 23-24 are newly added.
Claims 1-5, 7-10, 12-17 stand rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/717,712.
The rejection of claims 1-3, 5-6, 9, 11 under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Jordan et al is withdrawn in view of Applicant’s amendment.
The rejection of claims 1, 3-5, 7-8, 10-17 under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al is withdrawn in view of Applicant’s amendment.
Claims 4, 7-8, 10, 12-17 stand rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al in view of Anderson et al.
The rejection of claims 1, 3-6, 8, 10 under 35 U.S.C. 103 as being unpatentable over Brooks et al is withdrawn in view of Applicant’s amendment.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on March 30, 2026 is acknowledged.
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 1-5, 7-10, 12-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/717,712 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. 18/717,712 claims a intumescent coating composition comprising 5-40wt% of epoxy binder, curing system comprising benzylamine on at least one end of a polyamine chain and fatty amine comprising NH2 functional groups, 0.1-15wt% of reactive diluent, 0.1-15 wt% of hydrocarbon resin, 10-50wt% of acid generating compound, 0.5-10wt% of expansion agent, 0-20wt% of carbon donor; the reactive diluent is an aliphatic epoxy functional reactive diluent; the hydrocarbon comprises C and H atoms only or C, H and 0-10wt% of O; solids content of at least 95wt% (Claims 1-12). It is clear that all of the elements of claims 1-5, 7-17 are found in US Application No. 18/717,712 claims 1-12. The difference between the instant claims and US Application No. 18/717,712 lies in the fact that US Application No. 18/717,712 is more specific. Instant claims 1-5, 7-17 are anticipated by claims 1-12 of US Application No. 18/717,712.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10, 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al (WO Patent 2020/225531 (already of record)) in view of Anderson et al (US Patent Application 2016/0160059 (already of record)).
Regarding claims 1-10, 12-17, Jordan et al teaches an intumescent composition comprising 14.1wt% of a silane, 1.41wt% of an amino curing agent, 14.1wt% of an epoxy resin and epoxy reactive diluent, 37.23 wt% of ammonium polyphosphate (which satisfies acid generating compound), 12.98wt% of melamine (which satisfies claimed expansion agent) and 3.88 wt% of pentaerythritol (which satisfies claimed carbon donor compound) (Table 1). Jordan et al further teaches Geniosil STP-E10 (which satisfies claimed formula I/II) (Table 1). Jordan et al further teaches DER732P reactive epoxy diluent (which satisfies claimed aliphatic epoxy reactive diluent) (Table 1). Jordan et al further teaches an intumescent comprising 10-30wt% of a silane, 1-3wt% of aminosilane, 6-25wt% of an epoxy (Pg. 2), 25-65wt% of a phosphorus containing compound, 5-30wt% of a gas source, 0.1-15wt% of a carbon source and a reactive diluent (Pgs. 3-5). However, Jordan et al fails to specifically disclose hydrocarbon resin, the solids content of at least 95wt% and triamino curing agent.
In the same field of endeavor, Anderson et al teaches an intumescent coating composition comprising 10-80wt% of organic resins such as polyethylene, polypropylene, polybutene, polypropene (Abstract, Paragraphs 156, 163-164). Anderson et al further teaches amine curing comprising one or more amine groups such as triamino-trimethoxysilane and N-phenyl-3-aminopropyltrimethoxysilane (Paragraphs 156-158).
With regard to the hydrocarbon resin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided 10-80wt% of hydrocarbon resin in Jordan et al in view of Anderson et al in order to provide a polymer containing carbon that provides expansion gas properties and charring properties when exposed to heat.
With regard to the solids content, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the solids content of at least 85% in Jordan et al in view of Anderson as Jordan et al teaches an intumescent comprising 10-30wt% of a silane polymer, 1-3wt% of aminosilane, 6-25wt% of an epoxy (Pg. 2), 25-65wt% of a phosphorus containing compound, 5-30wt% of a gas source, 0.1-15wt% of a carbon source and a reactive diluent; hence, providing 95wt% of solids or greater would only be obvious the ordinary artisan. A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to triamino curing agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a triamino curing agent in Jordan et al in view of Anderson et al as Jordan et al already teaches an aminosilane curing agent. Simple substitution of one known aminosilane curing agent for another would achieve the predictable results of curing the intumescent composition.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al (WO Patent 2020/225531 (already of record)) in view of Anderson et al (US Patent Application 2016/0160059 (already of record)) as applied to claims 1-10, 12-17 above, and further in view of Amidaiji et al (US Patent Application 2009/0123758).
Regarding claims 23-24, Jordan et al and Anderson et al disclose the invention substantially as claimed. Jordan et al and Anderson et al teach the features above. However, Jordan et al and Anderson et al fail to specifically disclose a C9 petroleum resin having 450g/mol molecular weight.
In the same field of endeavor, Amidaiji et al teaches an epoxy coating composition comprising an epoxy resin, curing agent and a modifier comprising a hydroxyl group containing petroleum resin (Abstract). Amidaiji et al further teaches the hydroxyl group containing petroleum resin to provide water resistance (Paragraphs 46-47). Amidaiji et al further teaches Neopolymer E-100 molecular weight 450 (Paragraph 121).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a C9 petroleum resin in Jordan et al and Anderson et al in view of Amidaiji et al in order to provide water resistance to the epoxy intumescent coating composition.
Response to Arguments
Applicant's arguments filed March 30, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Jordan et al in view of Anderson et al, Applicant argues unexpected results. The Examiner respectfully disagrees with the above argument because the instant claims are not commensurate in scope with the claimed examples/showing. It has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results, In re Greenfield, 197 USPQ 227. Applicant argued unexpected results with regard to hydrocarbon resins compensating for reduced silane content in Examples 5 and 6; the showing is only true for the components in Examples 5 and 6 and their proportions therein, not the claims as instantly recited.
With respect to the double patenting rejection, Applicant argues that copending Application No. 18/717,712 recites two different curing agents comprising a benzylamine motif and a fatty amine motif. The Examiner respectfully disagrees with the above argument because the instant claims do not restrict another curing agent from being present; the curing agent in copending Application No. 18/717,712 satisfies the claimed amino functional curing agent of the instant claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 June 9, 2026
Prosecution Insights