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 .
Status of Claims
Claims 1-20 are pending in the current application.
Claims 7-18 are withdrawn from consideration in the current application.
Election/Restrictions
Applicant’s election of Group I (claims 1-6, 19, and 20) in the reply filed on July 27, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 20 is objected to because of the following informalities:
Claim 20 recites “the coating layer defines and interior surface thereof.” This recitation appears to contain a typographical error, and should instead likely recite “the coating layer defines an interior surface thereof.”
Appropriate correction is required.
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 4, 5, and 6 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.
Claim 4 recites the term “the amount of resorcinol diglycidyl ether is between 45% and 57%” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what unit of measure (weight %, molar %, volume %, area %, etc.) is required by the claim. It is also unclear what total basis the range is relative to (relative to the total epoxy resin, relative to total solids, etc.) is required by the claim. For the purposes of examination, the claim is interpreted as instead reciting “the amount of resorcinol diglycidyl ether is between 45% and 57% by weight relative to total weight of the epoxy resin.”
Claim 5 recites the term “the cresol novolak epoxy is present in an amount between 20% and 40%” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what unit of measure (weight %, molar %, volume %, area %, etc.) is required by the claim. It is also unclear what total basis the range is relative to (relative to the total epoxy resin, relative to total solids, etc.) is required by the claim. For the purposes of examination, the claim is interpreted as instead reciting “the cresol novolak epoxy is present in an amount between 20% and 40% by weight relative to total weight of the epoxy resin.”
Claim 6 recites the term “the epoxy-functional p-hydroxystyrene is present in an amount between 1% and 10%” that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what unit of measure (weight %, molar %, volume %, area %, etc.) is required by the claim. It is also unclear what total basis the range is relative to (relative to the total epoxy resin, relative to total solids, etc.) is required by the claim. For the purposes of examination, the claim is interpreted as instead reciting “the epoxy-functional p-hydroxystyrene is present in an amount between 1% and 10% by weight relative to total weight of the epoxy resin.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 2, 4-6, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2013/0337203 A1), in view of Kosuda et al. (US 4962162 A), and in view of Keehan (US 6180723 B1).
Regarding Claim 1, Jackson teaches an epoxy resin coating composition for linking cargo tanks comprising a. a mixture of epoxy resins containing 60-80 wt% of a resorcinol diglycidyl ether and 20-40 wt% of an epoxy novolac resin based on total weight of the mixture of epoxy resins, b. a curing agent, c. an accelerator, and d. fillers (Jackson, Abstract, [0008]-[0020], [0028]-[0031], [0040]-[0043]). Jackson teaches the curing agent and accelerator can include p-vinylphenol compounds (i.e., p-hydroxystyrene compounds) (Jackson, [0031], [0043]).
Jackson remains silent regarding an epoxy novolac resin that is specifically cresol novolac epoxy.
Kosuda, however, teaches an epoxy resin composition comprising (A) an epoxy novolak type resin that includes cresol-novolak type epoxy resin, (B) a thermoplastic resin, and (C) a diepoxy compound that includes resorcinol diglycidyl ether (Kosuda, Abstract, Col 1 Lines 59-68, Cols 2-3 all, Col 4 Lines 1-7).
Since Jackson discloses an epoxy resin composition comprising epoxy resins, curing agents, and accelerators, and both Jackson and Kosuda disclose epoxy resins comprising epoxy novolac resins and diglycidyl ether resins, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Kosuda’s cresol novolak epoxy resin as Jackson’s epoxy novolac resin to yield a composition that exhibits excellent heat resistance, mechanical properties, toughness, and impact resistance as taught by Kosuda (Kosuda, Abstract, Col 1 Lines 1-12, 58-68, Col 2 Lines 19-41).
Modified Jackson remains silent regarding an epoxy-functional p-hydroxystyrene.
Keehan, however, teaches a high functionality epoxide polymer prepared from reacting a p-hydroxystyrene polymer and epichlorohydrin (Keehan, Abstract, Col 1 Lines 58-62, Col 2 Lines 25-67, Col 8-9).
Since modified Jackson discloses an epoxy resin composition comprising epoxy resins, curing agents, and accelerators, and both modified Jackson and Keehan disclose epoxy resins for coating applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Keehan’s high functionality epoxide p-hydroxystyrene polymer into Jackson’s composition to yield a coating that exhibits high functionality, low melt viscosity, and improved properties such as excellent adhesion, abrasion resistance, hardness, and chemical resistance as taught by Keehan (Keehan, Col 2 Lines 25-45, Col 9 Lines 48-55).
Regarding Claim 2, modified Jackson teaches the epoxy resin has a low viscosity, such as not more than about 150 poises at 25oC (not more than about 15,000 cP at 77oF) (Kosuda, Col 4 Lines 1-7; Jackson, [0004], [0019]). Modified Jackson’s not more than about 15,000 cP range encompasses the claimed range of less than 5,000 cP, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, modified Jackson teaches the epoxy resin composition comprises 60-80 wt% of resorcinol diglycidyl ether and 20-40 wt% of epoxy novolac resin relative to this mixture of epoxy resins (Jackson, Abstract, [0015]-[0017]). Modified Jackson’s epoxy resin composition also includes the high functionality epoxide p-hydroxystyrene polymer discussed above, where accelerators such as vinylphenols are added in an amount of 0.1 to 5 parts by weight relative to 100 parts by weight of the mixture of epoxy resins (Jackson, [0049]). Taking a basis of 100 parts by weight the mixture of epoxy resins yields 60-80 parts by weight of resorcinol diglycidyl ether, 20-40 parts by weight of epoxy novolac resin, and 0.1-5 parts by weight of high functionality epoxide p-hydroxystyrene; this yields wt% of 60/[60+40+5]*100 = 57 wt% to 80/[80+20+0.1]*100 = 80 wt% of resorcinol diglycidyl ether; 20/[80+20+5]*100 = 19 wt% to 40/[60+40+0.1]*100 = 40 wt% of epoxy novolac resin; and 0.1/[60+40+0.1]*100 = 0.1 wt% to 5/[80+20+5]*100 = 4.8 wt% of high functionality epoxide p-hydroxystyrene. Modified Jackson’s 57-80 wt% resorcinol diglycidyl ether range overlaps the claimed range of 45-57 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 5, modified Jackson teaches the epoxy resin composition comprises 60-80 wt% of resorcinol diglycidyl ether and 20-40 wt% of epoxy novolac resin relative to this mixture of epoxy resins (Jackson, Abstract, [0015]-[0017]). Modified Jackson’s epoxy resin composition also includes the high functionality epoxide p-hydroxystyrene polymer discussed above, where accelerators such as vinylphenols are added in an amount of 0.1 to 5 parts by weight relative to 100 parts by weight of the mixture of epoxy resins (Jackson, [0049]). Taking a basis of 100 parts by weight the mixture of epoxy resins yields 60-80 parts by weight of resorcinol diglycidyl ether, 20-40 parts by weight of epoxy novolac resin, and 0.1-5 parts by weight of high functionality epoxide p-hydroxystyrene; this yields wt% of 60/[60+40+5]*100 = 57 wt% to 80/[80+20+0.1]*100 = 80 wt% of resorcinol diglycidyl ether; 20/[80+20+5]*100 = 19 wt% to 40/[60+40+0.1]*100 = 40 wt% of epoxy novolac resin; and 0.1/[60+40+0.1]*100 = 0.1 wt% to 5/[80+20+5]*100 = 4.8 wt% of high functionality epoxide p-hydroxystyrene. Modified Jackson’s 19-40 wt% epoxy novolac resin range encompasses the claimed range of 20-40 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, modified Jackson teaches the epoxy resin composition comprises 60-80 wt% of resorcinol diglycidyl ether and 20-40 wt% of epoxy novolac resin relative to this mixture of epoxy resins (Jackson, Abstract, [0015]-[0017]). Modified Jackson’s epoxy resin composition also includes the high functionality epoxide p-hydroxystyrene polymer discussed above, where accelerators such as vinylphenols are added in an amount of 0.1 to 5 parts by weight relative to 100 parts by weight of the mixture of epoxy resins (Jackson, [0049]). Taking a basis of 100 parts by weight the mixture of epoxy resins yields 60-80 parts by weight of resorcinol diglycidyl ether, 20-40 parts by weight of epoxy novolac resin, and 0.1-5 parts by weight of high functionality epoxide p-hydroxystyrene; this yields wt% of 60/[60+40+5]*100 = 57 wt% to 80/[80+20+0.1]*100 = 80 wt% of resorcinol diglycidyl ether; 20/[80+20+5]*100 = 19 wt% to 40/[60+40+0.1]*100 = 40 wt% of epoxy novolac resin; and 0.1/[60+40+0.1]*100 = 0.1 wt% to 5/[80+20+5]*100 = 4.8 wt% of high functionality epoxide p-hydroxystyrene. Modified Jackson’s 0.1-4.8 wt% high functionality epoxide p-hydroxystyrene range overlaps the claimed range of 1-10 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 19, modified Jackson teaches an article comprising a substrate and a coating layer, where the coating layer comprises the epoxy resin coating composition discussed above for claim 1 (Jackson, Abstract, [0010]-[0017], [0054]-[0055]).
Regarding Claim 20, modified Jackson teaches the article is a chemical storage tank, where the coating layer forms an interior lining of the chemical storage tank (Jackson, Abstract, [0054]-[0055]).
Additionally, Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2013/0337203 A1), in view of Kosuda et al. (US 4962162 A), and in view of Keehan (US 6180723 B1) as applied to claim 1 above, and further in view of Guo et al. (WO 2015/084929 A1).
Regarding Claim 2, modified Jackson teaches the epoxy resin coating composition as discussed above for claim 1. Modified Jackson teaches the epoxy resin has a low viscosity, such as not more than about 150 poises at 25oC (not more than about 15,000 cP at 77oF) (Kosuda, Col 4 Lines 1-7; Jackson, [0004], [0019]). Modified Jackson’s not more than about 15,000 cP range encompasses the claimed range of 5,000 cP, and therefore, renders obvious the claimed range (MPEP 2144.05).
Additionally, Guo teaches an epoxy resin composition for coating having a viscosity below 3,000 cP at 25oC to promote an epoxy coating formation (Guo, [001]-[007]). Guo’s range falls within the claimed range of less than 5,000 cP, and therefore, satisfies the claimed range (MPEP 2131.03).
Since modified Jackson discloses an epoxy resin composition having low viscosity, and both modified Jackson and Guo disclose epoxy resins for coating applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted modified Jackson’s epoxy resin coating composition viscosity according to Guo’s guidance to yield a composition suitable for coating as taught by Guo (Guo, [001]-[007]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US 2013/0337203 A1), in view of Kosuda et al. (US 4962162 A), and in view of Keehan (US 6180723 B1) as applied to claim 1 above, and further in view of Drumright et al. (EP 2778185 A2).
Regarding Claim 3, modified Jackson teaches the epoxy resin coating composition as discussed above for claim 1.
Modified Jackson remains silent regarding the resorcinol diglycidyl ether being present in an amount of less than 60% by area as measured by gel permeation chromatography.
Drumright, however, teaches an epoxy resin for industrial metal and protective coatings comprising diglycidyl ether, where the diglycidyl ether includes resorcinol diglycidyl ether (Drumright, Abstract, [0001]-[0005], [0035]-[0045]). Drumright teaches the diglycidyl ether epoxy resin can comprise greater than or equal to 50% by area as measured by gel permeation chromatography (Drumright, [0035]-[0036]). Drumright’s area% range overlaps the claimed range of less than 60% by area, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since modified Jackson discloses an epoxy resin composition having low viscosity, and both modified Jackson and Drumright disclose epoxy resins for coating applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adjusted modified Jackson’s epoxy resin coating composition diglycidyl ether area% according to Drumright’s guidance to yield a composition suitable for coating and exhibiting improved flexibility and high level of purity as taught by Drumright (Drumright, [0001]-[0005], [0036]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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