DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ott et al. (US 2017/0298236, “Ott”).
Regarding claim 1, Ott teaches a low solvent (or volatile organic compound) coating composition ([0007]) containing a bisphenol epoxy compound ([0092], [0009]) that may have an epoxy equivalent of 200 or less ([0092]), and a liquid amine curing agent (e.g., [0011] – [0014]). Ott further teaches the inclusion of a dioxolane derivative having a formula reading on that of formula (1) ([0065], 2,2 dimethyl-1,3-dioxolane-4-methanol).
Regarding claim 5, Ott additionally teaches that the composition may be solventless and thus have a VOC content of less than 200 g/L ([0007]).
Regarding claim 6, Ott additionally teaches that the composition may be used to form a film ([0055]).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ott as applied to claim 1, above, and further in view of Zheng et al. (US 2015/0094400, “Zheng”).
Regarding claim 2, Ott fails to specifically teach the type of liquid amine curing agent to be included. However, in the same field of endeavor of coating composition (e.g., [0002]), Zheng teaches a common and useful curing agent for epoxy compositions include methylene crosslinked poly(cyclohexyl-aromatic)amine and Zheng teaches these compounds help to provide improved chemical resistance and good mechanical properties (e.g., [0015], [0016], [0066], [0071]). It therefore would have been obvious to have substituted or used the curing agents of Zheng for those of Ott for the benefit of their ability to provide improved chemical resistance and good mechanical properties (e.g., [0015], [0016]).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ott as applied to claim 1, above, and further in view of Denilson et al. (US 2010/0137480, “Denilson”).
Regarding claim 3, Ott fails to specifically teach the amount of dioxolane to include. However, in the same field of endeavor of coating compositions (e.g., [0001] – [0003], architectural paints), Denilson teaches to include a dioxolane in an amount of from 0.1 to 10% by weight and that this is a suitable amount for use in various coating applications, including architectural paints ([0027]). As it would be necessary to use the dioxolane of Ott in some amount it would have been obvious and necessary to search the prior art for a suitable amount and thus would have been obvious to the ordinarily skilled artisan to have used the dioxolane in an amount of from 0.1 to 10% by weight as a suitable amount in a coating ([0090], [0091], [0027]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ott as applied to claim 1, above, and further in view of Denilson in view of Furui et al. (US 2010/0165460, “Furui”).
Regarding claim 4, Ott fails to specifically teach the amount of dioxolane and liquid amine curing agent to include. In the same field of endeavor of coating compositions (e.g., [0001] – [0003], architectural paints), Denilson teaches to include a dioxolane in an amount of from 0.1 to 10% by weight and that this is a suitable amount for use in various coating applications, including architectural paints ([0027]). As it would be necessary to use the dioxolane of Ott in some amount it would have been obvious and necessary to search the prior art for a suitable amount and thus would have been obvious to the ordinarily skilled artisan to have used the dioxolane in an amount of from 0.1 to 10% by weight as a suitable amount in a coating ([0090], [0091], [0027]). Further, in the same field of endeavor of films epoxy-based films made by coating ([0108], [0048]), Furui teaches that a suitable amount of an amine curing agent to use is on the range of from 0.1 to 20 parts by weight ([0111]). It therefore would have been obvious to the ordinarily skilled artisan, in the absence of a specific teaching by Ott, to have included the amine curing agent of Ott in such an amount in order to effectively create a film from the resin composition (Furui, [0048], [0111]). Therefore, modified Ott would have an amount of dioxolane derivative on the range of from 0.1 to 1.4 parts by mass based on 1 part by mass of the content of the liquid amine curing agent. The Examiner notes that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 11/11/25 have been fully considered but they are not persuasive.
Applicant argues that the bisphenol-A component described by Ott as having an EEW of 86 g/eq does not read on that presently claimed because it is not part of a “final or intermediate composition” (e.g., Remarks 11/11/25, pp. 2-5). However, the present claims do not require such a limitation. Ott appears to describe a composition comprising a bisphenol epoxy component having the claimed epoxy equivalent weight ([0009], [0092]). Applicant argues that because the bisphenol-A described in paragraph 0092 of Ott is reacted and the resultant composition has a higher EEW that the bisphenol-A should not be considered part of the dispersion. The Examiner respectfully disagrees. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Please see MPEP §2123. In this case, Ott teaches a dispersion including a bisphenol epoxy component having the claimed epoxy equivalent weight ([0009], [0092]) and therefore the Examiner maintains the above-described rejections.
Applicant argues that the ordinarily skilled artisan would not look to Denilson to provide a dioxolane film forming agent because Denilson teaches that such film forming agents are useful in combination with epoxy compounds that are dissolved in organic solvents (e.g., Remarks 11/11/25, p. 5; Denilson, [0025]). But Denilson is not so limited and therefore the Examiner respectfully disagrees. As Applicant notes, Denilson is generally directed towards use with either water-based or organic solvent-based coating systems (e.g., Denilson [0001], [0002]). Denilson teaches that the application of dioxolane derivatives as a film former in water-based systems improves film-forming and drying times ([0013]). Denilson does not provide any teaching that a dioxolane should not be used in water-based compositions that also include epoxy compounds. Rather, Denilson teaches to include a dioxolane in an amount of from 0.1 to 10% by weight and that this is a suitable amount for use in various coating applications, including architectural paints ([0027]). As it would be necessary to use the dioxolane of Ott in some amount it would have been obvious and necessary to search the prior art for a suitable amount and thus would have been obvious to the ordinarily skilled artisan to have used the dioxolane in an amount of from 0.1 to 10% by weight as a suitable amount in a coating ([0090], [0091], [0027]). In response to applicant's argument that Denilson does not specifically describe water-based coatings containing an epoxy compound, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Therefore, claims 1-6 are rejected as described above.
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 ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 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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/ANTHONY J FROST/Primary Examiner, Art Unit 1782