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 Interpretations
Claim 3 recites “a long chain reaction of Bisphenol A and epichloridine containing ethylene oxide”, wherein such recited “long chain reaction” is interpreted broadest reasonably as any polymerization or condensation reaction between Bisphenol A and epchloridine containing ethylene oxide.
Claim Objections
Claim 3 is objected to because of the following informalities: claim 3 recited “epichloridine” appears to be a mistake because it does not appear to be a recognized chemical term, such term supposed to be “epichlorohydrin” (see instantly published application US2024/0043715 para. [0025]). 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.
Claim 7 is 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. In this case, claim 7 recites a trademark name “MAINCOTE AF400®” resin to represent a specific acrylic resin, wherein such limitation renders the claim scope uncertain since the trademark or trade name cannot be used properly to describe any particular material or product. In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name (see also MPEP § 2173. 05 (u)).
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 8 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, claim 8 recites “acrylic resin of between 10% and 20% by weight, - epoxy resin of between 30% and 60% by weight, - at least one complex amine of between 10% and 20% by weight”, such limitation does not further limit its parent claim 1 recited “wherein the weight ratio of said acrylic and epoxy resins with said at least one complex amine is greater than 20:1”, because, for example, when claim 8 recited mixture of at least one complex amine being the minimum 10% by weight, while epoxy resin and acrylic resin together being highest of 60% by weight and 20% by weight respectively, the weight ratio of epoxy resin and acrylic resin to the at least one complex amine only being 8:1. 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.
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.
Claims 1-2, 6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195).
Funston teaches a coating composition comprising a first component, said first component having 20% to 80% by weight of a hydroxyl functional acrylic polymer; said first component further having 5% to 80% by weight of an epoxy resin; a second component, said second component having 10% to 90% by weight of an amine curing agent, wherein said amine curing agent being capable of crosslinking said first component (claim 1, col. 10 lines 23-38, col. 11 lines 20-25) and such coating composition can be applied to surface and cured (col. 12 lines 23-32). Funston also teaches amine being polyamine, i.e. a complex amine (see col. 14 lines 35-65). Therefore, a product of acrylic polymer (i.e. acrylic resin), an epoxy resin and at least one complex amine is expected.
Regarding claim 1, Funston does not expressly teach the weight ratio of acrylic and epoxy resins to the at least one complex amine being greater than 20:1.
Ramakrishnan teaches a coating composition comprising part A resin and part B curing agent, wherein the Part A resin component mixture of the protective coating formulation of the present invention can include or consist of a reactive pre-polymer or polymer, such as an epoxy resin, and a silane coupling agent, such as an epoxy silane, as the main or primary resin binder parts or components of the mixture, while the Part B curing component of the protective coating formulation of the present invention can include one or more amine curing compounds or agents. Remakrishnan also teaches, depending on the types and combination of fillers, the weight ratio of the Part A resin component mixture to the Part B curing component can be between about 14:1 and about 20:1 (para.[0011], [0012], [0015], [0018], [0019]), wherein the weight ratio of active epoxy resin component in part A resin component mixture being 30 to 45% by weight (para. [0018]), while the total amine curing agent being 70% by weight of the part B curing agent which containing less than or equal to 30% of commercially available amine blend (para. [0019]). Therefore, the epoxy resin weight: commercially complex amine weight can be from 14x30%: 1x30%=14 to as high as 20x (45%):1x30%=30:1, i.e. ranges from 14:30, such weight ratio overlapping with that of instantly claimed greater than 20:1, thus renders a prima facie case of obviousness (See MPEP §2144. 05 I).
It would have been obvious for one of ordinary skill in the art to adopt such weight ratio of epoxy resin to at least one complex amine (correspondingly certain weight ratio of part A resin component to part B curing agent weight) as shown by Remakrishnan to modify the coating composition of Funston because by doing so can help optimize the curing speed of the coating as suggested by Remakrishnan (para. [0019]). Furthermore, adopting such well-known weight ratio of epoxy resin to the at least one complex amine to a known coating composition comprising such epoxy resin and complex amine curing agent for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 2, Funston further teaches the acrylic resin having glass transition temperature from -20 to 50 °C (claim 9, col. 12 line 59-col. 13 line 9). It is noted that such glass transition temperature is when the resin forming a film when applied onto substrate.
Regarding claim 6 and 9, Funston also teaches the coating composition further comprising additives e.g. pigments in an amount of 6 to 24 % by weight (col 11 lines 20-22, col. 12 lines 19-21, col. 13 lines 20-35, claim 14).
Regarding claim 8, Funston already teaches the coating composition comprising first component having 20% to 80% by weight of a hydroxyl functional acrylic polymer and 5% to 80% by weight of an epoxy resin; a second component, said second component having 10% to 90% by weight of an amine curing agent. Remakrishnan also teaches the weight ratio of the Part A resin component mixture to the Part B curing component can be between about 0.9 to about 1:1. Based Remakrishnan disclosed weight ratio between A and B components, the coating composition of Fuston can have 20% to 80% by weight of a hydroxyl functional acrylic polymer (i.e. resin), 5% to 80% by weight of an epoxy resin; a second component, and 10% to 90% by weight of at least one complex amine curing agent.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195) as applied above, and further in view of Ishikawa (JP2016/186842) (for applicant’s convenience, Machine translation has been provided hereof for citations).
Funston further teaches the epoxy resin can be Bisphenol-A type epoxy resin (col. 13 lines 38-62).
Regarding claim 3, Funston in view of Ramakrishnan does not expressly teach such Bisphenol-A type epoxy resin is a resin from a long reaction of Bisphenol A and epichlorohydrin containing ethylene oxide. It is noted that such recited limitation of “resin from a long reaction of Bisphenol A and epichlorohydrin containing ethylene oxide” is a product by process limitation, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See § MPEP 2113). Ishikawa teaches at least one ethylene oxide or propylene oxide is added to modify the epoxy resin when bisphenol A, bisphenol F, or the like is reacted with epichlorohydrin to prepare the epoxy resin (para. [0027], [0029]). Ishikawa disclosed epoxy resin is a resin from long chain reaction containing Bisphenol A, epichlorohydrin and ethylene oxide, wherein such resin is the same or substantially the same as that of instantly claimed.
It would have been obvious for one of ordinary skill in the art to adopt such epoxy resin as shown by Ishikawa to practice the epoxy resin of Funston in view of Ramakrishnan because by using such epoxy resin can help reduce cure shrinkage, reduce the volume resistivity of a member, improves adhesion as suggested by Ishikawa (para. [0029]). Furthermore, adopting such well-known epoxy resin to a known coating composition comprising epoxy resin for improvement would have predictable results (see MPEP §2143 KSR).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195) as applied above, and further in view of Iwaki (US2018/0126712).
Regarding claim 4, Funston in view of Ramakrishnan does not expressly teach epoxy resin being an emulsion resin from CAS 25068-38-6 or CAS 25036-25-3.
Iwaki teaches epoxy resin emulsion of CAS 25036-25-3 is well-known in the art and commercially available (para. [0077]).
It would have been obvious for one of ordinary skill in the art to adopt such epoxy resin emulsion of CAS 25036-25-3 as shown by Iwaki to practice the epoxy resin of Funston in view of Ramakrishnan because adopting such well-known and commercially available epoxy emulsion resin of CAS 25036-25-3 to a known coating composition comprising epoxy resin for improvement would have predictable results (see MPEP §2143 KSR).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195) as applied above, and further in view of Smillie (US2013/0065059).
Regarding claim 5, Funston in view of Ramakrishnan does not expressly teach at least one complex amine comprises at least one amine CAS 9046-10-0, one amine CAS 124- 68-5, one amine CAS 941-395-8.
Smillie teaches complex amine can be used as curing agent for epoxy resin containing coating composition (para. [0056]-[0058]) wherein such curing agent can be PODA-1: Polyoxypropylenediamine, CAS number 9046-10-0, sold as Jeffamine®D230 by Huntsman International LLC, or PODA-2: Polyoxypropylenediamine, CAS number 9046-10-0, sold as Jeffamine®D400 by Huntsman (para. [0115]).
It would have been obvious for one of ordinary skill in the art to adopt commercially available complex amine comprises at least one amine CAS 9046-10-0 as shown by Smillie to practice the complex amine of Funston in view of Ramakrishnan because adopting such well-known and commercially available complex amine of CAS number 9046-10-0 to a known coating composition comprising epoxy resin for improvement or for desired curing effect would have predictable results (see MPEP §2143 KSR).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195) as applied above, and further in view of Xu (US2016/0244629) and as evidence by Dow Chemical Company (DCC) (https://www.dow.com/en-us/search.html#q=maincote%20400&t=All&sort=relevancy).
Regarding claim 7, Funston in view of Ramakrishnan does not expressly teach acrylic resin being MAINCOTE AF400® resin.
Xu teaches commercially available acrylic copolymer emulsions include MAINCOTE acrylic emulsion available from Dow Chemical Company (para. [0043]). Furthermore, it is well known in the art that MAINCOTE™ AF-400 DS Acrylic Emulsion is one available MAINCOTE Acrylic emulsion for coating and floor paints for good and quick adhesion.
It would have been obvious for one of ordinary skill in the art to adopt commercially available MAINCOTE acrylic resin as shown by Xu to practice the acrylic resin of Funston in view of Ramakrishnan because adopting such well-known MAINCOTE acrylic emulsion, i.e. MAINCOTE™ AF-400 DS from DCC to a known coating composition comprising acrylic resin for improvement would have predictable results (see MPEP §2143 KSR).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Funston (US7951869) in view of Ramakrishnan (US2020/0362195) as applied above, and further in view of Siano (IT2021/00015248) (for applicant’s convenience, Machine translation has been provided hereof for citations).
Regarding claim 7, Funston in view of Ramakrishnan does not expressly teach acrylic resin being MAINCOTE AF400® resin.
Siano teaches a paint composition comprising Maincote AF 400 acrylic resin (claim 1, para. [0022]).
It would have been obvious for one of ordinary skill in the art to adopt commercially available MAINCOTE acrylic resin as shown by Siano to practice the acrylic resin of Funston in view of Ramakrishnan because adopting such well-known acrylic resin of MAINCOTE AF-400 to a known coating composition comprising acrylic resin for improvement would have predictable results (see MPEP §2143 KSR).
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732