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 § 112
Claims 1-12 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 2, 4, and 5-8 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.
Regarding claims 2, 4, 5, 7, and 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The claims have been interpreted in the following manner for the purpose of examination:
Claim 2 has been interpreted as an epoxy equivalent in the range of 400-1100 g/mol;
Claim 4 has been interpreted as a range of 3 to 50 microns;
Claim 7 has been interpreted as silica is pretreated with an organic substance, polymeric wax, or silane;
Claim 8 has been interpreted as an amount of 4-10% by weight.
Claim 6 is rejected for improper Markush grouping. The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). A Markush grouping is considered indefinite under 35 U.S.C 112(b) if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush grouping. Please see MPEP 2173.05(h). The applicant may overcome this rejection by amending the claim terminology in a manner that requires selection from a closed group.
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.
Claim(s) 1, 3, 5, and 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lindquist (WO 2019/217384 A1; all citations are directed at the US equivelant document, US 2025/0277074 A1) as evidenced by Zhang (CN 102030340 A; all citations are directed towards the English machine translation).
Lindquist is directed towards compositions derived from a Michael addition (MA) reaction and provide coatings that have optimal adhesion, corrosion resistance, and cure-response when applied to a substrate and cured [p. 0009].
MA Acceptor: Lindquist teaches the resin composition includes at least one MA acceptor having at least one MA acceptor functionality of preferably 2 or more [p. 0056]. Lindquist teaches the MA acceptor is resin functionalized with acids such as acrylic acid, methacrylic acid, and the like [p. 0053.
MA Donor: Lindquist teaches the resin composition also includes a MA donor having at least one MA donor functional group, wherein at least a portion of the MA donor includes an epoxy backbone [p. 0010]. Lindquist teaches suitable aromatic epoxy resins that can be functionalized to act as MA donors include bisphenol A epoxy and novolac epoxy resins [p. 0049]. In an aspect, the epoxy resins can be functionalized by reaction with diketene, transesterification with an alkyl acetoacetate or dialkyl malonate, esterification of the epoxy resin with malonic acid or a monoester or acid functional malonated polyester, and the like [p. 0049].
Catalyst: Lindquist teaches the Michael addition reaction is catalyzed by a latent base catalyst [p 0063].
Additional Components: Lindquist teaches embodiments wherein the coating composition includes an acid-scavenging or pH-buffering component [p. 0074]. Lindquist teaches suitable examples include amino-functionalized mesoporous silica (MCM-41), which reads over the silica hardness modifier of instant claim 1, and the silica pretreated with an organic substance of instant claim 7 [p. 0074]. MCM-41 has a pH value of 8 to 12 as evidenced by Zhang, which overlaps the ranges of instant claims 1 and 5 [p. 0015]
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the claimed composition as Lindquist teaches embodiments capable of satisfying the chemical and material limitations of the instant invention. Regarding the pH value of the amino-functionalized mesoporous silica (MCM-41), 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).
Regarding claim 8; The additional components taught by Lindquist may comprise 2-20% by weight of the composition [p. 0078]. In light of this, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the composition of Lindquist with 2-20% by weight amino-functionalized mesoporous silica, which overlaps the claimed range of 4-10% by weight of the hardness modifier. 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).
Regarding claims 9 and 10; Lindquist teaches the composition is intended for use in coatings [abstract]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a coating composition with the composition of Lindquist. Lindquist further teaches
Regarding claims 11 and 12; Lindquist teaches the coating composition may be applied to a substrate either prior to, or after, the substrate is formed into an article. In an aspect, the coating composition described herein may be applied on a variety of substrates. Suitable examples include, without limitation, natural and engineered buildings and building materials, freight containers, flooring materials, walls, furniture, other building materials , motor vehicle components, aircraft components, trucks, rail cars and engines, bridges, water towers, cell phone tower, wind towers, radio towers, lighting fixtures, statues, billboard supports, fences, guard rails, tunnels, pipes, marine components, machinery components, laminates, equipment components, appliances, and packaging. Exemplary substrate materials include, without limitation, wood, plastics, thermosets, metals, metal alloys, intermetallic compositions, metal-containing composites, and combinations of these [p. 0089]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a coated article from the composition of Lindquist wherein the substrate coated are those of instant claim 12.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lindquist (WO 2019/217384 A1; all citations are directed at the US equivelant document, US 2025/0277074 A1) in view of Chasser et al (US 20090078156 A1).
Lindquist teaches suitable aromatic epoxy resins that can be functionalized to act as MA donors include bisphenol A epoxy and novolac epoxy resins [p. 0049]. Lindquist is silent with respect to the epoxy equivelant of the MA donor.
Chasser teaches a Michael addition reaction product [abstract]. Chasser teaches epoxide resins suitable for modification as a MA acceptor or donor have epoxy equivalent weight ranges from 100 to 4000 based on the solids of the resin [p. 0054-0055].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the MA donor of Lindquist with an epoxy resin having an epoxy equivelant in the range of 100 to 4000 as Chasser teaches they are suitable for use in an MA system. 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).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lindquist (WO 2019/217384 A1; all citations are directed at the US equivelant document, US 2025/0277074 A1) as evidenced by Minamil (US 6562918 B1).
Lindquist teaches suitable additional additives include amino-functionalized mesoporous silica (MCM-41) [p. 0074]. MCM-41 is an amorphous silica as evidenced by Minami [c. 16, ll. 30].
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Lindquist teaches suitable additional additives include amino-functionalized mesoporous silica (MCM-41) [p. 0074]. However, amine functionalized MCM-41 silica has a particle size of 80-140 nm (0.08-0.14 microns) as evidenced by Sigma-Aldrich. Therefore, Lindquist teaches against the particle size range of instant claim 4.
The examiner located no prior art, alone or in combination, that teaches or suggests the particle size range of a silica or urea formaldehyde hardness modifier having a pH above 6.5 and a particle size in the range of 3 to 50 microns.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766