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 Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2018/227458 to Wu.
Regarding claims 1-8, Wu teaches an intumescent coating composition, an intumescent multi-component coating product, and substrates coated with the intumescent coating composition having excellent low temperature resistance properties and anti-fire properties (Wu, Abstract). Wu teaches that suitable substrates may comprise a composite material such as a fiberglass composite (Id., pages 12-13). Wu teaches that the intumescent coating composition comprises a mixture of at least a polymer, a curing agent, a carbon source, a foaming agent, an acid source, a reinforcing fiber, and an inorganic additive (Id., pages 1-2). Wu teaches that the polymer is not particularly limited, and includes epoxy resins, acrylic resins, polyurethane resins, urea-formaldehyde resins, and melamine resins (Id., page 2). Wu teaches that the amount of the polymer is typically 10-40 wt% based on the total weight of the intumescent coating composition (Id., page 4). Wu teaches that the foaming agent (also known as the intumescent agent) comprises melamine derivatives such as melamine formaldehyde and/or urea (Id., page 9, claim 10). Wu teaches that the amount of the intumescent agent is typically 5-30 wt%, based on the total weight of the intumescent coating composition (Id., page 9). Wu teaches that the coating composition comprises one or more inorganic additives, or additives (Id., page 11).
Wu teaches curing the coating composition and subjecting to an anti-fire test (Wu, page 14). Wu does not appear to teach subjecting the coating to a modified standard test method as claimed. However, Wu teaches a substantially similar structure and composition as claimed, including overlapping amounts of polymer and foaming agent as claimed, wherein the composition is used for a substantially similar purpose. Therefore, it is reasonable for one of ordinary skill to expect that the invention of Wu would behave similarly when subjected to a modified standard test method as claimed. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding claims 2 and 3, Wu teaches that the polymer includes epoxy resins, acrylic resins, polyurethane resins, urea-formaldehyde resins, and melamine resins, and that the foaming agent (also known as the intumescent agent) comprises melamine derivatives such as melamine formaldehyde and/or urea. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of Wu, wherein the composition comprises an intumescent resin and blowing agent as claimed, motivated by the desire of forming a conventional intumescent coating composition based on the totality of the teachings of Wu.
Regarding claim 4, Wu teaches that the amount of the polymer is typically 10-40 wt% based on the total weight of the intumescent coating composition, and that the amount of the intumescent agent is typically 5-30 wt%, based on the total weight of the intumescent coating composition. Note 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 5, Wu does not require expandable graphite (Wu, claim 1).
Regarding claims 6-8, Wu teaches that the substrate may be pretreated with one or more pretreatment compositions, and/or prepainted with one or more coating compositions, wherein the coating composition can be applied to a substrate by one or more numerous methods (Wu, pages 13-14). It is reasonable for one of ordinary skill to expect that either the substrate can be prepainted with the claimed intumescent coating composition, or multiple intumescent coating compositions can be applied by the application of multiple application methods. Such a pretreatment composition or first applied coating would be within the scope of the claimed adhesive. Additionally, since Wu teaches a substantially similar structure and composition as claimed, it is reasonable for one of ordinary skill to expect that the fibers are secured as claimed. Additionally, Wu teaches curing the coating composition (Id., page 14).
Claim Rejections - 35 USC § 103
Claims 9, 10, and 14-19 are rejected under 35 U.S.C. 103 as obvious over Wu, as applied to claims 1-8.
Regarding claims 9 and 10, as set forth above, Wu teaches that the substrate may be pretreated with one or more pretreatment compositions, and/or prepainted with one or more coating compositions, primers, topcoats, etc., wherein the coating composition can be applied to a substrate by one or more numerous methods (Wu, pages 13-14). It is reasonable for one of ordinary skill to expect that either the substrate can be prepainted with the claimed intumescent coating composition, or multiple intumescent coating compositions can be applied by the application of multiple application methods. Such a pretreatment composition or first applied coating would be within the scope of the claimed adhesive. Additionally, it is reasonable for one of ordinary skill to expect prepainting with the composition as a primer or topcoat would comprise a lesser thickness than the final coating composition, wherein a lesser thickness would comprise a lesser amount of foaming agent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of Wu, and adjusting and varying the amount of foaming agent in the prepainted composition and coating composition, such as within the claimed ranges, as it is within the level of ordinary skill to adjust the amounts of composition and corresponding foaming agent based on the desired characteristics of the resulting coating.
Regarding claims 14-19, the teachings of Wu set forth above are incorporated herein. Additionally, although Wu does not specifically teach a substrate and a fiber mat, the recitation of a fiberglass composite suggests the incorporation of multiple layers. Additionally, it is reasonable for one of ordinary skill to expect that additional layers can be added in order to increase the thickness of the composite. Therefore, it would have been well within the purview and obvious to one of ordinary skill in the art at the time the invention was made to provide another fiberglass layer for predicably increasing the thickness of the resulting composite, suitable for the intended application.
Wu teaches curing the coating composition and subjecting to an anti-fire test (Wu, page 14). Wu does not appear to teach that composite satisfies the claimed test methods. However, Wu teaches a substantially similar structure and composition as claimed, including overlapping amounts of polymer and foaming agent as claimed, wherein the composition is used for a substantially similar purpose. Therefore, it is reasonable for one of ordinary skill to expect that the claimed properties are inherent to or naturally flow from the teachings of Wu. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claims 11-20 are rejected under 35 U.S.C. 103 as obvious over Wu, as applied to claims 1-10 and 14-19 above, in view of USPN 5,962,603 to Qureshi.
Regarding claim 11-13, Wu does not appear to teach the claimed molar ratio. However, Qureshi teaches a similar intumescent composition containing a melamine-formaldehyde resin and a curing agent (Qureshi, Abstract), wherein after curing, the composition acts as an intumescent and imparts fire resistance to substrates treated with the composition (Id., column 1 lines 7-17). Qureshi teaches that melamine-formaldehyde resins are well known to those skilled in the art, wherein the melamine to formaldehyde ratio is in the range of 1:1 to 1:6 (Id., column 4 lines 44-55). Qureshi teaches that additional binders and the usual fillers can be used, including urea-formaldehyde resins, and pigments (Id., column 10 line 62 to column 11 line 29). Qureshi teaches that the composition is equally suitable as an adhesive binder for sheets and moldings of glass and mineral wool (Id., column 11 lines 6-16). Qureshi teaches that the compositions are preferably employed for coating articles, and for the impregnation of textiles, and as an intumescent binder or adhesive for such materials (Id., column 11 lines 45-56). Qureshi teaches that the resultant fire resistant article comprises the substrate coated or impregnated with the cured resin (Id., column 3 lines 14-23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of Wu, wherein the composition includes a melamine formaldehyde in a molar ratio, such as within the claimed range, as taught by Qureshi, motivated by the desire of forming a conventional intumescent coating composition comprising a melamine formaldehyde composition known in the art as being predictably suitable for such applications.
Regarding claims 12 and 13, the prior art combination does not appear to teach the claimed thickness. However, the prior art combination teaches that the substrate may comprise a fiberglass composite, and it is within the level of ordinary skill to determine a suitable thickness of the fiberglass composite based on the desired application.
Regarding claim 13, the prior art combination teaches that the polymer includes epoxy resins, acrylic resins, polyurethane resins, urea-formaldehyde resins, and melamine resins, and that the foaming agent (also known as the intumescent agent) comprises melamine derivatives such as melamine formaldehyde and/or urea. The prior art combination teaches the epoxy resin components may include bisphenol A (Wu, page 3). Alternatively, the prior art combination teaches that the aromatic compound includes bisphenol compounds (Id., pages 6-7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of the prior art combination, wherein the coating composition comprises melamine formaldehyde and bisphenol resin, motivated by the desire of forming a conventional intumescent coating composition based on the totality of the teachings of the prior art.
Additionally, note that the recitation of a bisphenol epoxy powder is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claims 14-20, the inclusion of a substrate appears to be obvious based on the teachings of the prior art. Alternatively, Qureshi establishes that curable intumescent compositions were known in the art as being suitable for coatings and as adhesive binders. Qureshi teaches that the resins can be modified to increase the strength of the cured composition and in the event of fire, may result in an increased adhesion of the intumescent layer to the protected substrate (Qureshi, column 5 lines 16-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of Wu, wherein the composition is used as an adhesive for additional substrates, as taught by Qureshi, motivated by the desire of forming a conventional intumescent coating composition which is known in the art as being predictably suitable for multiple applications, including as a coating and as an adhesive binder for substrates.
Additionally, although the prior art combination does not appear to teach that composite satisfies the claimed test methods, the prior art combination teaches a substantially similar structure and composition as claimed, including overlapping amounts of polymer and foaming agent as claimed, wherein the composition is used for a substantially similar purpose. Therefore, it is reasonable for one of ordinary skill to expect that the claimed properties naturally flow from the teachings of the prior art combination. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding claim 17, the prior art combination teaches that the polymer includes epoxy resins, acrylic resins, polyurethane resins, urea-formaldehyde resins, and melamine resins, and that the foaming agent (also known as the intumescent agent) comprises melamine derivatives such as melamine formaldehyde and/or urea. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the intumescent coating composition of the prior art combination, wherein the composition comprises an intumescent resin and blowing agent as claimed, motivated by the desire of forming a conventional intumescent coating composition based on the totality of the teachings of the prior art combination.
Regarding claim 18, the prior art combination teaches that the amount of the polymer is typically 10-40 wt% based on the total weight of the intumescent coating composition, and that the amount of the intumescent agent is typically 5-30 wt%, based on the total weight of the intumescent coating composition. Note 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claims 19 and 20, the prior art combination teaches that the substrate may be pretreated with one or more pretreatment compositions, and/or prepainted with one or more coating compositions, wherein the coating composition can be applied to a substrate by one or more numerous methods (Wu, pages 13-14). It is reasonable for one of ordinary skill to expect that either the substrate can be prepainted with the claimed intumescent coating composition, or multiple intumescent coating compositions can be applied by the application of multiple application methods. Such a pretreatment composition or first applied coating would be within the scope of the claimed adhesive. Additionally, since the prior art combination teaches a substantially similar structure and composition as claimed, it is reasonable for one of ordinary skill to expect that the fibers are secured as claimed. Additionally, the prior art combination teaches curing the coating composition (Id., page 14).
Conclusion
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786