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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 9/16/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-3, 6-9, 11-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deogon et al (US 9,447,291).
Deogon teaches a heat-resistant coating composition comprising one or more epoxy resins, one or more polysulfides (abstract), a compound having a secondary or tertiary amine group (abstract-which is taught to be a spumific (col 5, lines 3+)), an additional source of carbon (herein understood to read on the claimed “one or more carbonifics” since a carbonific is understood to be a carbon rich material and is understood to be synonymous with a char forming agent) and a phosphonate compound (abstract) and a char forming adjunct comprising a phosphorous containing compound such as phosphoric acid (col 6, lines 13+) (collecting herein understood to read on the claimed “and one or more sources of phosphoric acid”).
With regards to the limitation requiring the composition to comprise 1-10wt% polysiloxane, , Deogon teaches the composition may comprise up to 1wt% polysiloxane (col 8, line 63) but does not disclose the claimed amounts. However, the courts have held a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize slightly more than 1wt% polysiloxane in the composition of Deogon. The motivation for doing so would have been that Deogon teaches the composition may comprise up to 1wt% polysiloxane, and the skilled artisan would have expected a composition the difference between the claimed ranges and the range of Deogon to be virtually negligible absent any showing of unexpected results or criticality (MPEP 2144.05).
With regards to the feature of the coating composition having a mole ratio of thiol groups in the polysulfide to epoxy groups in the epoxy resin being in the range of 0.2 to 0.5, said feature is taught in the composition of example 1 (col. 9, I. 65; col. 10. I. 20; col. 4, I. 31-60) for the following reasons:
Higher limit molar ratio thiol/epoxide: Thiokol LP3 is a commercially available product having a known thiol group content of max 7.7% (calculated thiol content of 2333 mmol/kg) and used at most in 16 parts per weight in the composition. DER 331 and DER 736 are also commercially available products with DER 736 having the smallest epoxide content possible of 4800 mmol/kg and the mixture is used at least in 19 parts per weights. Therefore, it is calculated, with the simplification that only DER736 is used, that the molar ratio of thiol groups to epoxides groups can be at most 0.4 in example 1 (16x2333)/(19x4800)).
Lower limit molar ratio thiol/epoxide: Thiokol LP3 has a known thiol group content of min 5.9% (calculated thiol content of 1788 mmol/kg) and used at least in 14 parts per weight in the composition. Between DER331 and DER736, DER 736 has the largest epoxide content possible of 5700 mmol/kg and the mixture is used at most in 23 parts per weights. Therefore, it is calculated, with the simplification that only DER736 is used, that the molar ratio of thiol groups to epoxides groups can be at minimum 0.19 in example 1 (14x1788)/(23x5700)).
It is also noted that the mixture of epoxides are actually made of 100 parts per weight of DER331 (bisphenol A-type epoxy resin) and maximum 50 parts per weight of DER736 (aliphatic epoxy resin) (col. 4, I. 61- col. 5, I. 2) with DER 331 having an epoxide content of 5200-5500 mmol/kg. Therefore, the range of the molar ratio of thiol groups to epoxides groups in example 1 falls within the range of the molar ratio of thiol groups to epoxide groups of claim 1.
With regards to the limitation that the weight ratio of carbonific(s) to spumific(s) is no more than 0.48, Deogon teaches the char forming agent (carbonific) may be included in amounts of 7-10wt% of the composition and the spumific (i.e. the secondary or tertiary amine group) is included in amounts of 11-18wt% of the composition. Thus, Deogon requires the weight ratio of carbonific to spumific to be 0.9 or less. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range (See MPEP 2131.03).
With regards to the claimed ratio of carbonific(s) to source(s) of phosphoric acid being no more than 0.38, the examiner notes that Deogon teaches the carbonific may be included in amounts of 7-10wt% and the phosphoric acid source (char forming adjunct and phosphonate compound) should jointly comprise 21-35wt% of the composition. Thus, ratio of carbonific(s) to source(s) of phosphoric acid is understood to be 0.47 or less. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range (See MPEP 2131.03).
With regards to claim 2, Deogon teaches the carbonific may be included in amounts of 7-10wt% and the phosphoric acid source (char forming adjunct and phosphonate compound) should jointly comprise 21-35wt% of the composition. Thus, ratio of carbonific(s) to source(s) of phosphoric acid is understood to be 0-2-0.47. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range of claim 2(See MPEP 2131.03). Alternatively, the examiner notes example 1
With regards to claim 3, Deogon teaches the spumifics may be selected from
melamine and the carbonifics may be selected from pentaerythritol.
With regards to claims 6, Deogon teaches the heat-resistant heat resistant coating composition wherein (a) the total content of epoxy resins in the composition is in the range of from 2 to 25 wt%;
(b) the total content of polysulfide in the composition is in the range of from 10 to 25 wt%;
(c) the total content of spumific in the composition is in the range of from 11 to 18 wt%;
(e) the total amount of phosphoric acid sources in the composition is in the range of from 21 to
35 wt%;
(h) the composition additionally comprises fibers in a total amount of 0.01 to 15 wt%
And (j) at least one or all sources of phosphoric acid are selected from phosphoric acid and
inorganic salts thereof.
With regards to claim 7, Deogon is silent to the presence of boric acids or borate-containing
Compounds (col 9, line 29+).
With regards to claim 8, Deogon teaches the heat-resistant coating composition may be an
intumescent coating composition (col 1, lines 22+).
With regards to claim 9, Deogon teaches the heat-resistant heat resistant coating composition may be provided in 2-components (which may be referred to as a part A and a part B). In such situations, on part would comprise the epoxy resins and the other part would comprise the polysulfides since said reaction is taught to take place at ambient temperatures.
With regards to claim 11, Deogon the heat-resistant coating composition may be applied to a surface of the substrate and allowed to cure (See example 1).
With regards to claim 12, Deogon teaches the curing takes place at ambient temperatures, herein understood to anticipate the claimed “range of from -10 to 50 °C.”
With regards to claim 13, Deogon teaches the substrate is a metal substrate (see example 1).
With regards to claim 14, Deogon teaches a substrate coated with a heat-resistant coating composition as claimed (See example 1)
With regards to claim 15, Deogon teaches the coated substrate wherein the heat-resistant coating composition is cured (See example 1).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deogon et al (US 9,447,291), as applied to claims above, and further in view of KR201401113637 (herein referred to as “Suga”).
Deogon is relied upon as above but does not teach the coating composition may additionally comprise a cross-linking agent selected from compounds of formula in claim 4. However, Suga teaches a curable composition comprising polysulfide, an epoxy resin, and amines (abstract). Suga taches said composition may further comprise an adhesion promoter which is a silane coupling agent which reads on the compounds in claims 4 and 5 (paragraph bridging pages 7-8 of the translation). Such compounds include mercaptopropylltrimethoxysilane (same paragraph-reading on the structure of claim 5). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add a silane coupling agent such mercaptopropylltrimethoxysilane to the composition of Deogon. The motivation for doing so would have been to improve the adhesion of the coating composition.
Claim(s) 1-3, 6-9, 11-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deogon et al (US 9,447,291) in view of Morita et al (US 2020/0291184).
Deogon teaches a heat-resistant coating composition comprising one or more epoxy resins, one or more polysulfides (abstract), a compound having a secondary or tertiary amine group (abstract-which is taught to be a spumific (col 5, lines 3+)), an additional source of carbon (herein understood to read on the claimed “one or more carbonifics” since a carbonific is understood to be a carbon rich material and is understood to be synonymous with a char forming agent) and a phosphonate compound (abstract) and a char forming adjunct comprising a phosphorous containing compound such as phosphoric acid (col 6, lines 13+) (collecting herein understood to read on the claimed “and one or more sources of phosphoric acid”).
With regards to the limitation requiring the composition to comprise 1-10wt% polysiloxane, , Deogon teaches the composition may further comprise up to 1wt% polysiloxane (col 8, line 63) but does not teach the claimed amounts. However, the courts have held a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize slightly more than 1wt% polysiloxane in the composition of Deogon. The motivation for doing so would have been that Deogon teaches the composition may comprise up to 1wt% polysiloxane, and the skilled artisan would have expected a composition the difference between the claimed ranges and the range of Deogon to be virtually negligible absent any showing of unexpected results or criticality (MPEP 2144.05).
With regards to the feature of the coating composition having a mole ratio of thiol groups in the polysulfide to epoxy groups in the epoxy resin being in the range of 0.2 to 0.5, said feature is not explicitly taught by Deogon. However, Morita teaches a composition comprising epoxy resin and a thiol group (abstract; 0045). Morita teaches that the ratio of the total number of epoxy groups to the total number of thiol groups should be greater than 1, preferable above 2, and below 7 (0063). The inverse of said range (2:1-7:1) expressed as a decimal is (0.5-0.14). Said ratio is selected based upon enhancing the strength and stretchiness of the cured material (0063). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the mole ratio of thiol groups in the polysulfide to epoxy groups in the epoxy resin being in the range of 0.14 to 0.5 based upon the teachings of Morita. The motivation for doing so would have been to optimize the composition’s strength and stretchability characteristics.
It is also noted that:
Higher limit molar ratio thiol /epoxide: Thiokol LP3 is a commercially available product having a known thiol group content of max 7.7% (calculated thiol content of 2333 mmol/kg) and used at most in 16 parts per weight in the composition. DER 331 and DER 736 are also commercially available products with DER 736 having the smallest epoxide content possible of 4800 mmol/kg and the mixture is used at least in 19 parts per weights. Therefore, it is calculated, with the simplification that only DER736 is used, that the molar ratio of thiol groups to epoxides groups can be at most 0.4 in example 1 (16x2333)/(19x4800)).
Lower limit molar ratio thiol /epoxide: Thiokol LP3 has a known thiol group content of min 5.9% (calculated thiol content of 1788 mmol/kg) and used at least in 14 parts per weight in the composition. Between DER331 and DER736, DER 736 has the largest epoxide content possible of 5700 mmol/kg and the mixture is used at most in 23 parts per weights. Therefore, it is calculated, with the simplification that only DER736 is used, that the molar ratio of thiol groups to epoxides groups can be at minimum 0.19 in example 1 (14x1788)/(23x5700)).
It is also noted that the mixture of epoxides are actually made of 100 parts per weight of DER331 (bisphenol A-type epoxy resin) and maximum 50 parts per weight of DER736 (aliphatic epoxy resin) (col. 4, I. 61- col. 5, I. 2) with DER 331 having an epoxide content of 5200-5500 mmol/kg. Therefore, the range of the molar ratio of thiol groups to epoxides groups in example 1 falls within the range of the molar ratio of thiol groups to epoxide groups of claim 1.
With regards to the limitation that the weight ratio of carbonific(s) to spumific(s) is no more than 0.48, Deogon teaches the char forming agent (carbonific) may be included in amounts of 7-10wt% of the composition and the spumific (i.e. the secondary or tertiary amine group) is included in amounts of 11-18wt% of the composition. Thus, Deogon requires the weight ratio of carbonific to spumific to be 0.9 or less. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range (See MPEP 2131.03).
With regards to the claimed ratio of carbonific(s) to source(s) of phosphoric acid being no more than 0.38, the examiner notes that Deogon teaches the carbonific may be included in amounts of 7-10wt% and the phosphoric acid source (char forming adjunct and phosphonate compound) should jointly comprise 21-35wt% of the composition. Thus, ratio of carbonific(s) to source(s) of phosphoric acid is understood to be 0.47 or less. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range (See MPEP 2131.03). Alternatively, the examiner notes example 1
With regards to claims 1 and 2, Deogon teaches the carbonific may be included in amounts of 7-10wt% and the phosphoric acid source (char forming adjunct and phosphonate compound) should jointly comprise 21-35wt% of the composition. Thus, ratio of carbonific(s) to source(s) of phosphoric acid is understood to be 0-2-0.47. Said range is overlapping the claimed range and is understood to be sufficiently specific to anticipate the claimed range of claim 2(See MPEP 2131.03). Alternatively, the examiner notes example 1
With regards to claim 3, Deogon teaches the spumifics may be selected from
melamine and the carbonifics may be selected from pentaerythritol.
With regards to claims 6, Deogon teaches the heat-resistant heat resistant coating composition wherein (a) the total content of epoxy resins in the composition is in the range of from 2 to 25 wt%;
(b) the total content of polysulfide in the composition is in the range of from 10 to 25 wt%;
(c) the total content of spumific in the composition is in the range of from 11 to 18 wt%;
(e) the total amount of phosphoric acid sources in the composition is in the range of from 21 to
35 wt%;
(h) the composition additionally comprises fibers in a total amount of 0.01 to 15 wt%
And (j) at least one or all sources of phosphoric acid are selected from phosphoric acid and
inorganic salts thereof.
With regards to claim 7, Deogon is silent to the presence of boric acids or borate-containing
Compounds (col 9, line 29+).
With regards to claim 8, Deogon teaches the heat-resistant coating composition may be an
intumescent coating composition (col 1, lines 22+).
With regards to claim 9, Deogon teaches the heat-resistant heat resistant coating composition may be provided in 2-components (which may be referred to as a part A and a part B). In such situations, on part would comprise the epoxy resins and the other part would comprise the polysulfides since said reaction is taught to take place at ambient temperatures.
With regards to claim 11, Deogon the heat-resistant coating composition may be applied to a surface of the substrate and allowed to cure (See example 1).
With regards to claim 12, Deogon teaches the curing takes place at ambient temperatures, herein understood to anticipate the claimed “range of from -10 to 50 °C.”
With regards to claim 13, Deogon teaches the substrate is a metal substrate (see example 1).
With regards to claim 14, Deogon teaches a substrate coated with a heat-resistant coating composition as claimed (See example 1)
With regards to claim 15, Deogon teaches the coated substrate wherein the heat-resistant coating composition is cured (See example 1).
With regards to claims 16 and 17, Deogon teaches the composition may further comprise up to 1wt% polysiloxane (col 8, line 63).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deogon et al (US 9,447,291) in view of Morita et al (US 2020/0291184)., as applied to claims above, and further in view of KR201401113637 (herein referred to as “Suga”)
Deogon in view of Morita is relied upon as above but does not teach the coating composition may additionally a cross-linking agent selected from compounds of formula in claim 4. However, Suga teaches a curable composition comprising polysulfide, an epoxy resin, and amines (abstract). Suga taches said composition may further comprise an adhesion promoter which is a silane coupling agent which reads on the compounds in claims 4 and 5 (paragraph bridging pages 7-8 of the translation). Such compounds include mercaptopropylltrimethoxysilane (same paragraph-reading on the structure of claim 5). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add a silane coupling agent such mercaptopropylltrimethoxysilane to the composition of Deogon. The motivation for doing so would have been to improve the adhesion of the coating composition.
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot in view of the new grounds of rejection. In order to expedite prosecution, the examiner will address some of the arguments which may be relevant to the newly applied grounds of rejection.
With regards to the Deogon et al., U.S. Patent No. 9,447,291, Applicant respectfully traverses the examiner’s positions of record. Applicant acknowledges that Deogon discloses a very broad collection of possible compositions that may or may not overlap with claim 1but argues there is insufficient specificity to amount to a clear disclosure of a composition having both a carbonific : spumific weight ratio and a carbonific : source of phosphoric acid weight ratio within the ranges now recited in amended claim 1. Specifically, Deogon, column 8, lines 31-48 discloses a content range for the carbonific of 7 to 10 wt% and a content range for the spumific of 11 to 18 wt%, giving a ratio range of 0.39 to 0.90. The claimed requirement is for the ratio to be no more than 0.48. Applicant, therefore, concludes one of skill in the art has an 18% chance of hitting the correct ratio. Furthermore, Deogon discloses a content range for the source of phosphoric acid (a combination of phosphonic acid and char forming adjunct) of 21 to 35 wt%, giving a C:PA ratio range of 7/35 to 10/21, i.e., 0.2 to 0.48 . Applicants argue, therefore, one of skill in the art has only a 64% chance of hitting this ratio. Applicants calculate the probability that a composition prepared within the broad teachings of Deogon will have the C:S and C:PA ratios within the claimed range is only 12%. Such a low probability of arriving at a composition having both the claimed C:S and C:PA ratios represent, at most, a mere possibility among many encompassed by Deogon, and does not amount to a sufficiently specific disclosure of the presently claimed combination. Applicants further argue that one of skill in the art has a 45% chance of hitting the correct C:S ratio, and a 71% chance of hitting the correct C:PA ratio, meaning that he/she has only a 32% chance of hitting the correct combination. Said argument is noted but is not persuasive as applicant has not shown their approach of calculating probabilities of “hitting the correct combination” is based upon court precedence for determining if a range is “sufficiently specific.” Thus, the examine maintains the position for reasons of record. Specifically, absent a showing of criticality, Said ranges are overlapping with the claimed ranges and are understood to be sufficiently specific to read on the range of the pending claims (See MPEP 2131.03).
Applicant further points to the discussion in MPEP § 2131.03(II) that explains that there is no anticipation when the claimed range is a critical element. Said argument is noted but is not persuasive as applicants have not demonstrated the claimed ranges are critical. While applicant argues the Examples show that compositions having the required combination of features achieve better performance in both jet fire and pool fire tests (particularly the former) without the need for a supporting mesh, said argument is not persuasive for the reasons set forth in the Final Rejection of 6/17/2026. Specifically, applicants have not shown the results are observable over the entirety of the claimed ranges.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US2024/0209244 teaches a composition comprising epoxy and polysulfide in the claimed relative amounts, but applicant’s foreign priority date predates the PCT filing date of the reference. US 2017/0029673 teaches a composition comprising epoxy and polysulfide in the claimed relative amounts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
