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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1-3, 6-9, and 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 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 include in amounts of 11-18wt% of the composition. Thus, Deogon requires or 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 an 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 fibres 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 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) 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
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, and 11-17 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 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 include in amounts of 11-18wt% of the composition. Thus, Deogon requires or 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 an 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 fibres 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 not persuasive.
Rejections under 35 U.S.C. § 102
With regards to the rejection of claims 1-3, 6-9, 11-15 under post-AIA 35 U.S.C. § 102(a)(1) over Deogon et al., U.S. Patent No. 9,447,291. Applicant respectfully traverses this rejection. Specifically, independent claim 1 has been amended to require "wherein the weight ratio of carbonific(s) to spumific(s) is no more than 0.48 and the weight ratio of carbonific(s) to source(s) of phosphoric acid is no more than 0.38." Applicant argues Deogon fails to teach both the carbonific to spumific
weight ratio to be no more than 0.48 and the carbonific to source of phosphoric acid weight ratio
to be no more than 0.38. In support of said position, applicant points to Deogon’s Example 1 which provides suggested ranges of components. Applicant calculates the Carbonific : spumific of example 1 to be between 0.31 -0.69 and the Carbonific : source of phosphoric acid ratio to be 0.21-0.45. Applicant argues “Because both these ranges only partially overlap with the claimed ranges, there can be no specific disclosure of a coating composition that clearly and unambiguously simultaneously has both a carbonific to spumific weight ratio of no more than 0.48 and also a carbonific to source of phosphoric acid weight ratio of no more than 0.38.” Said argument is noted but is not persuasive as it is unclear what legal standard applicant is suggesting with the “clearly and unambiguously” argument. Rather, the examiner maintains the overlapping ranges of the prior art are sufficiently specific to anticipate the claimed ranges for the reasons set forth in 2131.03. Thus, the rejection is maintained.
Applicant further argues the claimed ranges are critical to the claimed invention. Specifically, applicant argues the general teaching of Deogon provides no teaching or hint that the specific combination of ratios as presently claimed can impart high performance in different types of fire test, namely jet fire tests and pool fire tests, and have much improved stability and performance without the need for a supporting mesh. Referencing the results in Tables 2 and 3, applicant argues the performance of the claimed compositions is remarkably improved by maintaining the above- mentioned ratios within the specified limits compared to compositions outside the limits. Applicant argues the compositions of comparative examples 1 and 2 are in-line with the example at columns 9-10 of Deogon. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; all the inventive examples comprise polysiloxane which is not required by the pending claims (except claims 16 and 17). Furthermore, applicant has not shown the results are observable over the entirety of the claimed ranges.
With regards to the rejection of claims 1-3, 6-9, 11-15 were rejected under post-AIA 35 U.S.C. § 103 over Deogon et al., in view of Morita et al., U.S. Pub. No. 2020/0291184, Applicant respectfully traverses this rejection on the basis that one of skill in the art would not be motivated to combine Deogon and Morita. Specifically, applicant argues Deogon relates to intumescent coating compositions, whereas Morita relates to sealants. Thus, one of skill would not obviously look to Morita when looking to improve or alter compositions taught by Deogon. Intumescent compositions are a specific class of coating Said argument is noted but is not persuasive; the examiner maintains said references are analogous based upon the chemical similarity of the compositions.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for reasons of record.
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.
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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