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 .
Status of Claims
Claims 1-12 and 16-23 are pending in the current application.
Claims 13-15 are canceled in the current application.
Claim Objections
Claims 16, 17, and 18 are objected to because of the following informalities:
Claims 16, 17, and 18 recite “A binder system as claimed in claim 1.” For uniformity and consistency with dependent claims 2-5, claims 16, 17, and 18 should be amended to instead recite “The binder system as claimed in claim 1.”
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.
Claims 3, 4, 10, and 11 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.
Claim 3 recites the limitation "the weight ratio of trimethylolethane triglycidyl ether to epoxy-binder system is 1:1 to 100:1." There is insufficient antecedent basis for the term “epoxy-binder system” in the claim. The “epoxy-binder system” is not previously explicitly recited or defined. It is unclear what claimed or unclaimed component make up the scope of the “epoxy-binder system.” Claim 3 depends from claim 1, where claim 1 recites a “binder system” and “(i) an epoxy-based binder,” however, neither of these claimed components clearly correlates to the “epoxy-binder system.” It is also noted that the trimethylolethane triglycidyl ether is required to have a higher content than the epoxy-based binder as recited by claim 1. For the purposes of examination, the claim is interpreted as instead reciting “the weight ratio of trimethylolethane triglycidyl ether to epoxy-based binder >1:1 to 100:1.”
Claim 4 recites a broad limitation together with a narrow limitation that falls within the broad limitation in the same claim. This is considered indefinite, because the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “at least one amine group,” and the claim also recites “preferably a cycloaliphatic amine or polyamide” which is the narrower statement of the limitation. The claim is considered indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the claim is interpreted as instead reciting “at least one amine group
Claim 10 recites a broad limitation together with a narrow limitation that falls within the broad limitation in the same claim. This is considered indefinite, because the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “a surface,” and the claim also recites “preferably a metal surface” which is the narrower statement of the limitation. The claim is considered indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the claim is interpreted as instead reciting “a surface
Claim 11 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since this claim depends from claim 10 as rejected above and does not remedy the aforementioned deficiency.
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.
Claims 1-5, 7, 16, 17, 19, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yuasa et al. (JP 2004231787 A, herein English machine translation is utilized for all citations).
Regarding Claims 1, 17, 19, and 20, Yuasa teaches an epoxy resin composition with excellent thermo-mechanical and electrical properties for curing to form a cured product (i.e., a binder system) comprising essential components of a liquid epoxy resin of formula (1) where R can be a methyl group (yielding trimethylolethane triglycidyl ether), a solid epoxy resin (i.e., an epoxy-based binder), a curing agent, and a curing catalyst (i.e., a homopolymerization accelerator) (Yuasa, Abstract, [0001]-[0002], [0005]-[0008], [0041], formula (1)). It would have been obvious to one of ordinary skill in the art to have selected and to have tried trimethylolethane triglycidyl ether as the liquid epoxy resin from the finite number of options of formula (1) disclosed by Yuasa with a predictable and reasonable expectation of success (MPEP 2143). Trimethylolethane triglycidyl ether is identical to the claimed compound. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. Therefore, Yuasa’s trimethylolethane triglycidyl ether is considered to necessarily satisfy an aliphatic glycidyl ether having CAS no. 68460-21-9 (required by claims 19 and 20). Yuasa teaches the liquid epoxy resin of formula (1) accounts for 1-60 wt% of the total weight of essential components (Yuasa, Abstract, [0022]). Yuasa’s range (from 50-60 wt% of the 1-60 wt%) overlaps the claimed scope of being higher than the wt% of epoxy-based binder, and therefore, renders obvious the claimed scope (MPEP 2144.05).
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Yuasa – Formula (1)
Regarding Claim 2, Yuasa teaches the liquid epoxy resin of formula (1) accounts for 1-60 wt% of the total weight of essential components (Yuasa, Abstract, [0022]). Yuasa’s range (from 50-60 wt% of the 1-60 wt%) relative to all essential components would necessarily be a greater percentage when taken only relative to the total of the liquid epoxy resin of formula (1) and the solid epoxy resin. Yuasa’s range would necessarily overlap the claimed scope of 50-90 wt% of the total of the liquid epoxy resin of formula (1) and epoxy-based binder, and therefore, render obvious the claimed scope (MPEP 2144.05). Yuasa also teaches examples having 50 parts by weight of the liquid epoxy resin of formula (1) and 40 parts by weight of the solid epoxy resin (Yuasa, [0044], Table 1). This yields a content of 50/90*100 = 55.5 wt% that falls within the claimed range, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 3, Yuasa teaches examples having 50 parts by weight of the liquid epoxy resin of formula (1) and 40 parts by weight of the solid epoxy resin (Yuasa, [0044], Table 1). This yields a ratio of 50:40 (5:4, 1.25:1) that falls within the claimed ratio range of >1:1 to 100:1, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 4, Yuasa teaches the curing agent comprises at least one amine group (Yuasa, [0024], [0040]).
Regarding Claim 5, Yuasa teaches the homopolymerization accelerator is an imidazole-based compound (Yuasa, [0025], [0040])
Regarding Claim 7, Yuasa teaches a method for preparing the binder composition comprising mixing the essential components as discussed above for claim 1 (Yuasa, [0028]).
Regarding Claims 16 and 21, Yuasa’s trimethylolethane triglycidyl ether (an aliphatic glycidyl ether having CAS no. 68460-21-9) is identical to the claimed compound. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. Therefore, Yuasa’s trimethylolethane triglycidyl ether is considered to necessarily have an equivalent epoxy weight of 118-128.
Claims 1-12 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kikkawa et al. (KR 20190013592 A, herein English machine translation is utilized for all citations), in view of Kim et al. (KR 20210047685 A, herein English machine translation is utilized for all citations), and in view of Yuasa et al. (JP 2004231787 A, herein English machine translation is utilized for all citations).
Regarding Claims 1 and 19-21, Kikkawa teaches a coating composition (i.e., a binder system) comprising an epoxy compound (A), an amine-based curing agent (B), and an imidazole-based compound (C) (Kikkawa, Abstract, Pgs1-4). Kikkawa teaches the imidazole-based compound (C) is for efficiently and rapidly promoting polymerization, where the compound (C) includes 1-methylimidazole (Kikkawa, Abstract, Pgs 6-7). 1-methylimidazole is identical to a homopolymerization accelerator disclosed within the specification as originally filed (Spec, Pg 14). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. Therefore, the imidazole-based compound (C) is considered to satisfy the claimed the homopolymerization accelerator. Kikkawa teaches the epoxy compound (A) is a blend of 50-100 mass% of a resorcinol diglycidyl ether (RDGE) compound (A1) and 0-50 mass% of an epoxy compound other than RDGE (A2) such as a novolak type epoxy resin (i.e., an epoxy-based binder) (Kikkawa, Pgs 3-4).
Kikkawa remains silent regarding an epoxy compound that is trimethylolethane triglycidyl ether (a trifunctional epoxy resin compound), and remains silent regarding trimethylolethane triglycidyl ether content being higher than an epoxy-based binder.
Kim, however, teaches a coating composition comprising 5-25 parts by weight of a novolak-based epoxy resin, 5-25 parts by weight of a trifunctional epoxy resin compound, a curing agent (such as an amine-based compound), and a curing accelerator (such as an imidazole compound) (Kim, Abstract, Pgs 1-5). Kim teaches resorcinol diglycidyl ether compounds are harmful to the human body, cause skin trouble, have slow drying time, have low repainting flexibilities, and therefore, are inferior (Kim, Pgs 1-2). Kim teaches resorcinol epoxy resins should not be used, and can be replaced by the combination of 5-25 parts by weight of the novolak-based epoxy resin and 5-25 parts by weight of the trifunctional epoxy resin compound (Kim, Pgs 1-2, 9).
Since Kikkawa and Kim both disclose similar epoxy-based resin coating compositions comprising novolak-based epoxy resins and Kim teaches replacing inferior resorcinol epoxy resins, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced Kikkawa’s epoxy compound (A) (comprising resorcinol diglycidyl ether and novolak type epoxy resin) with Kim’s epoxy resin blend (comprising novolak-based epoxy resin and trifunctional epoxy resin compound) to yield a coating composition that is free of resorcinol epoxy resin that is harmful to the human body, exhibits low solvent absorbent rate, has excellent chemical and heat resistance, has excellent durability, exhibits improved glass transition temperature, and possesses improved tensile strength as taught by Kim (Kim, Pgs 1, 3).
Modified Kikkawa teaches the trifunctional epoxy resin compound is included in an amount of 5-25 parts by weight and the novolak-based epoxy resin is included in an amount of 5-25 parts by weight (Kim, Pgs 1-3). Modified Kikkawa’s ranges yield embodiments having trifunctional epoxy resin compound content higher than the novolak-based epoxy resin content; for example, having 20-25 parts by weight of trifunctional epoxy resin compound and 5-19 parts by weight of novolak-based epoxy resin content. Therefore, modified Kikkawa’s ranges render obvious the claimed scope (MPEP 2144.05).
Modified Kikkawa remains silent regarding a specific trifunctional epoxy resin compound of trimethylolethane triglycidyl ether.
Yuasa, however, teaches an epoxy resin composition with excellent thermo-mechanical and electrical properties for coating and curing to form a cured product (i.e., a binder system) comprising essential components of a liquid epoxy resin of formula (1) where R can be a methyl group (yielding trimethylolethane triglycidyl ether), a solid epoxy resin (i.e., an epoxy-based binder, such as a novolak type epoxy resin), a curing agent, and a curing catalyst (i.e., a homopolymerization accelerator) (Yuasa, Abstract, [0001]-[0002], [0005]-[0008], [0022]-[0023], [0041], formula (1)). It would have been obvious to one of ordinary skill in the art to have selected and to have tried trimethylolethane triglycidyl ether as the liquid epoxy resin from the finite number of options disclosed by Yuasa with a predictable and reasonable expectation of success (MPEP 2143). Trimethylolethane triglycidyl ether is identical to the claimed compound. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. Therefore, modified Yuasa’s trimethylolethane triglycidyl ether is considered to necessarily satisfy an aliphatic glycidyl ether having CAS no. 68460-21-9 with an equivalent epoxy weight of 118-128 (required by claims 19, 20, and 21).
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Yuasa – Formula (1)
Since modified Kikkawa and Yuasa both disclose similar epoxy-based resin compositions comprising trifunctional epoxy resin compounds and novolak-based epoxy resins, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Yuasa’s specific trimethylolethane triglycidyl ether epoxy compound as Kim’s trifunctional epoxy resin compound to yield a coating composition that is excellent in workability, thermal, mechanical, and electrical properties, and has low viscosity as taught by Yuasa (Yuasa, Abstract, [0001], [0005]-[0006], [0048]-[0049]).
Regarding Claim 2, modified Kikkawa teaches the trifunctional epoxy resin compound (trimethylolethane triglycidyl ether epoxy) is included in an amount of 5-25 parts by weight and the novolak-based epoxy resin is included in an amount of 5-25 parts by weight (Kim, Pgs 1-3). Modified Kikkawa’s range yield embodiments having trimethylolethane triglycidyl ether epoxy content based on total weight of the trimethylolethane triglycidyl ether epoxy and the novolak-based epoxy resin of [5/(5+25)]*100 = 16.67 wt% to [25/(25+5)]*100 = 83.33 wt%. Modified Kikkawa’s range overlaps the claimed range of 50-90 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 3, modified Kikkawa teaches the ratio of trimethylolethane triglycidyl ether epoxy to the novolak-based epoxy resin is 0.1:1 to 1.5:1 (Kim, Pg 3). Modified Kikkawa’s range overlaps the claimed range of 1:1 to 100:1, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, modified Kikkawa teaches the composition comprises the amine-based curing agent (B) containing at least one amine group (Kikkawa, Abstract, Pgs 5-6).
Regarding Claim 5, modified Kikkawa teaches the composition comprises the imidazole-based compound (C) that is for efficiently and rapidly promoting polymerization, where the compound (C) includes 1-methylimidazole (Kikkawa, Abstract, Pgs 6-7).
Regarding Claim 6, modified Kikkawa teaches a coating composition comprising the composition of claim 1 as discussed above (Kikkawa, Abstract, Pgs 1-2, 10-11).
Regarding Claim 7, modified Kikkawa teaches a method for preparing the composition of claim 1 as discussed above comprising mixing (Kikkawa, Abstract, Pgs 10-12).
Regarding Claim 8, modified Kikkawa teaches a 2-component composition comprising a main component (i.e., a first container) containing the epoxy components (A) (the trimethylolethane triglycidyl ether epoxy and the novolak-based epoxy resin) and a curing component (i.e., a second container) containing the amine-based curing agent (B) and the imidazole-based compound (C) (Kikkawa, Pgs 3, 6).
Regarding Claim 9, modified Kikkawa teaches a cargo tank (i.e., a container) containing the coating composition as discussed above for claim 1 (Kikkawa, Abstract, Pgs 1-2, 10-11).
Regarding Claim 10, modified Kikkawa teaches a method for providing a coating on a cargo tank metal surface comprising applying the coating composition as discussed above for claims 1 and 6, and curing the coating composition (Kikkawa, Abstract, Pgs 10-12).
Regarding Claims 11 and 12, modified Kikkawa teaches a coating obtained by the method of claim 10 and formed by the coating composition of claims 1 and 6 discussed above (Kikkawa, Abstract, Pgs 10-12).
Regarding Claim 16, modified Kikkawa teaches the trifunctional epoxy resin has an epoxy equivalent of 90 to 180 g/eq (Kim, Pg 3). Modified Kikkawa’s range encompasses the claimed range of 118-128, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 17, 18, 22, and 23, modified Kikkawa teaches trimethylolethane triglycidyl ether that is identical to the claimed compound. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01, II. Therefore, modified Kikkawa’s trimethylolethane triglycidyl ether is considered to necessarily satisfy an aliphatic glycidyl ether having CAS no. 68460-21-9 with an equivalent epoxy weight of 118-128. Modified Kikkawa also teaches the trifunctional epoxy resin has an epoxy equivalent of 90 to 180 g/eq (Kim, Pg 3). Modified Kikkawa’s range encompasses the claimed range of 118-128, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Kikkawa teaches the epoxy compound content is 100 parts by mass of solids relative to 100 parts by mass of non-volatile matter of the coating composition (Kikkawa, Pgs 3-4). This yields a composition with 100 wt% of non-volatile (i.e. solids) matter, and therefore, satisfies the claimed value (MPEP 2131.03).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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