DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1-10 and 15-19; "a process for producing a reactive resin for intumescent coatings") in the reply filed on 06/17/2026 is acknowledged. The applicants at pages 2 and 3 of their Remarks filed 06/17/2026 argue that the Examiner has only cited Hilf et al. (of record) for disclosing a (meth)acrylic reactive resin comprising reactive monomers mixtures including the claimed first and second monomer mixtures, and a polymer having the claimed glass transition temperature, but has not explained how the other claimed features of the present invention fail to contribute over the cited reference, and thus, it is not been shown that unity of invention is lacking. However, this argument is not persuasive at this time because as mentioned in the previous Office action mailed 06/11/2026, the technical features common to Groups I-III include a reactive resin produceable from a first monomer mixture comprising an acid-functionalized monomer together with a second monomer mixture that differs from the first monomer mixture and a polymer has a glass transition temperature of less than 23°C, which are taught by Hilf et al. of record, and not disputed by the applicants. The other features recited in the elected claim 1 applicants argue that Hilf et al. do not explain are not technical features common to Groups I-III, and thus, were not mentioned in the previous Office action. Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 06/17/2026.
4. It is also noted that the applicants request rejoinder of non-elected claims (see top of Page 3 of the Applicants’ Remarks filed 06/17/2026). However, the request for rejoinder is moot since the instant claims are not deemed allowable for the reasons set forth below. According to MPEP § 821.04 [R-3], “Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.” Since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time.
Response to Preliminary Claim Amendment filed 02/01/2024
5. New claims 15-19 were added.
Written descriptive support for the above amendment is found at paragraphs [0027], [0032], [0037] and [0042], of applicants’ published application, i.e., US PG PUB 2024/0287325.
Thus, no new matter is present at this time.
Claim Objections
6. Claims 3-4 and 9 are objected to because of the following informalities:
As to Claims 3-4 and 9: The applicants are advised to replace the claimed “a total weight” with the new phrase “the total weight”.
Appropriate corrections are 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.
7. Claims 10 and 19 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.
As to Claims 10 and 19: As recited, it is not clear whether “a polymer” in claims 10 and 19 is referring to the same polymer formed in claim 1, on which they depend from, or is another/new polymer. Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
Accordingly, the scope of these claims is deemed indefinite.
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.
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.
8. Claims 1-3, 5-7, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (WO 2021/180488; utilized US 2023/01204831 as its English equivalent) in view of Hilf et al. (US 2014/0128536).
It is noted that since the applicants have not submitted a certified English translation of the foreign priority document EP 21189015.7 having written descriptive support for the pending claims of the present application under 35 USC 112(a), they are not entitled to the benefit of the foreign priority filing date of such document. See MPEP § 2163.03, II-III.
It is further noted that WO 2021/180488 is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2023/0120483, since WO 2021/180488 is in German.
As to Claims 1-3, 5-7, and 15-17: Keller et al. disclose a process for preparing a reactive resin for intumescent coatings (Paragraph [0015]), wherein the process comprises the steps of polymerizing a monomer mixture comprising at least one acid-functional (functionalized) monomer (corresponding to the claimed first a monomer mixture) to a degree of polymerization of not more than 70% (which touches the claimed degree polymerization range of 70% by weight-95% by weight) , after which the polymerization is discontinued (terminated), to obtain a polymer having a glass transition temperature, calculated according to Fox equation, of less than 23°C (Paragraphs [0015] and [0032], and see claim 1 of Keller et al.), and the polymerization is discontinued (terminated or termination) of the polymerization (Paragraph [0015] and [0016]). Keller et al. also disclose that the first monomer mixture consists to an extent of at least 90 wt. % of acrylates and/or methacrylates, and further monomer including methyl (meth)acrylate and isobutyl (meth)acrylate, and in that at least one acid-functional (functionalized) monomer includes acrylic acid, methacrylic acid or itaconic acid (Paragraphs [0018]-[0020]). Keller et al. further disclose that the polymer formed contains between up to 5 wt.% of the repeat units of the acid-functional (functionalized) monomer (Paragraph [0019]), which overlaps with the claimed 1-10% by weight and 2.5-5% by weight of the repeat units of the at least one acid-functionalized monomer, and has a weight-average molecular weight of 10,000-200,000 g/mol and glass transition temperature of -20 to 20 °C (Paragraph [0022] and see also claim 8 of Keller et al.), which overlaps with the claimed glass transition temperature of -10 to 15°C. Moreover, Keller et al. disclose that the polymerization is carried out discontinuously in a batch mode (batchwise) process with the reaction discontinued (terminated) by lowering the temperature, through consumption of an initiator (Paragraphs [0015] and [0028]).
However, Keller et al. do not mention the second step of diluting the first monomer mixture with a second monomer mixture that differs from the first monomer mixture as required by the claimed process.
Nevertheless, Hilf et al. disclose the step of adding a second monomer mixture comprising a diluent to dilute a first monomer mixture containing different monomers from the second monomer mixture for the purposes of preparing a reactive resin for coatings having good surface properties (Paragraphs [0001], [0007]-[0008], [0020], [0037]-[0039] and [0055]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed second step of diluting the first monomer mixture with a second monomer mixture that differs from the first monomer mixture taught by Hilf et al. in the process of Keller et al., with a reasonable expectation of successfully preparing a reactive resin for coatings having good surface properties.
9. Claims 4, 8-9 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
10. For record purposes only, it is also noted that there are no prior art rejections of present claims 10 and 19.
Correspondence
11. The prior art made of record, namely, Schmitt et al. (US 2012/0164462), and not relied upon is considered pertinent to applicants’ disclosure. Specifically, Schmitt et al. only disclose a resin system for an intumescent coating (Paragraphs [0001] and [0017]-[0022]), but do not further specifically mention the claimed particular steps in producing the reactive resin.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 02/01/2024.
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