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 Objections
Claim 34 is objected to because of the following informalities:
In claim 34, line 2, “epoxy based-resin” should read “epoxy-based resin.”
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.
Claim 25 is 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 25 recites, “The composition according to claim 16, having a viscosity after storage for one week.” It is unclear what “having a viscosity” means. It could refer to a specific viscosity range, a particular change in viscosity, or a measurable viscosity according to a particular test method. Furthermore, the storage conditions, such as temperature, are undefined. For the purpose of examination, it will be taken to mean that the composition has a measurable viscosity after storage for one week in ambient conditions.
Claim Rejections - 35 USC § 102
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.
Claims 16-19 and 22-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lang (EP 3176232 A1, using the machine translation for the citations below).
Regarding Claims 16-19: Lang teaches a composition comprising a difunctional thiol compound that is free of an ester group, such as tetra(ethylene glycol)dithiol (para. 0042) and an amine compound (para. 0046).
Regarding Claims 22-23: Lang teaches an additive which forms an insulating layer, such as a carbon source, acid former, blowing agent, or a thermally expandable compound (para. 0066-0068, 0074).
Regarding Claim 24: Lang teaches an ash crust stabilizer (para. 0076).
Regarding Claim 25: Not disclosed is the viscosity of the composition after storage for one week. However, Lang teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e., a measurable viscosity after storage for one week, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 26: Lang teaches a multi-component composition (para. 0083) comprising the curing composition set forth above and an epoxy-based binder (para. 0018).
Regarding Claim 27: Lang teaches that the epoxy resin contains at least two epoxy groups (para. 0018).
Regarding Claims 28-30: Lang teaches epoxies that are the reaction products of an epihalohydrin with polyhydroxy/polyphenol compounds such as bisphenol A or bisphenol F, wherein the epoxy equivalent weight is less than or equal to 550 (para. 0020).
Regarding Claim 31: Lang teaches a catalyst for the reaction of the epoxy and the ester group-free thiol (para. 0012).
Regarding Claim 32: Lang teaches that the composition is an intumescent composition (para. 0001).
Regarding Claim 33: Lang teaches further additives (para. 0080-0082).
Regarding Claim 34: Lang teaches a method of curing an epoxy resin comprising mixing the composition comprising a thiol and an amine with the epoxy (para. 0084, hardening reaction triggered by mixing the components).
Claims 16-19 and 21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Matsumura et al (US 2014/0031500 A1).
Matsumura teaches a composition comprising an amine compound such as an epoxy resin comprising amine/glycidylamino groups (para. 0017) and an ester group-free thiol compound having two or more thiol groups, such as benzenedithiol (para. 0052).
Allowable Subject Matter
Claim 20 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Lang is the closest prior art, which teaches the basic claimed composition of claim 18, as set forth above. Prior art alone or in combination does not teach liquid ethoxylated or propoxylated 2-hydroxy-3-mercapto-1-propyl-substituted aliphatic alcohol. It would not be obvious to one of ordinary skill in the art to substitute the thiol compound of Lang with a teach liquid ethoxylated or propoxylated 2-hydroxy-3-mercapto-1-propyl-substituted aliphatic alcohol.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zillessen et al (US 2020/0385513 A1) teaches ester-free thiol compounds for use in epoxy compositions.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights