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 .
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan et al. US 2011/0041924 A1, and in view of Terasaka et al. JP-2009-001767A.
Regarding claims 1 and 4, Mohan teaches primer compositions which are consolidated into a solid film state (para [0026]) and which comprises a perfluoropolymer which is melt flowable (para [0023]), where the preferred perfluoropolymer include FEP. Mohan notes (para [0046]) the average particle size of the perfluoropolymer to be in the range of 2 to 60 micrometer, overlapping the claimed requirement.
Mohan discloses that the primer composition further comprises (paras [0058] and [0059]) a heat resistant polymer binder component which includes a polyamideimide, which corresponds to applicant’s heat-resistant resin. Mohan adds that the amount of heat-resistant resin is 10-60 wt% based on the combined weight of the perfluoropolymer and the heat-resistant resin, overlapping the required mass ratio of FEP particles and the heat-resistant resin. The mass wt% range of FEP particles can thus be calculated to be 90-40 wt%.
Mohan discloses (para [0063]) the use of water as a solvent, where the solvent amount is suggested (para [0065]) to be 40 to 75 wt% based on the combined weight of solvent, fluoropolymer and polymer binder (heat-resistant resin). This results in the solvent range (which can be water) of 16wt% (0.4 x 0.4 (FEP wt%) x100 =16) to 67.5 wt% (0.75 x 0.9(FEP wt%) x 100 =67.5) with respect to FEP fluoropolymer particles, overlapping the claimed requirement.
Mohan is silent on the presence of non-ionic surfactant and an acetylenic diol-based surfactant, however discusses (para [0039]) the addition of other ingredients which can be present in the primer, which include surface tension modifiers (also known as surfactants). Since Mohan fails to mention specific suitable surfactants, one of ordinary skill in the art would take guidance from related disclosures to ascertain what might be used in that capacity. Reference Terasaka also teaches fluoropolymer coating compositions (para [0001]) and recommends the use of nonionic surfactants such as polyoxyethylene alkyl ethers (para [0036]) and an acetylene based surfactant (para [0037]), such as acetylene-glycol (para [0055]). Advantageously, Terasaka provides the motivation to incorporate the specific surfactants (paras [0037] and [0038]) to serve the dual purpose of improving the uniformity of dispersion of the fluoropolymer resin and reduce the environmental footprint upon evaporation during the coating film formation.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Mohan with the surfactants polyoxyethylene alkyl ether and acetylene-glycol as taught by Terasaka for the same application of creating a primer coating composition with improved dispersion quality of the fluoropolymer resin and reduced environmental burden upon surfactant evaporation.
Regarding claim 2, Mohan teaches (para [0046]) the perfluoropolymer (FEP) average particle size of 2 to 60 µm, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Mohan is silent on the use of a heat stabilizer, however Terasaka (para [0044]) notes the use of an additive which can be a stabilizer. The use of small amounts of heat stabilizer (or antioxidant) would have been obvious to a person having ordinary skill in the art. Additionally since both the prior art compositions and that of instant invention (specification, para [0084]) are being utilized for the same end products such as coating interior surfaces of pipes, it would be obvious to optimize the antioxidant amounts to the desired levels.
Regarding claims 5-7, as discussed when addressing claim 1, Mohan teaches the creation of a consolidated primer film derived from the fluoropolymer based compositions. Mohan further discloses creation of a laminate structure generated by overcoating the primer layer, where the overcoat layer is also derived from a meltable fluoropolymer (para [0023], [0026], [0028] and [0029]), where the primer film thickness is around 1 mil, while that of the laminate structure is around 8 mil. The laminate system is utilized for coating an interior surface of a metal pipe (para [0018]), where the primer layer adheres to the surface of the pipe and the overcoat layer is adhered to the primer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mohan and in view of Terasaka, as applied to claims 1-7 and further in view of Tomihashi et al. US 6,734,236 B1.
As discussed, when addressing claim 3, Mohan in view of Terasaka disclose the use of stabilizer, however the reference combination fails to mention a specific permutation of suitable stabilizers, therefore one of ordinary skill would take guidance from related disclosures to ascertain what might be used in that capacity. Analogous reference Tomihashi teaches FEP based copolymer (col 2, line 40) and recommends the combination of organosulfurous and aromatic amine thermal stabilizer (col 5, lines 11-18) to effectively inhibit the deterioration of the fluoropolymer (col 1, lines 21-25).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have added to Mohan in view of Terasaka the combination of organosulfurous and aromatic amine thermal stabilizer as taught by Tomihashi for the same application of creating a coating composition with improved thermal stability.
Response to Arguments
Applicant's arguments filed on 06/05/2026 have been fully considered, please see the response below.
Applicant submits that Mohan’s para [0046] disclosure of particle size of 2 to 60 micrometer is for the overcoat composition and not primer composition, and that Mohan’s Table 1 used FEP with different particle size (8 micrometers, Mohan, Table 1).
In response, while it is acknowledged that Mohan’s para [0046] discusses overcoat composition, Mohan notes in para [0033] that the composition of the primer layer and the overcoat can be the same. Patents are relevant as prior art for all they contain and applicant’s attention is brought to "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983)”.
Additionally, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Therefore, applicant’s argument that Mohan does not teach the claimed FEP particle size in a water based system is not convincing.
Applicant further notes that secondary reference Terasaka specifically teaches much smaller particle size than the claimed particle size and therefore teaches way from the claimed particle size. It is emphasized that secondary reference Terasaka was utilized to teach the permutation of non-ionic and acetylenic diol-based surfactants, with appropriate motivation to incorporate the specific surfactants to improve dispersion quality of the fluoropolymer. Mohan teaches the overlapping particle size and Terasaka was not relied upon to teach the particle size. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant adds that neither Mohan nor Terasaka address the specific technical problem of dispersing large FEP particles in water.
In response, as discussed above Mohan discloses the FEP particles and water as the solvent. While, Mohan and Terasaka do not disclose the same superior effects of the instant invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that examiner cites Mohan para [0063] to teach water and that Mohan prefers organic solvent for the primer, and Mohan teaches away from water-based primer due to rust concerns.
While Mohan insinuates possible rust concerns with water based primer, Mohan’s preferred embodiment (Ex 2, Table 1) is a water based primer. "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)”.
Applicant argues that topcoat described in Terasaka and the primer of the present applicant are based on different technical concepts, and that large FEP particles are prone to sedimentation and Terasaka does not provide the benefits of the instant application.
Applicant’s argument is not convincing since Terasaka does not limit the fluoropolymer coating composition to a topcoat, and it is reiterated that primary reference Mohan teaches the required overlapping particle size and Terasaka discloses the specific surfactant permutation. Applicant’s attention is also directed to "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Regarding claim 8, since Mohan and Terasaka do not specify the type of stabilizer, additional secondary reference Tomihashi is utilized to teach the required limitation.
Applicant’s arguments against Mohan and Terasaka are not convincing, and the prior art references continue to provide the support for maintaining the rejection.
Conclusion
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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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