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 .
Applicant has amended the claims and added a new claim. Amended/new grounds of rejection are below set forth addressing the new limitations.
The amended/new claims do not overcome the rejections based on the previously cited prior art as more fully below set forth.
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 1-10 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 1 recites a “the primer composition being a powder coating composition” and also recites the composition consists of two components. The second component is an “unground porous materials” It is unclear how the porous material which includes materials such as zeolite (see dependent claim 7) is unground but it a powder component of the final powder composition. Clarification is requested.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Introduction and Interpretation
The following claim interpretation and introduction is expressly incorporated into each and every rejection below as though fully set forth therein.
The claims recite “optional” components. Any optional components are not required.
MPEP 2103
Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation.
MPEP 2143.03
Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009)
So, the optional pigment is not required in claim 1 the optional filler is not required in claim 1 the optional additives are not required in claim 1.
Similarly, while certain dependent claims recite species of the optional components, they do not affirmatively require the presence of these components i.e. these components remain optional. See for example claims 7-10. (notwithstanding same the prior art teaches a leveling agent of benzoin and a pigment of titanium dioxide which are indicated as optional)
Claims 1 and 4-5 are product by process claims as they are directed to the claimed composition of claim 1 and recite process steps pertaining to extraction grinding etc. Claim 1 recites “unground” this is a product by process limitation. Noting the composition is claimed as a powder, the process of forming the powder does not further limit the overall composition. These limitations have been considered as more fully below set forth. Nonetheless, the examiner maintains the it is the product which determines patentability.
MPEP 2113
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (emphasis added by examiner)
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections (emphasis added by examiner)
The prior art teaches specific examples which meet certain ranges and also teaches points of ranges/ranges which overlap and encompass certain clamed ranges (i.e. claim 3) See MPEP 2144.05(I): "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, 191 USPQ 90 (CCPA 1976)"
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The prior art having taught the claimed composition for coating a substrate meets the limitation for a primer composition for coating a substrate prior to application there of an intumescent fire protecting coating composition. The preamble language “for coating a substrate prior to application thereon of an intumescent fire protecting coating composition” is an intended use and does not further limit the claimed composition which is fully set forth in the body of the claim by its chemical components.
MPEP 2111.02 If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)
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.
35 USC § 102/103
Claim(s) 1-2, 6-9 and 10 and claim 16 is/are rejected as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gibson et al (WO 2004/024834A1) (cited in the IDS field 9/12/2023)
Regarding Claims 1-2, 6-8, 9 and 10:
Gibson et al (WO 2004/024834A1) discloses a powder coating composition (i.e. primer powder coating of claim 1) for coating on a substrate using any method normally used for coating substrates with powder coatings (P5 L33-38)
See Tables 1, 4 and 7 below for examples which meet the instant claims 1-2, 6-9 and 10.
Gibson teaches the composition comprising:
Zeolite (meeting the limitations of claims 1 and 6-7 for porous material etc. esp. zeolite) and organic resin and titanium dioxide (meeting the limitation of claim 8 for optional pigment (Abstract)(P3 L33-38) Zeolite may be natural or synthetic (P2 L7-10) (meeting claim 6)
The organic resin can be any organic resin suitable for preparing powder coatings including thermoplastic and thermosetting resins. The resins include epoxy resin, polyester resin hybrid epoxy polyether resins, urethane resins and acrylic resins (P 2 L35-P4 L10)
The resins include:
Thermoplastic:
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152
816
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Greyscale
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78
766
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(P2 L30-P3 L3)
Thermosetting:
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928
784
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Greyscale
P3
SEE INSTANT SPECIFICATION:
These thermosetting resins esp. those set forth in the below examples meet the limitations for a grinding agent and for a hardening agent (See instant specification for example at [0077] Table 2) See instant specification at [0027] where resins include epoxy-polyester polyester/polyurethane epoxy resins and [0035] epoxy or epoxy polyester or acidic polyester etc. [0045][0077]
The prior art teaches epoxy and polyester epoxy resins and polyester urethane resins are among those taught by the prior art and are those identified in the instant specification as binding agents and hardening agents therefore meeting the instant claim limitations for hardening agent and binding agent.
The prior art also teaches the resins with a “curing agent” further meeting the limitations for a hardening agent.
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) MPEP 2131
The prior art teaches the composition comprising curing agents such as polyamine or polyamide (P3 L8-12)(meeting the limitation for a hardening agent)
The cured composition comprising 10-40 % pigment titanium dioxide or 20-30 wt.% or 2-20 % or 5-15 wt.5 titanium dioxide with at least one colored pigment (P4 L3-13)
The composition may further comprise additional components often used in such compositions such as catalysts, curing accelerators, flow control additives UV stabilizers antifoam and matting agents (P 4 L32-38) (i.e. other additives of claim 1)
Examples:
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620
678
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(The zeolite being 3 % or 7.5 % meeting claim 2 and rendering obvious claim 3)
Zeolite is present 0.5 % to 8 wt.% (See claim 10 reference overlapping the ranges of claims 2-3)
Zeocros E110 is a zeolite sold by INEOS Silicas Limited this is a zeolite maximum aluminum P type with an average particle size of 2 microns (P8 L22-30) meeting the limitation for a powder.
Where the benzoin meets the limitations of claims 1, 8-10 for optional leveling agent and titanium dioxide meets the limitations for an optional pigment of claims 1 and 8.
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508
734
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Greyscale
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630
680
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Greyscale
The prior art does not require the porous material to be ground thereby meeting the limitation for unground. The limitation for unground is a product by process limitation and does not further limit the claimed product which is already claimed as a powder (i.e. ground)
The claims are directed to a powder coating composition indicating the composition has been particulated by grinding or other method. Since it is powder composition the porous material must be a particulate as adding zeolite in the form of a block or pellet would not result in a powder composition.
Claim 1 recites “unground” this is a product by process limitation. Noting the composition is claimed as a powder, the process of forming the powder does not further limit the overall composition. These limitations have been considered as more fully below set forth. Nonetheless, the examiner maintains the it is the product which determines patentability.
Claim 16 also recites product by process limitations. The prior art teaches the claimed composition in the claimed form and teaches the extruded ground materials and porous materials.
MPEP 2113
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (emphasis added by examiner)
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)(emphasis added by examiner) the claimed composition is a powder as such the product appears to be the same/similar to that of the prior art.
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections (emphasis added by examiner)
In the alternative it would be obvious to one of ordinary skill in the art at the time of filing the invention try to use a powder which is not ground esp. where the prior art does not require grinding with a reasonable expectation of success.
The mixing order and/or grinding order is obvious to one of ordinary skill in the art at the time of filing the invention with a reasonable expectation of success to forming a powder coating composition. SEE: Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). (emphasis added by examiner)
35 USC § 102/103
Claim(s) 4-5 is/are rejected under 35 U.S.C. 102(a)(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gibson et al (WO 2004/024834A1) as applied to claims 1-2, 6-9 and 10 and 16 above
Regarding Claims 4-5:
Gibson discloses the limitations above set forth. Gibson discloses the claimed composition comprising the same chemical components formed in a manner which is the same as or similar to that of the instant claims thereby anticipating the limitations of claims 4-5. In the alternative since the prior art teaches a process similar to that of the instant claims thereby rendering obvious to one of ordinary skill in the art at the time of filing the invention the resulting composition of claims 4-5 (See above introduction for product by process claims)
Gibson discloses the composition is melt mixed and the pre-mix is extruded then formed into chips the size of 5-10 mm and further ground to appropriate particle size by conventional technique (P5 L3-20) formed into a powder suitable for coating a substrate (P5 L32-38) Dry blend mixed then extruded then ground to powder (See also P9 L10-20) For mixing and forming the powder see also P4 L35-P6 describing dry mixing melt mixing grinding etc. The examiner maintains in melt mixing the porous material is bonded to the powder coating particles)
35 USC § 103
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibson et al (WO 2004/024834A1) as applied to claims 1-2 and 4-10 and 16 above
Regarding claim 3:
Gibson discloses the limitations above set forth. Gibson discloses examples of the zeolite porous material in amounts such ad 3 5 and 7.5 % but does not expressly disclose 7 %. However, Gibson also teaches the porous material of zeolite in a range of 0.5 to 8 wt.5 (See claim 10 of reference) thereby overlapping the instantly claimed range of claim 3 and rending same obvious to one of ordinary skill in the art at the time of filing the invention.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
As above set forth the claims are a product by process claim. As above set forth the examiner maintains a prima facie showing of anticipation is established as the prior art does not require grinding of the porous material/zeolite. Further since the product is the same and/or similar as the instant product in that it is a powder, the prior art teaches the resulting product thereby establishing anticipation and/or in the alternative obviousness as more fully above set forth.
Claim 1 recites “unground” this is a product by process limitation. Noting the composition is claimed as a powder, the process of forming the powder does not further limit the overall composition. These limitations have been considered as more fully below set forth. Nonetheless, the examiner maintains the it is the product which determines patentability.
Claim 16 also recites product by process limitations. The prior art teaches the claimed composition in the claimed form and teaches the extruded ground materials and porous materials.
MPEP 2113
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (emphasis added by examiner)
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)(emphasis added by examiner) the claimed composition is a powder as such the product appears to be the same/similar to that of the prior art.
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections (emphasis added by examiner)
In the alternative it would be obvious to one of ordinary skill in the art at the time of filing the invention try to use a powder which is not ground esp. where the prior art does not require grinding with a reasonable expectation of success.
The mixing order and/or grinding order is obvious to one of ordinary skill in the art at the time of filing the invention with a reasonable expectation of success to forming a powder coating composition. SEE: Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). (emphasis added by examiner)
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., particles on the primer surface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The composition claimed has two components no distinction is made as to whether or how they are combined (a product by process limitation) but rather they are one composition which is a powder.
For these reasons the rejections are made final.
Conclusion
THIS ACTION IS MADE FINAL. 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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
Prosecution Insights