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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-14 and species metal containing substrate and rail car in the reply filed on 6/29/2026 is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The examiner indicated claim 1 to be generic.
Claims 15-20 are withdrawn. The restriction is final.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 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.
Claim(s) 1-5 and 14 is/are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Gandin (WO 2012041945A1)
Regarding Claims 1-5 and 14:
Further Regarding Claim 1:
Gandin (WO 2012041945A1) discloses a reactive dye including pigments [0029] coating (Abstract)(meeting the limitation for a base coating of claim 1, a pigment of claim 3) and for visual indicia of claim 14) such as one for detecting leakage with pigment for color change upon contact with fluids [0006] (meeting the limitation for pigment and for visual indicia of chlorine of claim 14)such as chlorine fluids [0024] (meeting the limitation for a chlorine indicating component of claim 1)
The reactive dye coating changes color perceptibly in the presence of the fluid [0026] and can be tailored to a specific environment known by one of skill in the art [0027] [0028-0030] lists various chlorine indicators.
Further regarding claims 2 and 4:
The coating comprises polymer binder with the reactive dyes [0032] the binder includes polymers with epoxy groups amine groups etc. [0033] and various resins [0034] (meeting the limitation of claim 2 for a resin) The composition includes solvents and fillers [0036-0037]
The composition comprises organic solvents [024] [0034][0036][0037] such as water, alcohols etc. [0040] (meeting claims 2 and 4 for a solvent such as water or organic solvent)
Further Regarding Claim 3:
The composition has a pigment for color change upon contact with fluids [0006] Gandin (WO 2012041945A1) discloses a reactive dye including pigments [0029] (meeting the limitation of claim 3 for pigment)
Further Regarding Claim 5:
The coating composition comprises a polymer binder including epoxy groups [0033] (meeting claim 8) and is a resin [0034] The composition includes solvents and fillers [0036-0037]
The composition comprises organic solvents [024] [0034][0036][0037] such as water, alcohols etc. [0040]
Further Regarding Claim 14:
The reactive dye coating changes color perceptibly in the presence of the fluid [0026] and can be tailored to a specific environment known by one of skill in the art [0027] [0028-0030] lists various chlorine indicators.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandin (WO 2012041945A1) as applied to claims 1-5 and 14 above
Regarding claims 11-13
Gandin (WO 2012041945A1) discloses the limitations above set forth.
The composition includes solvents and fillers [0036-0037]
The reactive dye coating changes color perceptibly in the presence of the fluid [0026] and can be tailored to a specific environment known by one of skill in the art [0027] including metal salts [0028-0030] lists various chlorine indicators.
Gandin discloses the reactive dye should possess a homogenous thickness through the layer to control color intensity [0031] [0038]
While Gandin does not expressly disclose the amount of the chlorine indicator, it would be within the ken of one of ordinary skill in the art a the time of filing the invention to use an amount corresponding to the thickness of the coating layer and control color intensity thereby rendering obvious overlapping ranges of the instant claims.
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) 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)"
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandin (WO 2012041945A1) as applied to claims 1-5 and 14 above alternatively further in view of Akimoto et al(US 2015/0037535A1)
Further Regarding Claims 6 and 8:
Gandin discloses the limitations above set forth. The solvents disperse the constituents of the coating composition [0037] (meeting claim 6 for chlorine indicating component dispersed))
The coating comprises polymer binder with the reactive dyes [0032] the binder includes polymers with epoxy groups, polyurethanes, amine groups etc. [0033] and various resins [0034] The binder includes polyurethane and polyvinyl alcohols [0033] meeting claim 8. (meeting the limitation for a resin and for fa resin of claim 6 and claim 8 comprising at least one of an epoxy) The polymer layer includes polyamides [0021] the binder includes polyamides [0033]
The coating layers are solid layers [011] (i.e. cured)
Gandin teaches polyamides, and polyurethane (i.e. a reaction product of polyol and poly isocyanate) etc. thereby rendering obvious a polyol and poly isocyanate of instant claim 8.
Assuming arguendo the polyurethan polymer of Gandin does not render obvious the instantly claimed curing agent, in the alternative, Gandin does not expressly discloses the curing agent of claim 8 where the epoxy polymer is cured with an amine.
Akimoto et al(US 2015/0037535A1) discloses a composition comprising an inorganic compound particle and a polymer in the form of a film (i.e. coating) (Abstract) The composition comprises a polymer not attached to an inorganic compound particle and may be cured [0275] The composition is a coating material [0027] which is cured with a curing agent [0061] [0108 01110] including oxide particles such as TiO.sub.2 etc. (i.e. a pigment) and an organic solvent [0162]
The composition has a predetermined solvent and solid content of particles [0217] (filler)
The composition solvent includes ethylene glycol etc. [0227] (i.e. organic solvent)
The composition includes a curing agent and a pigment [0228]
The curing agent cures the resin composition [0241] the curing agent includes amines, amide based compounds and isocyanate such as poly isocyanate [0242]
The resins include epoxy resin and polyurethane resin [0372]
The coating material may be dispersed in a solvent [0261]
The solid concentration may be 0.2 to 30 mass % and may be adjusted by diluting the composite or concentrating the dilute solution evaporation [0263]
The coating includes resins, coloring agents, diluents, and other additives including fillers, solvents, pigments, curing agents etc. [0371] The resins are not limited and include epoxy resin, etc. [0372]
The composition includes an inorganic particle including Ca [0104] with bromide [0105] [0107] (where they are combined)
The composition is for use in paints coatings on various substrates including but not limited to electronics, machine coils for generators, ship linings, beer cans, acid proof linings, metal products, pipes, vehicles etc. [0381]
The curing agent cures the resin composition [0241] the curing agent includes amines, amide based compounds and isocyanate such as poly isocyanate [0242]
The resins include epoxy resin and polyurethane resin [0372]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to solidify/cure the polymer of Gandin such as the epoxide resin with the amine curing agent of Akimoto as it will result in the solid coating layer contemplated by Gandin further Gandin already contemplates amines
Further Regarding Claim 7:
Modified Gandin teaches the limitations as above set forth. Gandin discloses the fillers are added and thicken the coating and enhance the dyes response [0041] (i.e. solids) the thickeners lend support to the structure of the coating and/or enhance reactive dye response to the fluid [0041] any variety of thickeners can be used to form the coating as long as an adequate coting is formed that can be placed in a surface with adhesion [0042] One of ordinary skill in the art at the time of filing the invention would try to use an amount of filler sufficient to thicken the coating and afford adhesion thereby overlapping the claimed ranges as taught by Gandin. 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) 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)"
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandin (WO 2012/041945A1) as applied to claims 1-5 and 14 above further in view of Van der Smissen (US 4,795,611)
Regarding claims 9-10
Gandin (WO 2012/041945A1) discloses the limitations above set forth.
The composition includes solvents and fillers [0036-0037] and the reactive dyes include various salts such as bromide salts [0028[
The reactive dye coating changes color perceptibly in the presence of the fluid [0026] and can be tailored to a specific environment known by one of skill in the art [0027] including metal salts [0028-0030] lists various chlorine indicators.
Gandin does not expressly disclose potassium iodide as an indicator.
Van der Smissen (US 4795611) discloses an indicator for chlorine by discoloration of potassium iodide on a support (Abstract) The potassium iodide is coated the support. The indicator may also be used as a filer (C2 L25-30)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use a chlorine indicator and filler such as potassium iodide in the coating of Gandin as taught by Van der Smissen as it will afford visual indication of the presence of chlorine and is suitable for use in coatings and is a visual indicator of chlorine (i.e. used for the same purpose) known by those of skill in the art at the time of filing the invention leading to a reasonable expectation of success. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Smith (WO2009/058891A2) discloses a coating and a pigment (Abstract) the pigment can be used to indicate the presence of contaminants such as contaminants with chlorine [006]
The composition includes a resin that can be cured including polyamides polyurethane and a carrier of solvents and fillers [010] the solvent include water [0011]
The coating may be epoxy coatings [026]
Koeniger et al (US 2006/0093826) discloses a coating (Abstract) with cure reaction components [0017] an organic solvent [0046] including dihydroxy solvents [0044 0046] resin [0081] pigment [0082]
Davis (US 3,620,676) discloses a coating of a colorimetric indicator composition soluble in or to the liquid (Abstract) including plastic and other materials (C2 L20-25) and includes red dye (i.e. pigment) (C2 L32-38) The composition includes a synthetic plastic and a colorimetric indicator reagent (claim 1 reference) and a free chlorine indicator (Claim 6 reference)
McDaniel (US 2004/0109853) discloses a coating composition (Abstract)
The composition comprises a pigment [0031] and a solvent [0047]
The composition comprises a resin such as a urethane resin [0055] an alkyd resin [0058] a binder resin including a polyol, urethane, an epoxide [0059] epoxy resin [0066]
An organic liquid component of an oxygenated solvent including alcohols glycol ethers, butyl glycol, etc. [0072] The composition such as an epoxy resin is cured [0478] curing agents include amines [0421] a polyamine a polyamide [0437]
JP 2815080B2 1998-10-27 discloses detecting chlorine (Abstract) A coating with potassium iodide on a carrier and a starch solution (Claims)
Mohri Haruhiko Wada Susumu et al (WO 9626254A1) discloses a coating composition including a resin, a curing agent (Abstract)
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
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