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 with traverse of Group I (claims 1-14) in the reply filed on May 18, 2026 is acknowledged. The traversal is on the grounds that examining all claims would not place an undue burden on the examiner. This is not found persuasive because, as set forth in the Requirement for Restriction (paragraph 6), there would be a serious search burden on the examiner because the inventions require a different field of search. For example, search different classes/subclasses and employing different search strategies or search queries. Additionally, the Groups are directed to inventions having separate classifications. The requirement is still deemed proper and is therefore made FINAL.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Double Patenting
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/544,810 in view of Yamaki (US Pub 2022/0203738). The claims of US ‘810 disclose all of the limitations of the present claims except a curing accelerator (claim 1) and a reactive epoxy diluent (claim 2). Yamaki discloses a similar coating composition containing a monomer capable of undergoing ring opening metathesis polymerization [0028] and an epoxy compound [0061]. Yamaki discloses that the coating composition can further comprise a curing accelerator [0061] and a reactive epoxy diluent [0101]. It would have been obvious to the skilled artisan to have included a curing accelerator and a reactive epoxy diluent to the coating composition of US ‘810, as taught by Yamaki, motivated by the desire to achieve fast curing.
This is a provisional nonstatutory double patenting rejection.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/544,832 in view of Yamaki (US Pub 2022/0203738). The claims of US ‘832 disclose all of the limitations of the present claims except a curing accelerator (claim 1) and a reactive epoxy diluent (claim 2). Yamaki discloses a similar coating composition containing a monomer capable of undergoing ring opening metathesis polymerization [0028] and an epoxy compound [0061]. Yamaki discloses that the coating composition can further comprise a curing accelerator [0061] and a reactive epoxy diluent [0101]. It would have been obvious to the skilled artisan to have included a curing accelerator and a reactive epoxy diluent to the coating composition of US ‘832, as taught by Yamaki, motivated by the desire to achieve fast curing.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Materia Inc. (WO 2022/036044) in view of Yamaki (US Pub 2022/0203738).
Regarding Claim 1, Materia teaches a coating composition (para [0002], the use of the compositions of the invention as coatings…) comprising: an epoxy resin (para [0182], …compositions of this invention may be optionally formulated with other reactive chemistries to form co-cured coatings… co-cured epoxy can form from a bisepoxide and a hardener such as an anhydride, amine, or thiol); monomers capable of undergoing ring opening metathesis polymerization (para [0101], Examples of cyclic olefins thus include…norbornene and tricyclopentadiene); an amine curing agent (para [0183], The coating compositions may also contain at least one curing agent; para [0182], …a hardener such as an anhydride, amine,…); and a metathesis catalyst (para [0002], at least one olefin metathesis catalyst). Materia provides coating compositions cured by ring opening metathesis polymerization comprising reacting at least one cyclic olefin with at least one metathesis catalyst but does not disclose a specific example or embodiment wherein each of the claimed components are formulated in a single embodiment. However, it would have been obvious to one of ordinary skill in the art to formulate each component into the coating composition through routine experimentation to form a co-cured coating with interpenetrating polymer networks, which is specifically suggested in paragraph [0182]. Additionally, Materia does not teach that the coating composition comprises a curing accelerator. Yamaki, in a similar coating containing monomers capable of undergoing ring opening metathesis and epoxy resin (Abstract, a coating liquid…; para [0028], a hydrogenated ring-opening metathesis polymerization type cyclo-olefin polymer of norbornene…; para [0061], (B) an epoxy compound), teaches a curing accelerator (para [0061], (C) a curing accelerator). It would have been obvious to one skilled in the art to combine these references and incorporate the curing accelerator as taught by Yamaki into the coating composition of Materia in order to achieve fast curing.
Regarding Claim 2, Yamaki further teaches the composition comprising: a reactive epoxy diluent (para [0101], …pentaerythritol tetraglycidyl ether, pentaerythritol triglycidyl ether…; see instant specification para [0007], Examples of a reactive epoxy diluent… include but are not limited to glycidyl ethers…). Materia further teaches a filler; an adhesion promoter; a rheology modifier; and a pigment (para [0157], Suitable additives include, but are not limited to… fillers, binders, thixotropes, rheology modifiers,… pigments,… dyes, fibers, reinforcement materials,… adhesion promoters,…).
Claims 3, 4, and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Materia Inc. (WO 2022/036044) in view of Yamaki (US Pub 2022/0203738) and either Haag et al. (US Pub 2020/0140727) or Saito et al. (US Pub 2017/0130006).
Regarding claim 3, modified Materia does not disclose a coating composition kit comprising a (A) first part comprising an epoxy resin and a metathesis catalyst; and (B) a second part comprising monomers capable of undergoing ring opening metathesis polymerization, an amine curing agent, and a curing accelerator. However, Materia does disclose that the composition of the monomers capable of undergoing ring opening metathesis polymerization can be formulated with other reactive chemistries to form co-cured coatings, such as an epoxy resin [0182]. Haag discloses that it is known in the epoxy art to provide the composition components in two-parts such that there is a resin part (side A) and a curative part (side B) [0007]. Additionally, Saito discloses that it is known in the epoxy art to provide the composition components in two-parts wherein a first part includes the epoxy resin and a second part includes the curing components [0177]. These known two-part kits are useful for preventing the initiation of curing during storage and transportation of the coating composition. Thus, it would have been obvious to one of skill in the art to separate the catalysts and curing agent from the reactive monomers and epoxy resin composition of modified Materia into a two-part kit, ensuring they remain stable until ready to use.
Regarding claim 4, Yamaki further teaches the composition further comprises: a reactive epoxy diluent (para [0101], …pentaerythritol tetraglycidyl ether, pentaerythritol triglycidyl ether…; see instant specification para [0007], Examples of a reactive epoxy diluent… include but are not limited to glycidyl ethers…). Materia further teaches the composition optionally comprising: at least one additive selected from the group consisting of fillers, adhesion promoters, rheology modifiers, and pigments (para [0157], Suitable additives include, but are not limited to… fillers, binders, thixotropes, rheology modifiers,… pigments,… dyes, fibers, reinforcement materials,… adhesion promoters,…). However, neither Materia not Yamaki explicitly teaches wherein the first part (A) further comprises a reactive epoxy diluent; and optionally at least one additive selected from the group consisting of fillers, adhesion promoters, rheology modifiers, and pigments. It would have been obvious to one of skill in the art to test which part (A or B) should further comprises a reactive epoxy diluent and optional components by routine experimentation.
Regarding claim 8, Materia teaches the coating composition further comprises at least one additive selected from the group consisting of fillers and rheology modifiers (para [0157], Suitable additives include, but are not limited to… fillers, binders, thixotropes, rheology modifiers,… pigments,… dyes, fibers, reinforcement materials,… adhesion promoters,…). However, Materia does not explicitly teach wherein the second part (B) further comprises at least one additive selected from the group consisting of fillers and rheology modifiers. It would have been obvious to one of skill in the art to test which part (A or B) should further comprises the additive by routine experimentation.
Regarding claims 9-11, Materia discloses overlapping amounts of the metathesis catalyst [0152], filler [0161], adhesion promoter [0165], pigments [0161], and rheology modifier [0157], and Yamaki discloses an overlapping amount of a reactive epoxy diluent [0102]. As set forth in MPEP 2144.05, “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). While Materia discloses that the composition can include an epoxy resin, Materia is silent as to the amounts of epoxy resin. As set forth in MPEP 2144.05, “Generally, differences in concentration…will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration…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). In the present application, it would have been obvious to have discovered the workable ranges of the epoxy resin component, motivated by the desire to obtain a co-cured coating composition having desired properties associated with a composition containing monomers capable of undergoing ring opening metathesis polymerization and an epoxy resin that can form an interpenetrating polymer network [0182]. Additionally, it would have been obvious to have discovered the workable ranges of the solvent component, motivated by the desire to obtain a coating composition having desired viscosity or flow properties.
Regarding claims 12-14, Materia discloses overlapping amounts of monomers capable of undergoing ring opening metathesis polymerization [0111], filler [0161], and rheology modifier [0157], and Yamaki discloses an overlapping amount of curing accelerator [0104]. As set forth in MPEP 2144.05, “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). While Materia discloses that the composition can include an amine curing agent, Materia is silent as to the amount. As set forth in MPEP 2144.05, “Generally, differences in concentration…will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration…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). It would have been obvious to one of skill in the art to test which part (A or B) should further comprises these components, and optimize their weight percentages by routine experimentation.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Materia Inc. (WO 2022/036044) in view of Yamaki (US Pub 2022/0203738) and either Haag et al. (US Pub 2020/0140727) or Saito et al. (US Pub 2017/0130006) and University of Arizona (WO 2018/026493).
Neither Materia nor Yamaki explicitly teaches the reactive epoxy diluent comprises phenyl glycidyl ether and/or o-cresol glycidyl ether. UArizona teaches a coating with epoxy resin wherein the reactive epoxy diluent comprises phenyl glycidyl ether and/or o-cresyl glycidyl ether (para [0023],…(hetero)aromatic glycidyl compounds, such as glycidyl phenyl ethers (e.g., resorcinol diglycidyl ether, glycidyl 2-methylphenyl ether)…). It would have been obvious to one skilled in the art to combine these references and incorporate phenyl glycidyl ether and/or o-cresol glycidyl ether as taught by UArizona into the coating composition of modified Materia in order to achieve enhanced bonding and coating properties.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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