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 .
Status of the Claims
Claims 15 and 19-31 are pending and rejected. Claims 1-14 and 16-18 are cancelled. Claim 15 is amended and claims 19-31 are newly added.
Election/Restrictions
Applicant’s election without traverse of Group III, claim 15 in the reply filed on 11/25/2025 is acknowledged. The non-elected claims have been cancelled. Regarding Applicant’s argument that Liu does not recognize that a coating composition with a rheological agent comprising at least 85 wt% of a compound having a melting temperature greater than 95°C can enhance chemical resistance of a coating layer, 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).
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.
Claims 15, 19, 20, and 22-28 are rejected under 35 U.S.C. 103 as being unpatentable over Barth, US 2016/0319211 A1 in view of Asai, JP 2015183136 A (provided on the IDS of 9/11/2024).
The following citations to Asai, JP 2015183136 A are in reference to the machine translation provided by Espacenet.
Regarding claims 15 and 19, Barth teaches a method of producing a substrate coated on at least a portion thereof with a coating layer (where an antifriction coating is applied onto a substrate surface, abstract and 0065), the method comprising:
applying a coating composition to at least a portion of a substrate to form a coating layer (where the antifriction coating is applied to the substrate surface to provide a coating thickness from 5 to 20 microns, 0065),
wherein the coating composition comprises a rheological agent (where the coating contains a thickener added in an amount sufficient for the composition to reach a pre-determined viscosity required to enable proper application of uncured AFC onto a substrate, where polyamide thickeners give significantly better results than other traditional thickeners, where the polyamide waxes used are the products resulting from reactions of long-chain carboxylic acids with mono- or polyfunctional amines, for example, interactions between long-chain fatty acids with diamines, 0031). They teach that the polyamide thickener had good compatibility/resistance with the solvent mixture (0105). They teach that traditional thickening systems showed limited corrosion resistance (0109), indicating that the polyamide thickener provides improved corrosion resistance or chemical resistance to salt water used in the corrosion testing (0108).
They do not teach that the thickener has a melting temperature greater than 95°C.
Asai teaches a two-component mixed coating composition which not only has good coating workability (sagging resistance) but is also capable of uniformly forming a coating film which is relatively thick, has excellent carbonation prevention properties, and good transparency (0009). They teach that composition includes a main component such as a (meth)acrylic polymer, a hydrogenated bisphenol epoxy resin, a hindered amine compound, and a fatty acid amide compound having a melting point of 100 to 140°C (0010). They teach that the fatty acid amide compound acts as a viscosity adjuster and plays a role in imparting structural viscosity to the mixed coating composition (0035). They teach that the melting point of the fatty acid amide compound is preferably 100 to 140°C, where if the melting point is less than 100°C, the viscosity of the mixed coating composition decreases, making it difficult to obtain sufficient sagging resistance (0036). They teach that if the melting point of the fatty acid amide compound exceeds 140°C, the fatty acid amide compound tends to crystallize in a low temperature environment and transparency of the coating film formed decreases (0036). They teach that examples of the fatty acid amide compounds include methylene bislauric acid amide (melting point 131°C), methylene bishydroxystearic acid amide (melting point 140°C), methylene bisolenic acid amide (melting point 131°C), bisamides such as ethylene bisisostearic acid amide (melting point 100°C), hexamethylene bishydroxystrearic acid amide (melting point 138°C), butylene bishydroxystearic acid amide (melting point 140°C), ethylene bisoleic acid amide (melting point 118°C), ethylene biserucic acid amide (melting point 115°C), hexamethylene bisoleic acid amide (melting point 119°C), and m-xylylene bisstearic acid amide (melting point 123°C). They teach that the fatty acid amide compound may be a commercially available compound in the form of a paste with a solvent, such as 6900-20X having a melting point of 100°C or higher from Kusumoto Chemical Co., Ltd. (0039), understood to be Disparlon(RTM) 6900 20X from [0054] of the instant specification.
From the teachings of Asai, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Barth to have used one of the diamides taught by Asai such as Disparlon(RTM) 6900 20X as the amide thickener because Barth teaches using amide thickeners such as those provided from reaction between long-chain fatty acids with diamines and Asai provides fatty acid diamine thickeners that are desirable as thickeners, where having a melting point higher than 100°C (indicating that at least 85 wt.% of the compound has a melting point within the claimed range) allows for modifying the viscosity and providing desirable sag resistance such that they are expected to provide desirable amide thickeners in the coating composition of Barth. Therefore, the rheological agent will comprise fatty acid diamines having melting temperatures within the claimed range, where when using Disparlon 6900 20X, it is understood to meet the claimed requirements because paragraph 0054 of the instant specification is indicated as being a suitable diamide-based rheological agent. As to enhancing the chemical resistance of the coating layer, since they suggest using rheological agents meeting the claimed requirements, the agent is also expected to enhance the chemical resistance of the coating layer. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 20, Barth in view of Asai suggest the process of claim 15. Since neither Barth nor Asai indicate that castor oil or hydrogenated castor oil are desired in the composition, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the composition so it is substantially free of castor oil and/or hydrogenated castor oil.
Regarding claim 22-26, Barth in view of Asai suggest the process of claim 15. While they do not teach the chemical resistance described in claims 22-26, since they provide the process of claim 1, the rheological agent is also expected to enhance the chemical resistance of the coating layer to meet the claimed requirements. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 27, Barth in view of Asai suggest the process of claim 15. Asai teaches that if the content of the fatty acid amide compound in the total solid content of the main component and the curing agent is less than 0.3 mass%, the thixotropy of the mixed coating composition obtained by mixing the main component and the curing agent decreases (0040). Therefore, the fatty acid amide compound is considered to also be a thixotropic agent because it contributes to the thixotropy of the coating.
Regarding claim 28, Barth in view of Asai suggest the process of claim 15. Barth further teaches that the substrate comprises steel (0066 and 0076).
Claims 15, 19, 20, and 22-31 are rejected under 35 U.S.C. 103 as being unpatentable over Nishizawa, WO 2019022218 A1 as evidenced by Kusumoto Chemicals, “Disparlon 6650”, 2021 and for claim 19, as further evidenced by Special Chem, “Disparlon® 6650”, 2019.
The following citations to Nishizawa, WO 2019022218 A1 are in reference to the machine translation provided by Espacenet and the tables in the original document.
Regarding claim 15, Nishizawa teaches a method of producing a substrate coated on at least a portion thereof with a coating layer (a method for producing a substrate with a coating film, 0025), the method comprising:
applying a coating composition to at least a portion of a substrate to form a coating layer (applying a coating composition to a substrate and drying to form a coating film, 0025),
wherein the coating composition comprises a rheological agent (where the composition includes anti-sagging or anti-settling agents, 0073, where the settling agent is desirably an amide wax, 0084, such as Disparlon 6650 manufactured by Kusumoto Chemical Co., 0085, 0101).
As evidenced by Kusumoto Chemicals, Disparlon 6650 is an amide wax having a melting point of 122°C (pg. 1). Therefore, the coating composition is understood to include a rheological agent having at least 85 wt % of a compound having a melting temperature of greater than 95°C since the compound has a melting temperature of 122°C.
As to the rheological agent enhancing the chemical resistance of the coating, it is noted that Nishizawa teaches that the composition has excellent oil resistance, chemical resistance, and solvent resistance (0029) and since they provide the process of claim 1, the resulting rheological agent is also expected to enhance the chemical resistance of the coating. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 19, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. As further evidenced by Special Chem, Disparlon 6650 is a polyamide thixotrope (pg. 1), such that it is understood to include at least two amide groups since is it a polyamide.
Regarding claim 20, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. Nishizawa teaches that the anti-sagging agent can be a hydrogenated castor oil wax or a mixture of hydrogenated castor oil wax and amide wax, where they indicate that the preferred anti-sagging agent is selected from amide wax, powdered silica, oxidized polyethylene wax, and organoclay wax (0084). They provide an example of the coating composition that includes Disparlon 6650, where there is no indication that hydrogenated castor oil is included (0101). Therefore, they teach that the composition does not include hydrogenated castor oil and since they indicate that hydrogenated castor oil is optional and amide wax is preferred, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected Disparlon 6650 as the amide wax and to have excluded hydrogenated castor oil.
Regarding claim 22, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. Nishizawa teaches that the composition has excellent oil resistance, chemical resistance, and solvent resistance (0029). They teach that excellent oil resistance, solvent resistance, and chemical resistance specifically means excellent resistance to oils such as palm oil, solvents such as methanol, etc. (0030). They teach testing coated plates in naphtha at room temperature for 180 days, in benzene or ethanol at room temperature for 180 days (0110-0111). They teach that the evaluation criteria uses 5 for no rust, no blisters, and a hardness of HB or higher, 4 for no rust, no blisters, and hardness of B to 4B, 3 for no rust, no blisters and a hardness of 5B or less, 2 for slight rust and blisters, and 1 for rust and blisters (0110). They provide the data in Tables 5-7 (0108), where the samples include values of 4 and 5, suggesting that at least some of the sample have a chemical resistance to a chemical for 180 days (about 6 months). While they do not teach that the rheological agent provides the chemical resistance allowing for the coating to remain intact after about 6 month, since the chemical has not been defined and they provide the process of claim 1 and they indicate that the coating has resistance to a chemical for about 6 months, the resulting process and the rheological agent is also expected to enhance chemical resistance of the coating layer such that the coating layer remains intact after a total of at least 6 months of continuous exposure to a chemical. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 23-26, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. Nishizawa teaches that the composition has excellent oil resistance, chemical resistance, and solvent resistance (0029). They teach that excellent oil resistance, solvent resistance, and chemical resistance specifically means excellent resistance to oils such as palm oil, solvents such as methanol, etc. (0030). While they do not specifically teach that the rheological agent enhances the resistance the chemical resistance to the coating layer by providing chemical resistance against a fatty acid and/or against an organic solvent such as PFAD or methanol at the claimed temperature, since they provide the process of claim 1 and indicate that the coating composition has resistance to oils such as palm oil, solvents such as methanol, the rheological agent is also expected to provide the claimed chemical resistance. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Regarding claim 27, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. As evidenced by Kusumoto Chemicals, Disparlon 6650 is a thixotropic agent (pg. 1).
Regarding claim 28, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. Nishizawa further teaches using steel substrates (0091).
Regarding claim 29-31, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15. Nishizawa further teaches forming the coating on inner surface of cargo tanks used to transport chemicals by land or sea, the inner surfaces of land tanks for storing similar chemicals, the inner surfaces of pipelines and the like that come into contact with chemicals, etc. (0090). They teach that the composition is preferably used on the inner surfaces of tanks and pipelines used for transporting or storing chemical substances (0090). Therefore, the substrate comprises a tank or pipe having an internal surface, where the internal surface is coated with the coating composition and where the tank or pipe is configured to chemical storage or transport.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Nishizawa, WO 2019022218 A1 as evidenced by Kusumoto Chemical, 2021 as applied to claim 15 and further in view of Arabatzis, “Multi-Criteria decision-making methodology for the selection of cargo hold coating for bulk carriers”, 2018.
Regarding claim 21, Nishizawa as evidenced by Kusumoto Chemicals suggests the process of claim 15.
They do not teach determining the chemical resistance accordance with ISO 2812-1:2007.
Arabatzis teaches that coating cargo holds of bulk carriers constitutes the primary source of protection of the vessel’s structure against corrosion, while ensuring the proper cleanliness in the holds and protection of cargoes against contamination (abstract). They teach testing cargo hold paints to determine chemical resistance using ISO 2812-1:2007 (pg. 3, section 3.1). They teach that under the chemical resistance test method, a material or surface is exposed to the chemical substance for a certain time and the relevant area is then inspected microscopically to determine discoloration, softening, alteration in the degree of shine, swelling, detachment of coatings and blistering (pg. 15, section 4.8). They teach that on completion of the defined test period, any residues of the test liquid are removed and the material surface is assessed and analyzed for visible alterations (pg. 15, section 4.8).
From the teachings of Arabatzis, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used ISO 2812-1:2007 to determine the chemical resistance of the coatings because Arabatzis teaches that such a standard is used to determine the chemical resistance of coatings such that it will be expected to be a suitable test for determining the chemical resistance of the coatings of Nishizawa as evidenced by Kusumoto Chemicals.
Conclusion
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/CHRISTINA D MCCLURE/ Examiner, Art Unit 1718