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 Objections
Claims 8 and 9 are objected to because of the following informalities:
Claim 8, line 2 recites “the at least one low density filler material”. The claim should instead read “the low density filler material”.
Claim 9, line 2 recites “the at least one low density filler material”. The claim should instead read “the low density filler material”.
Appropriate correction is required.
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.
Claim 4-10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “at least one cure accelerator”, and the claim also recites “preferably selected from Lewis-base accelerator” and “more preferably selected from tertiary amines and nitrates” and “even more preferably selected from aromatic tertiary amines” which are the narrower statements of the range/limitation. In the present instance, claim 5 recites the broad recitation “an amount in the range of from 0.1 to 20 wt.-%”, and the claim also recites “preferably from 1 to 15 wt-%” and “more preferably from 2.5 to 12.5 wt-%” which are the narrower statements of the range/limitation. In the present instance, claim 6 recites the broad recitation “a melting point in the range of from 85 to 170°C” and the claim also recites “preferably from 95 to 165°C” and “more preferably from 105 to 150°C” which are the narrower statements of the range/limitation. In the present instance, claim 7 recites the broad recitation “at least one viscosity modifier” and the claim also recites “preferably wherein the at least one viscosity modifier is selected from organic dispersants” which is the narrower statement of the range/limitation. In the present instance, claim 8 recites the broad recitation “at least one density filler material is selected from organic or inorganic microspheres” and the claim also recites “more preferably from inorganic microspheres” and “more preferable from glass bubbles” which are the narrower statements of the range/limitation. In the present instance, claim 9 recites the broad recitation “crush strength in the range of from 400 to 3500 Psi” and the claim also recites “preferably from 500 to 3000 Psi” and “more preferably from 600 to 2800 Psi” which are the narrower statements of the range/limitation. Claims 4-9 are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 10 recites “obtained by combing part (A) and part (B)”. The examiner asks if the applicant intends to mean “obtained by combining part (A) and part (B)”? The examiner invites the applicant to clarify.
Claim Analysis
Summary of Claim 1:
A low-density curable composition precursor, comprising
a first part (A) comprising: (i) at least one polymeric diamine;
a second part (B) comprising:
at least one epoxy resin;
at least on reactive diluent
at least one amide selected from polyamide waxes
wherein part (A) and/or part (B) comprise a low density filler material having a density of less than 0.3 g/cc; and wherein the curable composition obtained by combining part (A) and part (B) has a cured density according to DIN 53479A of less than 0.5 g/cc.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Elgimiabi (EP 3489271 as listed on IDS dated January 22, 2024) in view of Juvin-Pedretti et al. (EP 0838499 as listed on IDS dated January 22, 2024).
Regarding claim 1, Elgimiabi disclose in Example 1 a curable coating composition precursor wherein part (A) comprises Cardolite NX 5608 which is a phenalkamine and part (B) comprises epoxy resin, Epodil 757 as a reactive diluent, polyamide wax and part (A) and (B) comprise glass bubbles as a filler material (Table 1 and 2, [0060]).
Elgimiabi does not teach the composition of Example 1 comprises a polymeric diamine as recited in the instant claim.
However, Elgimiabi broadly teach part (A) of the composition may comprise polymeric diamines [0019], thereby reading on part (A) of the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to add a polymeric diamine as broadly taught by Elgimiabi.
Elgimiabi is silent on the glass bubbles having the density as recited in the instant claim.
Juvin-Pedretti et al. teach a curable composition comprising an epoxide compound, at least one epoxide hardener, and an inorganic hollow microspheres among others (claim 1). Juvin-Pedretti et al. further teach the inorganic hollow microspheres are a low density filler and have a density of less than about 0.5 g/cm3 (page 4, line 44-51), equal to less than 0.5 g/cc and thereby overlapping the claimed density. Juvin-Pedretti et al. further teach inorganic hollow microspheres A20/1000 was used in the examples (page 6, line 30-32, Table 1), which has a density of 0.20 g/cc thereby lying within the claimed range (see datasheet provided). Juvin-Pedretti et al. offer the motivation that the composition is suitable for aerospace applications (page 2, line 32-35). Elgimiabi is also concerned with aerospace applications [0052]. Therefore, it would have been obvious to one of ordinary skill in the art to add the low density filler of Juvin-Pedretti et al. to the composition of Elgimiabi since low density fillers are well known in low density compositions for aerospace applications.
Elgimiabi disclose the composition of Example 1 formed by combining part (A) and part (B) has a cured density of 0.5 g/mL, equivalent to 0.5 g/cc (Table 3).
The density of the composition of Ex 1 obtained by combining part (A) and part (B) of Elgimiabi thereby lies outside the claimed range.
However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05(I).
Furthermore, Elgimiabi broadly disclose the coating composition obtained by combining part (A) and part (B) has a density of less than 0.7 g/cm3, equivalent to 0.7 g/cc and thereby overlapping the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Elgimiabi.
Regarding claim 2, Elgimiabi disclose Example 1 parts A and B are mixed and extruded as seen in the test methods [0061-0065] , thereby reading on the instant claim.
Regarding claim 3, Elgimiabi disclose Example 1, part B comprises Saytex BT93 which is a flame retardant (Table 1), thereby reading on the instant claim.
Regarding claim 4, Elgimiabi disclose Example 1 part A comprise Ancamine K54 which is a cure accelerator (Table 2), thereby reading on the instant claim.
Regarding claim 5, Elgimiabi disclose Example 1 part A comprises 1 wt% of cure accelerator (Table 2), thereby lying within the claimed range.
Regarding claim 6, Elgimiabi is silent on if the polyamide wax of part B Example 1 part B has a melting point in the range as recited in the instant claim. .
However, Elgimiabi does disclose Disparlon 6500 as a thixotropic agent [0060]. Furthermore, Disparlon 6500 has a melting point of 123°C (see datasheet provided), thereby lying within the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to add at least one amide having the melting point to part B of the composition as taught by Elgimiabi.
Regarding claim 7, Elgimiabi does not disclose Example 1 part (B) further comprises at least one viscosity modifier as recited in the instant claim.
However, Elgimiabi broadly teaches a viscosity modifier may be added to the composition [0060]. Therefore, it would have been obvious to one of ordinary skill in the art to add a viscosity modifier as taught by Elgimiabi.
Regarding claim 8, Elgimiabi in view of Juvin-Pedretti teach the low density filler material are inorganic microspheres as rejected in the rejection for claim 1 above.
Regarding claim 9, Elgimiabi et al. is silent on the crush strength of the low density filler material as recited in the instant claim.
Juvin-Pedretti et al. further teach inorganic hollow microspheres A20/1000 was used in the examples (page 6, line 30-32, Table 1), which has a crush strength of 1000 psi, thereby lying within the claimed range (see attached datasheet). Juvin-Pedretti et al. offer the motivation that the composition is suitable for aerospace applications (page 2, line 32-35). Elgimiabi is also concerned with aerospace applications [0052]. Therefore, it would have been obvious to one of ordinary skill in the art to add the low density filler of Juvin-Pedretti et al. to the composition of Elgimiabi since low density fillers are well known in low density compositions for aerospace applications.
Regarding claim 10, Elgimiabi disclose Example 1 is obtained by part (A) and (B) as rejected above, thereby reading on the instant claim.
Regarding claim 11, Elgimiabi in view of Juvin-Pedretti teach in Example 1 providing parts (A) and (B), combining to form a curable composition, applying the material into an aluminum mold, and curing at 23±2°C (Table 1 and 2, [0061-0064]), thereby reading on steps (a), (b), (c), and (d).
Elgimiabi is silent on if Example 1 was sanded as recited in step (e) of the instant claim.
However, Elgimiabi teach a method of smoothening surfaces comprising a) providing a curable coating composition precursor, b) combining parts (A) and (B) to form a curable coating composition, c) applying the curable coating composition to at least part of the surface of a substrate d) allowing the curable coating composition to cure, and e) sanding the surface comprising the cured coating (claim 10), thereby reading on the steps as recited in the instant claim. Therefore, it would have been obvious to one of ordinary skill in the art to sand the surface comprising the cured coating as broadly taught by Elgimiabi.
Regarding claim 12, Elgimiabi teach the curing takes place at ambient temperature ([0064], claim 11), thereby reading on the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights