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 1-13 and 16) in the reply filed on 8/5/2026 is acknowledged. The traversal is on the ground(s) that examination of the entire application can be made without serious burden. This is not found persuasive because inventions I and II would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/5/2026.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
The specification states “[t]he curative c) necessarily consists of at least one compound possessing at least two epoxide reactive groups per molecule” [0082 pgpub]. However, the specification also states “the following may also be mentioned as exemplary alkoxy-containing aminofunctional silicone resins having utility as or in the curative c): γ-aminopropyltriethoxysilane; γ-aminopropyltriethoxysilane…” [0092 pbpub] and “ the following commercial alkoxy-containing aminofunctional silicone resins may also be useful: Silquest A-1130, Silquest A-1387, Silquest Y-19139, Silquest VX 225 and Silquest Y-15744, available from Momentive Performance Materials Inc; and, HP2000 available from Wacker Chemie” [0093 pgpub].
First, γ-aminopropyltriethoxysilane, γ-aminopropyltriethoxysilane, and the Silquest products are not silicone resins (polymers), but are silane small molecules.
Second, γ-aminopropyltriethoxysilane and γ-aminopropyltriethoxysilane do not contain at least two epoxide reactive groups per molecule.
It is not clear if the claimed c) includes silane small molecules or not; and it is not clear if the claimed c) has to contain at least two epoxide reactive groups per molecule or not.
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 1-13 and 15 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 “c) a curative which consists of at least one compound possessing at least two epoxide reactive groups per molecule, said curative comprising at least one alkoxy-containing aminofunctional silicone resin”. In the specification, applicant states “the following may also be mentioned as exemplary alkoxy-containing aminofunctional silicone resins having utility as or in the curative c): γ-aminopropyltriethoxysilane; γ-aminopropyltriethoxysilane…” [0092 pbpub] and “ the following commercial alkoxy-containing aminofunctional silicone resins may also be useful: Silquest A-1130, Silquest A-1387, Silquest Y-19139, Silquest VX 225 and Silquest Y-15744, available from Momentive Performance Materials Inc; and, HP2000 available from Wacker Chemie” [0093 spec.].
First, γ-aminopropyltriethoxysilane, γ-aminopropyltriethoxysilane, and the Silquest products are not silicone resins (polymers), but are silane small molecules.
Second, γ-aminopropyltriethoxysilane and γ-aminopropyltriethoxysilane do not contain at least two epoxide reactive groups per molecule.
It is not clear if the claimed c) includes silane small molecules or not; and it is not clear if the claimed c) has to contain at least two epoxide reactive groups per molecule or not.
For the purpose of further examination, based on the broadest reasonable interpretation and the originally filed specification, both silicone resins and silane small molecules containing any epoxide reactive groups per molecule will be considered meeting this limitation.
Claims 2-13 and 15 are rejected likewise as depending on claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 4-6, 7, 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schramm et al (US 20090029173 A1) in view of Wright (US 20170044396 A1).
Regarding claims 1 and 4-6 and 16, Schramm teaches a two-component anticorrosion paint comprising two components A and B, of which Component A comprises
(a1) (x-y)% by weight of metal pigments comprising platelet-type zinc containing metal pigments, where x is 30 to 70,
(a2) from 10 to 50% by weight of at least one epoxysilane and/or epoxy silicone, and
(a3) from 0 to 40% by weight of an organic solvent,
and Component B comprises
(b1) from 2 to 15% by weight of at least one amine curing agent,
(b2) y% by weight of metal pigments comprising platelet-type zinc-containing metal pigments, where y is from 0 to x % by weight,
(b3) from 0 to 40% by weight of an organic solvent,
the percentages being based on the total weight of the two-component anticorrosion paint and total 100% by weight, with the proviso that the total water content of the two-component anticorrosion paint is not more than 5% by weight, the total content of solvent is not more than 40% by weight, and the total content of the platelet-type zinc-containing metal pigments is at least 20% by weight [abstract].
The examiner submits that the (a2) epoxy silicone reads on the claimed a) at least one silicone-based resin comprising epoxy functionalities.
The (b1) amine curing agent is particularly amino silanes including triamino-functional trimethoxysilane (Silquest A-1130) [0079-0080], which has three amino groups and three methoxy groups, meeting the claimed c) alkoxy-containing aminofunctional silicone resin having at least two epoxide reactive groups per molecule as specified in claim 16 and evidence by the applicant [0093 pgpub].
Catalyst is not required in Schramm’s composition, meeting the limitation of “said composition is free of catalysts”.
Schramm is silent about the molar ratio of epoxide reactive groups provided in said curative c) to epoxide groups being from 1.5:1 to 1:1.5.
In the same field of endeavor, Wright teaches a two-pack coating composition wherein the first pack comprises an epoxy resin and the second pack comprises an amine curing agent for the epoxy resin [abstract]. Wright teaches that the equivalent ratio of the active hydrogens in the curing agent to the total number of epoxy groups in the composition is between about 0.7 : 1.00 and 1.3 : 1.00; and this ratio of active hydrogen to epoxy groups enables efficient curing of the coating composition [0056].
It would have been obvious to one of ordinary skill in the art at the time of filing to select equivalent ratio of the active hydrogens in the curing agent to the total number of epoxy groups in the composition between about 0.7 : 1.00 and 1.3 : 1.00 in order to enable efficient curing in Schramm’s coating composition. The ratio of between about 0.7 : 1.00 and 1.3 : 1.00 is equivalent to 1.3 : 1.00 – 1.05 : 1.5, falling within the claimed range of 1.5 : 1 to 1 : 1.5.
The recited b) along with claims 4-6 are optional and thus does not need to be addressed.
Regarding claim 7, the (b2) and (b3) in Schramm’s Component B can be 0%, leaving 100 mol% of the (b1) amine curing agent, and 0 mol% of secondary epoxide reactive compounds.
Regarding claim 13, Schramm teaches that the (a2) can comprise an epoxy silane of formula (I): R1aR2bSiX(4-a-b), wherein R1 and R2 stand for non-hydrolyzable radicals, X can be alkoxy groups, and a is equal to 0 and b is equal to 1 [0062-0065]. The examiner submits that this epoxy silane reads on the claimed trialkoxy functional silicone prepolymer.
Claim(s) 2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schramm in view of Wright as applied to claim 1 above, further in view of Westlake (Epon Resin 58006, 9/1/2001).
Regarding claims 2 and 4-6, based on the amounts of (a1), (a2), (a3), (b1), (b2) and (b3), the amount of (a2) epoxy silicone is calculated by the examiner to be 10.02 -100% based on the weight of Component A, overlapping the claimed range of from 10 to 60 wt. %.
Schramm or Wright does not teach the claimed elastomer modified epoxy resin b), but teaches that additives such as adhesion promoters can be added to the composition [0063].
Westlake discloses an elastomer modified epoxy resin EPON Resin 58006 which provides conventional epoxy systems with increased adhesion properties [“Product Description”]. Concentration of this modifier required for optimum performance is dependent upon factors of resin type, curing agent type, and specific performance requirements, but is generally found to be within the 20-50% by weight range; and EPON Resin 58005 is similar with higher viscosity [“Benefits”] and broader range of compatibility [“General Information”].
It would have been obvious to one of ordinary skill in the art at the time of filing to include EPON Resin 58006 or 58005 in the composition of Schramm in view of Wright as the adhesion promotor.
EPON Resin 58006 or 58005 read on the claimed elastomer modified epoxy resin b), as evidenced by the applicant [0081 pbpub]. Westlake discloses that EPON Resin 58006 has epoxide equivalent weight of 330-360 g/eq [Sales Specifications], falling within the claimed range of from 200 to 2500 g/eq in claim 4. Applicant teaches that EPON 58005 meets the limitation of claim 5-6 [0080-0081].
A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Thus, Westlake recognizes the claimed concentration of EPON Resin 58006 or 58005 as a result-effective variable affecting performance requirements. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentration of EPON Resin 58006 or 58005 by routine experimentation to arrive at the claimed from 1 to 40 wt%, with a reasonable expectation of successfully obtaining the desired performance. See MPEP 2144.05. "[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980). "[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 (CCPA 1955).
Schramm in view of Wright teaches the claimed c) and a ratio of between about 0.7 : 1.00 and 1.3 : 1.00 which is equivalent to 1.3 : 1.00 – 1.05 : 1.5 as stated above. This ratio overlaps the claimed range of 1.1 : 1 to 1 : 1.1.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schramm in view of Wright as applied to claim 1 above, further in view of Kuster-Kosmoski et al (US 20110105647 A1).
Regarding claim 3, Schramm in view of Wright teaches the two component composition in claim 1. Schramm or Wright is silent about the epoxy equivalent weight of the silicone-based resin comprising epoxy functionalities.
In the same field of endeavor, Kuster-Kosmoski teaches a two component coating composition comprising a base component comprising an epoxy siloxane resin and an activator component comprising an amino silane [abstract]. The epoxy siloxane resin is Silikopon EF from Evonik Industries [0020].
As evidenced by the applicant, Silikopon EF has epoxy equivalent weight of ~450 g [0147 pgpub].
It would have been obvious to one of ordinary skill in the art at the time of filing to select Silikopon EF as the epoxy silicone in Schramm’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The epoxy equivalent weight of ~450 g falls within the claimed range of from 100 to 1500 g/eq.
Claim(s) 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schramm in view of Wright as applied to claim 1 above, further in view of Wacker Chemie AG (SILRES® HP 2000, 2013).
Regarding claims 8-12, Schramm in view of Wright teaches the two-component composition in claim 1. Schramm or Wright does not teach the limitations in claims 8-12.
In the same field of endeavor, Wacker disclosed Silres HP 2000 aminofunctional silicone resin as a high performance hardener for organic epoxy resin coatings offering exceptional weathering resistance and excellent corrosion resistance [page 1].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Schramm and Wacker recognized Silquest A-1130 and Silres HP 2000 are equivalent for the same purpose of hardening epoxy resins, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute Silquest A-1130 with Silres HP 2000 in Schramm’s composition.
Silres HP 2000 meets the claimed c) alkoxy-containing aminofunctional silicone resin having an amine number of 2.6-2.9, as evidenced by the applicant [0147 pgpub].
Wacker disclosed that Silres HP 2000 has amine hydrogen equivalent weight of 230-255 g/mol [page 2], falling with the claimed range of 100 to 1500 g/eq in claim 8.
Wacker did not disclose molecular weight of Silres HP 2000. However, since applicant used it as the only hardener in the examples [0147 pgpub], the examiner concludes that Silres HP 2000 meets the molecular weight limitation in claim 8.
Since applicant used it as the only hardener in the examples [0147 pgpub], the examiner concludes that Silres HP 2000 meets the limitations of claims 9-12.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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