DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a Continuation of application No. 17/078,281, filed on Oct. 23, 2020, now Pat. No. 11,563,371, which is a continuation of application No. 17 /036,052, filed on Sep. 29, 2020, now Pat. No. 11,549,021, which is a continuation of application No. 16/182,095, filed on Nov. 6, 2018, now Pat. No. 10,793,724.
Acknowledgment is made of Provisional application No. 62/583,077, filed on Nov.
8, 2017, provisional application No. 62/722,334, filed on Aug. 24, 2018.
Claims 1-20 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11,932,777 in view of Dichter et al. (4,421,569). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1-20 do not mention a substrate and a coating disposed thereon.
Dichter is directed to a substrate and a coating disposed thereon, where the coating comprises an epoxy prepolymer, a graft initiator, and a catalyst. One skilled in the art would have been motivated to have used the coatings of US 777 as coatings including a substrate and a coating disposed thereon to provide coatings on steep pipes to protect against corrosion (abstract Dichter). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the composition of US 777 as coatings to arrive at the present claims 1-20.
Double Patenting
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 10,793,724 in view of Dichter (US 4,421,569). Although the claims at issue are not identical, they are not patentably distinct from each other because:
While claim 1 of 724 claims a phenoxy resin, claim 1 of US 724 arrives at claim 1 of the present invention in an anticipatory type manner.
Dichter is directed to a substrate and a coating disposed thereon, where the coating comprises an epoxy prepolymer, a graft initiator, and a catalyst. One skilled in the art would have been motivated to have used the coatings of US 777 as coatings including a substrate and a coating disposed thereon to provide coatings on steep pipes to protect against corrosion (abstract Dichter). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the composition of US 777 as coatings to arrive at the present claims 1-20.
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 1-17, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sanduja et al. (US 2004/0076833) in view of Friedrich et al. (US 2015/0246875) and Kuo et al. (US 2016/0115345).
Regarding claim 1: Sanduja is directed to a substrate and a coating disposed thereon, where the coating comprises:
An epoxy prepolymer ([0032])
A melamine polymerization promoter or crosslinking agent ([0050])
A graft initiator ([0026])
A catalyst ([0027])
A surfactant additive [0039], although a specific nonionic surfactant is not mentioned.
Friedrich is directed to fluorosurfactants that can be added to epoxy coating compositions. One skilled in the art would have been motivated to have selected the fluorosurfactants of Friedrich as the surfactant of choice in Sanduja for improving flow behavior and wetting capacity of the coating formulations ([0078] Friedrich). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the fluorosurfactants of Friedrich as the surfactant of choice in Sanduja.
A polyester and a phenol/formaldehyde resin are not mentioned.
Kuo is directed to a coating composition comprising a polyester and a phenol/formaldehyde resin used for coating metal containers of steel or aluminum. Kuo teaches coatings based on a combination of epoxy and phenolic resins are able to provide a good balance of properties. The composition comprises both a polyester resin and a phenol/formaldehyde resin ([0301] Kuo). One skilled in the art would have been motivated to have included a combination of the polyester and phenol/formaldehyde resin in the composition of Sanduja since they can be used in both water and solvent borne thermosetting coating compositions and have enhanced reactivity towards phenolic crosslinkers ([0005] Kuo). This is relevant since Sanduja teaches parts A and B are reacted such that parts A and B react via condensation reactions, e.g. carboxy, hydroxy ([0049] Sanduja).
Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a combination of polyester and phenol/formaldehyde resin in the composition of Sanduja.
Regarding claim 2: The coating can further comprise pigment or colorant ([0035]) antioxidant, UV blocker, and combinations thereof (see claim 4 of Sanduja).
Regarding claim 3: The prepolymers are present in an amount of 0.1-80% by weight of the solution, which include epoxy prepolymers.
Regarding claim 4: Epi-Rez epoxy prepolymer is disclosed ([0032] Sanduja), which is defined by the present invention as bisphenol A epoxy prepolymers.
Regarding claim 5: A crosslinker is used in the working examples in an amount of 1.5 wt% (Table 1) wherein suitable crosslinkers include melamine ([0050] Sanduja).
Regarding claim 6: Suitable melamines include hexamethoxymethylmelamine ([0050])
Regarding claim 7: The graft initiator is used in an amount of 0.01-1.0% of the total weight of the composition ([0026] and working examples Sanduja).
Regarding claim 8: Graft initiators include iron, silver, cobalt, copper, cerium,
and/or combinations thereof ([0026] Sanduja).
Regarding claims 9-10: Urea peroxide used in an amount of 0.01-1.0 percent by weight of the composition is used in the working examples.
Regarding claims 11-13: The nonionic surfactant is typically used in an amount of 0.01-1.0% by weight of the composition ([0082] Friedrich) and include PFAS having a terminal sulfonic acid sulfonate or carboxylic acid or salt there of PFOA, PFOS.
Regarding claim 14: Kuo discloses the polyester is added to a dispersion in an amount of 10-50 wt% based on the weight of the dispersion ([0326] Kuo).
Regarding claim 15: The polyester can comprise 5-sodiosulphonyl isophthalic acid residue ([0319] Kuo).
Regarding claim 16: The polyesters have a Tg of 30-50 C ([0394] Kuo).
Regarding claim 17: The composition comprising the phenolic resin and polyester is at least 20 wt% of the composition is the polyester ([0326] Kuo). It follows the composition can comprise 1-5 wt% phenol/formaldehyde of the composition. Further, the phenol resin is added in equimolar amounts as demonstrated in [0199] Kuo).
Regarding claim 19: Silquest A187 is present in an amount of 0.1-0.5 percent by weight of the composition ([0033] Sanduja).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sanduja, Friedrich, and Kuo as applied to claim 1 above, and further in view of Matsudaira et al. (US 3871896).
Regarding claim 18: The combination of Sanduja, Friedrich, and Kuo doesn’t mention a butyl etherified phenol formaldehyde resin.
Matsudaira is directed to an epoxy coating composition comprising a butyl etherified phenol formaldehyde resin (claim 1 of Matsudaira). One skilled in the art would have been motivated to have selected a butyl etherified phenol formaldehyde resin as the phenolic resin of choice in Kuo to produce a coating excellent in hardness, abrasion resistance, stain resistance, and chemical resistance that is free from cracking (col. 3 ll. 35-56 Matsudaira). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected butyl etherified phenol formaldehyde resin as the phenolic resin of choice in Kuo.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sanduja, Friedrich, and Kuo as applied to claim 19 above, and further in view of Perdigon et al. (US 2016/0194511).
Regarding claim 20: The combination of Sanduja, Friedrich, and Kuo doesn’t mention a cycloaliphatic epoxy silane.
Perdigon is directed to an aqueous composition comprising a polyester and an epoxy silane, wherein suitable epoxy silanes include Silquest as taught in Sanduja and Coatosil 1770. Coatosil 1770 is defined by the present invention as a cycloaliphatic epoxy silane.
At the time of filing, a person of ordinary skill in the art would have found it obvious to substitute Silquest for Coatosil 1770, and would have been motivated to do so because they are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. Further, the substitution of one epoxy silane for another is within the level of ordinary skill in the art. In addition, the substitution of is obvious when it does no more than yield predictable results. MPEP 2144.06(II).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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