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 .
Response to Amendment
The previous rejection of Claim(s) 1-4, 6-11, under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0301073 A1 to Bills et al. (hereinafter Bills) is/are withdrawn in light of the Applicant’s amendments.
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1, 3-10, 12, 13 in the reply filed on 10/14/2025 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/2025.
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, 3, 4, 7-10, 12-13, 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 “the resin having a cure temperature in the range of 80 deg C to 90 deg C.” However, it is known in the art that cure temperatures for fully curing a product are not dependent upon only one variable, (i.e. only the resin), but are dependent upon three things: 1) the type of resin used, 2) the type of hardener used, and 3) the amount of time to fully cure. Thus, it is unclear how “the resin” can have the cure temperature property since it requires a type of hardener to be cured and times are not defined. It is also unclear if this is a “product by process” limitation, wherein the resin/coating cured at the claimed cure temperature range makes a different product with certain properties, or does the coating/resin merely need to just be cured which can be at any temp/time range.
It also appears that the claim should be recited as “the coating having a cure temperature in the range of 80 deg C to 90 deg…” since it is the coating that is fully cured at 80-90 deg in 30 minutes as cited by the Applicant in their examples of the specification.
Claims 3, 4, 7-10, 12, and 13, are dependent claims which fail to alleviate the issues above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3, recites, “wherein the substrate is selected from the group consisting of a non-conductive, low surface energy substrate, thermoplastic olefin substrate, a resin transfer molded substrate, and a reaction injection molding substrate.” However, claim 1 recites that the substrate is a “thermoplastic olefin substrate.” Thus, claim 3 broadens claim 1 to further include the other listed substrates and fails for further limit.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-10, and 21, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0163760 A1 to Detzler et al. (hereinafter Detzler).
Regarding claims 1, 3-10, and 21, Detzler teaches a solid-powder composition comprising a powder coating resin of a polyester resin (Crylcoat 1574-6, m.p. ), a powder-crosslinker resin of an epoxy resin (D.E.R 662, s.p. 84-94 deg C), a maleic anhydride-modified propylene-butene copolymer resin ("TOYO-TAC PMA-T," melting point: 90°C), and white pigment. (See Example 1, Table 5, para 63-63). The above solid powder composition is further mixed with deionized water (Table 6, para 65-66) and 0.5 wt% of a wetting agent (BYK-3450) and 5.0 wt% of a conductive agent (TuballCoat_E), (See table 7, para 67-68), which meets the water-based coating that does not have an organic solvent. Dretzler also teaches the above co-resins have a melting points between 140-250 deg F (i.e. 60-121 deg C), (para 19), which meets the claimed melting points. Dretzler teaches the above is applied as a coating to a thermoplastic olefin (TPO) substrate, and dried/cured at room temperature to form a dry coating and baked at 250 deg F (i.e. 121 deg C), (para 69), which meets the water-based coating applied to a TPO substrate. The above PMA-T meets the claimed polyolefin, the above polyester meets the hardener, and the epoxy resin DER 662 meets the claimed epoxy resin with the claimed melting point. Detzler also teaches in the other examples using a non-modified polyolefin PB M 8911M (m.p. 93 deg C), (Table 8, para 72), which meets claim 8. Dretzler further teaches that the coating is allowed to cure at either ambient or elevated temperatures wherein the curing temperature is sufficient to dry the coating and are substantially the same for water-borne coats known in the automotive industry. (para 50 and 60-61).
In regard to the limitation of the resin having a “cure temperature in the range of 80 to 90 deg C,” the above epoxy resin DER 662 meets the claimed cure temperature range because DER 662 is curable at 80-90 deg, since Dretzler teaches that the coating would be curable at either ambient or elevated temperatures (para 50 and 60-61), and thus, if the coating is curable at ambient temps, then it is curable at 80 to 90 deg C, with time being the deciding factor of when the product is cured.
Also, one skilled in the art would have a reasonable expectation for the epoxy resin DER 662 of Dretzler to have the claimed curing temperature properties of the claimed invention because Dretzler teaches a substantially identical epoxy resin to the claimed invention such as D.E.R. 662 which the Applicant teaches is a suitable epoxy resin that can be used in the coating (See Table 2 of Applicant’s specification), and this is further evident because Dretzler further teaches that the coating is allowed to cure at either ambient or elevated temperatures wherein the curing temperature is sufficient to dry the coating and are substantially the same for water-borne coats known in the automotive industry. (para 50 and 60-61). See MPEP 2112.01. (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)).
Furthermore, the “applied” coating and the “cure temperature range” appears to be a product-by-process claim. Here, Dretzler teaches each and every component of the water-based coating such as applied to a substrate and cured. Thus, the product is the same and reads upon the claims. See MPEP 2113. (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
Claim(s) 1, 3-10, and 21, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0031887 A1 to Fujimoto. (hereinafter Fujimoto).
Regarding claims 1, 3-10, and 21, Fujimoto teaches an aqueous coating composition comprising an aqueous polyolefin resin, an aqueous epoxy resin, a carbodiimide compound, and an aqueous polyurethane resin (See abstract), wherein the aqueous polyolefin is a non-chlorinated polyolefin resin (para 56) having with a melting point of 50-100 deg C (para 106), specifically a polypropylene (See AP-1, para 241-244), or a maleic anhydride-modified polypropylene (See APM-1, para 245-246), which meets the claimed polyolefin resin cited in claims 1, 7-8. Fujimoto teaches the coating composition is applied as a coating a cured at a temperature of 70-100 deg (para 199 and 236), and specifically contains 125 parts of aqueous polyolefin (A-1), 60 parts of an aqueous cresol novolac epoxy resin (EPI-REZ 6006-W-68), 12.5 parts of carbodiimide, and 133.3 parts of an aqueous polyurethane resin, with 98.5 parts of a pigment paste containing about 6 wt% of Surfynol T324 and Surfynol 440 (i.e. wetting agents), and 4.7 wt% of electrically conductive black, and 4.7 parts of a super wetter/defoamer (DYNOL 604), 6.7 parts of a thickener (Viscalex HV30), and 0.5 parts of a neutralizing agent (dimethylethanolamine), (para 258-262, Example 1, Table 1, para 305), which correlates to about 1 wt% of conductive black and 2 wt% of total wetting agents, and does not appear to contain any organic solvents. Fujimoto further teaches the composition contains 1-5 wt% of conductive black (para 190), and the above coating composition was applied to a substrate and dried/cured at 80 deg C for 30 minutes to form a primer coating film, (para 286), which meets the cured temperature. The above carbodiimide compound meets the claimed hardener (para 114 and 162). Fujimoto also teaches suitable epoxy resins include Epi-rez 3522W60 which is an aqueous dispersion of Epon 1002F, which has a m.p. of 80-88 deg C. (para 112).
In regard to the limitation of the resin having a “cure temperature in the range of 80 to 90 deg C,” the above epoxy resin of Fujimoto meets the claimed cure temperature range because Fujimoto teaches the coating composition is applied as a coating a cured at a temperature of 70-100 deg (para 199 and 236), which demonstrates that the above is curable at 80 to 90 deg C, with time being the deciding factor of when the product is cured.
Furthermore, the “applied” coating and the “cure temperature range” appears to be a product-by-process claim. Here, Fujimoto teaches each and every component of the water-based coating such as applied to a substrate and cured. Thus, the product is the same and reads upon the claims. See MPEP 2113. (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Detzler, and/or Fujimoto, as applied to claim 1, and in further view of US 2019/0382636 A1 to Ryzhova et al. (hereinafter Ryzhova).
Regarding claims 12-13, as cited above and incorporated herein, Detzler, and/or Fujimoto, teaches claim 1.
Detzler, and/or Fujimoto do not explicitly teach the aliphatic polyamine compound with a melting temperature of 65-90 deg C.
However, Ryzhova teaches a curable composition used in the field of primer coatings (See abstract and para 1), comprising at least one hydroxyl group containing resin, such as an epoxy resin and polyester resin (para 7-12 and 15), and a hardener (para 211), which is in the same field of use of the Applicant’s invention of primer coatings containing epoxy resin and hardeners. Ryzhova further teaches the hardener preferably is thermally activatable only above 80 deg C (para 212) such as Ancamine 2337 (m.p. 63-77 deg C) or Adeka EH-4357 (m.p. 80-90 deg C) are preferred (para 213), which meet the claimed aliphatic polyamine. Ryzhova teaches the thermally activatable hardeners are preferred because they can be stored together with epoxy resins for months without a curing reaction starting to any significant extent and will initiate at temperatures above 80 deg C to accelerate the polymerization reaction of the epoxy resins. (para 212).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the thermally activatable hardeners of Ryzhova as the hardeners in Detzler, and/or Fujimoto, because Ryzhova teaches the same field of use of the Applicant’s invention of primer coatings containing epoxy resin and hardeners and Ryzhova teaches the thermally activatable hardeners are preferred because they can be stored together with epoxy resins for months without a curing reaction starting to any significant extent and will initiate at temperatures above 80 deg C to accelerate the polymerization reaction of the epoxy resins. (para 212).
Response to Arguments
Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive in part.
On page 5-6, the Applicant argues that Dretzler does not teach the resin having the claimed cure temperature range of 80-90 deg C. This is not persuasive because, as cited above, it is known in the art that cure temperatures are not dependent on only one variable, (i.e. only the resin), but are dependent upon three things: 1) the type of resin used, 2) the type of hardener used, and 3) the amount of time to fully cure. Thus, the above epoxy resin DER 662 of Dretzler meets the claimed cure temperature range because DER 662 is curable at 80-90 deg, since Dretzler teaches that the coating would be curable at either ambient or elevated temperatures (para 50 and 60-61), and thus, if the coating is curable at ambient temps, then it is curable at 80 to 90 deg C, with time being the deciding factor of when the product is cured. This is further evident by the PCIMAG article the Applicant has cited as evidence which talks about a focus on “speedier/faster cure times.”
In this case, the Applicant’s claim is only directed to a “cure temperature” and not “fully cured” at a certain time range. It is noted that the features upon which applicant relies (i.e., “low-cure,” and/or fully cured at a certain time) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Also, one skilled in the art would have a reasonable expectation for the epoxy resin DER 662 of Dretzler to have the claimed curing temperature properties of the claimed invention because Dretzler teaches a substantially identical epoxy resin to the claimed invention such as D.E.R. 662 which the Applicant teaches is a suitable epoxy resin that can be used in the coating (See Table 2 of Applicant’s specification), and this is further evident because Dretzler further teaches that the coating is allowed to cure at either ambient or elevated temperatures wherein the curing temperature is sufficient to dry the coating and are substantially the same for water-borne coats known in the automotive industry. (para 50 and 60-61). See MPEP 2112.01. (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)).
Furthermore, the “applied” coating and the “cure temperature range” appears to be a product-by-process claim. Here, Dretzler teaches each and every component of the water-based coating such as applied to a substrate and cured. Thus, the product is the same and reads upon the claims. See MPEP 2113. (“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
It also appears that the claim should be recited as “the coating having a cure temperature in the range of 80 deg C to 90 deg…” since it is the coating that is fully cured at 80-90 deg in 30 minutes as cited by the Applicant in their examples of the specification, and just “the resin.”
On page 7-9, the Applicant argues that Fujimoto relies upon a solvent for emulsifying an acid-modified chlorinated polyolefin-based resin. This is not persuasive because the paragraphs cited by the Applicant (para 74 and 83-84), are in reference to only the acid-modified chlorinated polyolefin-based resin, which is another embodiment. However, Fujimoto teaches using an aqueous non-chlorinated polyolefin based resin (para 56-57), which does not appear to contain a solvent since the solvent was removed from the non-chlorinated polyolefin based resin before use. (para 244 and 262).
On page 10, the Applicant argues that Ryzhova does not remedy the teachings of Dretzler and/or Fujimoto, which are found unpersuasive for the reasons addressed above.
In regard to the cure temperature arguments, these are also found unpersuasive for the reasons addressed above.
Applicant argues the Ryzhova teaches solvents. This is found unpersuasive for the reasons addressed above, and because both Dretzler and/or Fujimoto do not teach using solvents in their examples.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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