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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/24/2026 (“the amendment”), in response to the final Office action mailed 11/25/2025 (“the final action”), has been entered.
Response to Amendment
Claims 1-7, 9-16, 18, 21, 24, and 27-28 are now pending.
Support for new claim 28 can be found at [0012] of the originally-filed specification.
Response to Arguments
Claim Rejections – 35 USC 112
The rejection under 35 U.S.C. § 112(a) in the final action is withdrawn in view of the amendment.
The rejection under 35 U.S.C. § 112(d) in the final action is withdrawn in view of the amendment.
Claim Rejections – 35 USC 102 & 103
Applicant’s arguments in traverse of the rejection under 35 U.S.C. §§ 102 & 103 in the final action have been fully considered but are not persuasive.
US 080 teaches a polyol different from the epoxy resin component because US 080 teaches that part (A) can contain more than one epoxy compound including more than one -OH group.
Independent claim 1 has been amended to require a polyol “different” from the epoxy resin component. This does not mean the same thing as a polyol that is not part of the epoxy resin component. As explained in the final action at ¶24, part (A) (the epoxy resin component) can include combinations of several epoxy compounds, including bisphenols (2 -OH groups) and novolacs (many -OH groups). The Primary Examiner determines that US 080 anticipates claim 1 because one of the epoxy compounds satisfies the claimed “epoxy resin component” and the other epoxy compound satisfies the claimed “polyol different from the epoxy resin component.”
For example, US 080 teaches a BPA/epichlorohydrin epoxy resin (i.e., BADGE):
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Moreover, US 080 teaches a BPA/BPF epoxy resin:
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Here, BADGE satisfies the claimed epoxy resin component and BPA and/or BPF satisfies the polyol (having n -OH groups) component that is “different” (i.e., not the same compound) than BADGE. In the alternative, BPA and/or BPF satisfies the claimed epoxy resin component and BADGE satisfies the polyol (having n -OH groups) component that is “different” (i.e., not the same compound) than BPA and/or BPF. Again, “different from the epoxy resin component” does not mean the same thing as “not part of the epoxy resin component.”
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 11, 13-16, and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0390080 A1.
Claim 1
US 080 teaches an epoxy resin composition suitable for encapsulating (i.e., coating) an object [title, abstract]. The composition is a two-component composition including parts (A) and (B) that are stored separately and mixed prior to coating [0024, 0046]. The point at which the parts are mixed but before they are completely reacted reads on this composition because final curing takes place after the coating is applied to the substrate [0028].
The epoxy resin composition comprises an epoxy resin component [0051-0063]. Specifically, the epoxy resin component can include combinations of several epoxy compounds, including bisphenols (2 -OH groups) and novolacs (many -OH groups) [0060]. Such a combination satisfies the claim limitation for an epoxy resin component and a polyol different from the epoxy resin component, as explained above. The composition further contains a phenolic lipid, including cardanol-based compounds such as NX-2026 and Ultra Lite 2023 from Cardolite Corp.1 [0087-0089], which are both non-reactive diluents that are phenolic lipids having a single terminal hydroxyl group:
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NX-202x series general structure
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Ultra LITE 2020 series general structure
Finally, the composition contains a crosslinking agent [0064-0081].
Claim 11
US 080 teaches adding filler to adjust viscosity [0085].
Claim 13
US 080 does not explicitly state that the composition resists chalking for at least 90 days as measured by ASTM D4214. Nevertheless, products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. Here, since the prior art teaches precisely the same composition as recited in claim 1, it necessarily possesses the same physical properties, including non-chalking for at least 90 days according to the named standard.
Claims 14 & 16
US 080 teaches a cable joint coated with the composition [0106 et seq.] and a method for coating the joint [0099-0105].
Claim 15
US 080 teaches that cables are attached to the joint when coated [0106], which satisfies the claimed “article comprising the substrate of claim 14.”
Claim 27
The phenolic lipids taught by US 080 do not include amine groups.
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.
Claim(s) 2-7, 9-12, 18, 19, 21, 24, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0390080 A1.
Claim 2
US 080 does not explicitly teach that the polyol comprises up to 15 wt.-% based on total solid weight of the composition. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, the relative amounts of different epoxy resins is a result-effective variable affecting physical properties of the coating, e.g., hardness, flexibility, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the amount of bisphenol and/or novolac (polyols) in the epoxy resin component by routine experimentation. Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 3
US 080 does not explicitly teach that the polyol has a hydroxyl value of from 100 to 150 mg KOH/g. The hydroxyl number of a resin is a result-effective variable affecting physical properties of the coating, e.g., hardness, flexibility, tensile and flexural strength, glass transition temperature, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the hydroxyl number of the polyol by routine experimentation. MPEP § 2144.05(II)(A). Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 4
US 080 does not explicitly teach that the polyol has a glass transition temperature of from 17°C to 26°C. The glass transition temperature of a resin is a result-effective variable affecting physical properties of the coating, e.g., stiffness, strength, flexibility, thermal expansion and density, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the glass transition temperature of the polyol by routine experimentation. MPEP § 2144.05(II)(A). Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 5
US 080 does not explicitly teach that the diluent comprises up to 20 wt.-% based on total solid weight of the composition. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, the amount of diluent is a result-effective variable affecting physical properties of the coating, such as flowability, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the amount of diluent by routine experimentation. Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 6
US 080 does not explicitly teach that the epoxy resin component comprises a liquid epoxy resin and a solid epoxy resin and has an epoxy equivalent weight of from 184 to 500 grams. US 080 places no limitation on the types of epoxy resins that can be used and/or mixed. Consequently, it would have been obvious to one of ordinary skill in the art to utilize any suitable epoxy resin, including solid resins, liquid resins, or a combination thereof. Moreover, the epoxy equivalent weight of a resin is a result -effective variable affecting resin crosslinking density, viscosity, mechanical performance, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the epoxy equivalent by routine experimentation. MPEP § 2144.05(II)(A). Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 7
US 080 does not explicitly teach that the epoxy resin component comprises from 11 to 20 weight percent based on total solid weight of the composition. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, the amount of epoxy resins is a result-effective variable affecting physical properties of the coating, e.g., hardness, flexibility, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the amount of epoxy resin component by routine experimentation. Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 9
US 080 does not explicitly teach that the crosslinking comprises from 3 to 22 weight percent based on total solid weight of the composition. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, the amount of crosslinking is a result-effective variable affecting the degree of crosslinking, crosslinking density, overall cure time, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the amount of crosslinking agent by routine experimentation. Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012).
Claim 10
US 080 explicitly teaches the presence of a dye and filler [0085-0085], but not specifically a pigment or an extender. Nevertheless, both of these are well-known additives to two-component resin coating compositions and would have been obvious to one of ordain skill in the art to add in order to get a resin coating of the desired color and properties.
Claim 12
US 080 does not explicitly teach that the composition contains these components in these concentrations. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A). Moreover, the relative amounts of different resin components are result-effective variables affecting physical properties of the coating, e.g., hardness, flexibility, etc. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the amount of components in the resin by routine experimentation. Moreover, nothing of record indicates that such optimization was anything other than the exercise of ordinary skill in the art. In re Applied Materials, Inc., 692 F. 3d 1289, 1297 (Fed. Cir. 2012). “The mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art.” Id. at 1298.
Claims 18 & 19
US 080 does not explicitly teach applying a second coating composition atop the first. Nevertheless, it is well-known in the coating art to apply multiple layers of a coating composition in order to build up a coating of a desired thickness. Consequently, it would have been obvious for one of ordinary skill in the art to do so here, with the first layer reading on applying the first coating composition and the second layer reading on applying the second coating composition where the first and second coating composition comprises the composition of claim 1.
Claim 21
Moreover, US 080 is silent on abrading, blasting, or removing the first coating composition. It is the Primary Examiner’s position that this silence is a fair teaching that none of these is performed or, at least, required.
Claim 24
As noted above, it would have been obvious to one of ordinary skill in the art to apply multiple layers of the coating material in order to build up a coating of a desired thickness. This reads on a fairly short period of elapsed time between application of the two layers. Because “up to 12 months” is inclusive of 0, the scenario of applying multiple layers satisfies the limitations of this claim as well.
Claim 28
US 080 does not explicitly teach that the polyol comprises an acrylic polyol and/or a polyester polyol. Nevertheless, US 080 places no limitation on the types of polyol-containing epoxy resin blends that can be used. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used, as the polyol or novolac resins, any suitable resin, including acrylic and/or polyester resins, depending on the desired properties of the cured resin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
04 March 2026
1 https://www.cardolite.com/products/epoxy-modifiers/ (last accessed Nov. 20, 2025).