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 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng 20150094400 in view of Nikanol Xylene Resin (retrieved from: https://web.archive.org/web/20190717172640/https://fudow.co.jp/en/products/xylene, July 2019, retrieved on: 9/28/2026).
Regarding claims 1, Zheng teaches an epoxy composition used for coatings comprising an epoxy resin and a liquid curing agent (Paragraph [0117]). Zheng teaches the epoxy resin composition comprises an epoxy resin component (Paragraph [0108]). Zheng also teaches the composition comprises a curing agent (Paragraph [0108]). Zheng teaches the curing agent is a reaction product of an aromatic amine, a phenol and a formaldehyde (Paragraph [0075]). Zheng teaches the aromatic amine can be m-xylenediamine. It would have been obvious for the curing agent to be a reaction product of m-xylenediamine, phenol, and a formaldehyde because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the limitations of the claim 2. Zheng also teaches the composition comprises a xylene formaldehyde condensate as a plasticizer (Paragraph [0123]). Zheng teaches the xylene formaldehyde plasticizer can be a Nikanol plasticizer (Paragraph [0123]).
Zheng is silent on the Nikanol plasticizer being an ethylene oxide modified Nikanol plasticizer.
However, Nikanol Xylene resins teaches the modified xylene formaldehyde resin L5 is a suitable modified resin for water-based compositions (Page 2). It would have been obvious to select L5 xylene formaldehyde resins as the modified resin of Zheng because modified Nikanol resins represent a short list of possible nikanol resins suitable in water-based compositions. Zheng teaches the commercially available modified nikanol resins are suitable in the composition (Paragraph [0123]). There are a limited number of modified nikanol resins, and it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
This reads on the limitations of the claimed (C).
Zheng also teaches the composition comprises water (Paragraph [0128]). This reads on the claimed “water.”
Regarding claims 3 and 4, the modified aromatic hydrocarbon formaldehyde resin is an optional component of claim 1. Therefore, Zheng in view of Nikanol Xylene Resins reads on the limitations of claim 1.
Regarding claim 5, L5 is a xylene formaldehyde resin modified with ethylene oxide. This reads on the claimed “xylene.”
Regarding claim 6, Zheng teaches the composition comprises 4-30% by weight plasticizer (Paragraph [0123]). Zheng teaches the epoxy component comprises 30-80% by weight of the total composition (Paragraph [0119]). This corresponds to an amount of component (C) of 4-30 parts by weight of plasticizer. This overlaps with the claimed range of 1-20 parts by weight (C).
Regarding claim 7, Zheng does not expressly disclose the viscosity of the composition at 25C. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Zheng’s composition as described above will therefore necessarily possess the claimed viscosity at 25C.
Regarding claim 8, Zheng teaches the composition can be used as a paint (Paragraph [0128]). This reads on the limitations of claim 8.
Regarding claim 9, Zheng teaches the components are mixed together (Paragraph [0121]). This reads on the limitations of claim 9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (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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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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