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, without traverse, of Group I, claims 1-12, is acknowledged.
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.
Claims 6, 7, and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 6-7, the phrases “e.g.” and “preferably” render the claims indefinite because the claims include elements not actually disclosed (those encompassed by "e.g.” and “preferably”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claim 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 10 includes two broad ranges along with two narrower ranges in each case following the term “especially” which are the narrower statement of the range/limitation.
The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson (US 2016/0160059) in view of Paar (US 20150344706 A1) and Jordan (WO 2020/225531, attached).
Regarding claims 1-12, Anderson teaches an intumescent coating composition of epoxy resin binders and one or more amine functional curing agents, which may be interchanged with polyamide curing agents (Abstract; p. 5, [0056]). More specifically, Anderson's intumescent composition may include 20.8 parts epoxy resin binder, 5.2 wt% tetraethylorthosilicate, 49.0% ammonium polyphosphate (acid generating compound), 10.1 wt% melamine (expansion agent), and 10 wt% curing agent (p. 8, Table 1, ex. 4). The expansion agent (melamine) may alternatively be present in amounts ranging from 1-30 wt% (p. 6, [0169]). The composition may further contain 10-80 wt% of organic resins such as polyethylene, polypropylene, polybutene, polypropene (hydrocarbon resins that have no epoxy groups or oxygen atoms) (Abstract; p. 5, 156; p. 6, 163-164). Anderson et al further teaches amine curing comprising one or more amine groups such as triamino-trimethoxysilane and N-phenyl-3-aminopropyltrimethoxysilane (pp. 5-6, [0156]-[0158]). A blowing agent (expansion agent) may be present in amounts ranging from 1-30 wt% (p. 6, [0169]). One or more epoxy polymers may be present in total amounts ranging from 10-80 wt% (p. 5, [0150]). The composition may have a solids content of at least 85 wt%.
However, Anderson is silent as to the use of benzylamine or fatty amine curing agents, though Anderson does not exclude them. In the same field of endeavor, Paar teaches combining fatty amine and benzylamine with epoxide resin in coatings to achieve improved edge coating (p. 1, [0013]-[0014]; p. 2, [0017]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Anderson and the amine curing agents of Paar to arrive at the claimed invention, and to achieve improved edge coating, as taught by Paar (p. 1, [0013]).
Anderson is further silent as to use of reactive diluent, but does not preclude its use. In the same field of endeavor, Jordan teaches that a reactive diluent may be added in amounts ranging from 1-10 wt%, and a carbon source may be added in amounts ranging from 0.1-15 wt%, to intumescent coatings having epoxy binders (Abstract; p. 3, lines 10-12; p. 4, lines 11-13). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the reactive diluent and carbon source of Jordan with the composition of Anderson to arrive at the claimed composition, and because of the art-recognized suitability for the intended purpose. See MPEP 2144.07. These prior art ranges overlap the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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, Rob 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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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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