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 § 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 8 and 10 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 8 is indefinite because method used to measure the Tg is not specified (Guidelines F-IV, 4.11 ).
Claim Rejections - 35 USC § 102
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, 3, 5, 6 and 8-15 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Sista et al. (US 2020/0115544).
Regarding claims 1-6, 9, 10, 12 and 13, Sista discloses discloses a composition comprising a compound having a structure represented by formulas (55), (56), (58), or (59) (pages 14-15 in combination with formula (11) - page 7) falling under the scope of formulas (I) and (II) of the present application, an aminotriazine novolac skeleton type phenol compound, and an imidazole compound ([0191 ]-[0192], Tables 2,4).
Claim(s) 1, 2, 4-6, 9, 10 and 12-15 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Osaka Gas Chemical (JP 2020158623 A).
Regarding claims 1, 2, 4-6, 9, 10 and 12-15, Osaka Gas Chemical discloses a composition comprising 9,9-bis(4-glycidyloxyphenyl)fluorene, falling under the scope of formula (I) of the present application (claim 2, [0011 ]), a phenol novolac resin, and a triphenylphosphine ([0087]-[0091], Table 1 ).
Claim(s) 1, 3, 5, 6, 9 and 10 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Sumitomo Bakelite Co. (JP 202117880 A).
Regarding claims 1, 3, 5, 6, 9 and 10, Sumitomo Bakelite Co. discloses a composition comprising an epoxy compound having a structure, falling under the scope of formula (II) of the present application [0111], a triphenylmethane type phenol resin, and a triphenylphosphine ([0110]-[0131], Table 1 ).
Claim Rejections - 35 USC § 103
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.
Claim(s) 7, 8, 11 and 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sista et al. (US 2020/0115544) alone.
Regarding claims 7 and 14, although Sista discloses the monomer compound according to claim 6, and the composition is a liquid, it would have been obvious to one of ordinary skill in the art to utilize a monomer compound according to claim 7 and the composition as a powder since the Applicant’s specification indicates that either configurations are acceptable – therefore neither one can be considered a critical element to the invention.
Regarding claims 8 and 11, although Sista is silent as to the specific crosslinker-resin ratio, catalyst amount and pigment percentage, it would have been obvious to a skilled artisan to utilize such well-known procedural variations and subsequently optimizing them to reach the claimed values for the desired specific application. Subsequently, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.d 272, 205 USPQ 215 (CCPA 1980).
Regarding claims 15-19, it would have been obvious to one of ordinary skill in the art to optimize the cured coating depending on the desired features and/or applications of the coating.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to disclose, teach or suggest – either alone or in combination – the instant composition applied to the claimed specific uses and applications defined in claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (KR 20210131560 A) and (KR 20190112394 A) disclose epoxy compositions comprising a binder resin including a difunctional monomer similar to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A ARMSTRONG whose telephone number is (571)270-1184. The examiner can normally be reached M-F ~10-6.
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, Anita Coupe can be reached at (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE ARMSTRONG, P.E.
Primary Examiner
Art Unit 3678
/KYLE ARMSTRONG/ Primary Examiner, Art Unit 3619
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