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 1-15 in the reply filed on 08/17/2026 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/17/2026.
Furthermore, upon reconsideration, this application further contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Species group I, wherein the glycol ether solvent is of formula (I) (claim 6).
Species group II, wherein the glycol ether solvent is of formula (II) (claim 7).
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Species groups I-II lack unity of invention because the groups do not share the same or corresponding technical feature.
If Applicant selects Group I, Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: none.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
During a telephone conversation with Mr. Christopher L. Curfman on 09/08/2026 a provisional election was made without traverse to prosecute the invention of Species group I (claim 6). Affirmation of this election must be made by applicant in replying to this Office action. Claim 7 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Objections
Claims 2-6 and 8-15 are objected to because of the following informalities: The preamble recites “A” primer coating. It is suggested each claim preamble is amended to recite “The” primer coating. Appropriate correction is required.
Claim 14 recites “VOC” in line 2 of the claim. It is suggested the full form of this abbreviation be recited in the claim. Appropriate correction is required.
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 1-6 and 8-15 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.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrases "more preferably" and "still more preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "especially" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1, 3-5, and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (CN 109689724).
Regarding claims 1, 3, 5, 8, 12, and 15, Jung et al. teaches a primer coating composition (See Abstract) comprising (i) 5.0 to 50wt % of at least one bisphenol F epoxy resin; (ii) 1.5 to 12wt % of at least one silane; (iv) 1.0 to 15wt % of at least one reactive diluent, and (v) at least one curing agent (page 4), wherein the reactive diluent includes neopentyl glycol diglycidyl ether and can be used alone or with two or more diluent (pages 13-14). Jung et al. teaches filler including glass ball can be used (page 15), i.e. glass microspheres.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
Jung et al. discloses various additives including filler such as glass ball are generally contained in an amount of 10 to 65 weight % (page 16). It is apparent, however, that the instantly claimed microspheres and that taught by Jung et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the microspheres disclosed by Jung et al. and that disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the microspheres disclosed in the present claims is but an obvious variant of that disclosed in Jung et al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 4, Jung et al. teaches wherein the epoxy resin is a liquid (page 10).
Regarding claim 5, Jung et al. teaches wherein the epoxy is bisphenol based including bisphenol A type epoxy resin (page 10).
Regarding claim 9, Jung et al. teaches using A-187 which is an epoxy functional silane (page 21).
Regarding claim 10, Jung et al. teaches wherein the curing agent includes phenalkamines (page 16).
Regarding claim 11, given that Jung et al. teaches coating composition comprising materials identical to those presently claimed, the coating composition of Jung et al. would necessarily have a viscosity as presently claimed, absent evidence to the contrary. Further, Jung et al. disclose a viscosity, measured at 23 degrees centigrade can be 200 to 800cps (page 10).
Regarding claim 13, given that Jung et al. teaches coating composition comprising materials identical to those presently claimed, the coating composition of Jung et al. would necessarily have a pot life as presently claimed, absent evidence to the contrary.
Regarding claim 14, given that Jung et al. teaches coating composition comprising materials identical to those presently claimed, the coating composition of Jung et al. would necessarily have a VOC as presently claimed, absent evidence to the contrary. Further, Jung et al. disclose a VOC content of preferably less than 250 g/L (page 9).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (CN 109689724) in view of Iyer et al. (CN 104080870).
Jung et al. is relied upon as disclosed above.
Regarding claim 6, Iyer et al. teaches solvent such as xylene, toluene, etc. (page 1) but fails to teach the glycol ether solvent as claimed.
However, Iyer et al. teaches a low VOC epoxy group containing polysiloxane oligomer composition used for coatings, adhesive, etc. (See Abstract) comprising an epoxy resin, a curing agent, and solvent including toluene, xylene, ethylene glycol monomethyl ether, and ethylene glycol monobutyl ether, etc. (paragraphs [0109], [0111], and [0112]). Given that Iyer et al. discloses the use of toluene, xylene, ethylene glycol monomethyl ether, and ethylene glycol monobutyl ether, etc. as being interchangeable and, thus, materials being equivalents, it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the toluene or xylene of Iyer et al. with ethylene glycol monomethyl ether as a matter of substitution of equivalents known for the same purpose. See MPEP 2144.06 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
Prosecution Insights