DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-6, 8-9, 11, 14-15, 17-18, 20, 22-24, 26-27, 29-30, and 33-34; “a coating kit”) in the reply filed on 05/22/2026 is acknowledged.
3. Claims 35 and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/22/2026.
4. It is also noted that the applicants request rejoinder of non-elected process claims (see Page 1 of the Applicants’ Remarks filed 05/22/2026). However, the request for rejoinder is moot since the instant claims are not deemed allowable for the reasons set forth below. According to MPEP § 821.04 [R-3], “Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.” Since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time.
Response to Claim Amendment filed 06/17/2025
5. Claim 6 was amended to include limitations supported at paragraph [0304] of applicants’ published application, i.e., US PG PUB 2025/0250460.
Amendment to claim 9 is also supported at paragraph [0123] of applicants’ published application, i.e., US PG PUB 2025/0250460.
Claims 11, 15, 18, and 20 were further amended to include limitations supported at paragraphs [0109]-[0110], [0124], [0125], and [0308], of applicants’ published application, i.e., US PG PUB 2025/0250460.
Moreover, claims 27 and 30 were amended to include limitations supported at paragraphs [0196]-[0200] and [0231]-[0246], of applicants’ published application, i.e., US PG PUB 2025/0250460 and original claim 28 language.
Thus, no new matter is present.
Claim Objections
6. Claims 1-2, 4-5, 11, 14-15, 20, 24, 26-27, 29-30 and 34 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to delete the “*” before “a component A”, “a component C”, “a component D”, and “a component E”.
The applicants are also advised to add the phrase “the group consisting of” after the claimed phrase “selected of”. The applicants are further advised to replace the claimed “The thermosetting biocomponent”, “First Component” and “Second component” with “the thermosetting biocomponent”, “first component” and “second component”.
The applicants are further advised to add “and” between the claimed “vinyl resin” and “polyamide/polyamine resin”, and also, before the claimed “epoxy heterocyclic resin”. The applicants are advised to add “and” between the claimed “vinyl resin” and “polyamide resin”.
Moreover, the applicants are advised to place less space between “hydrocarb” and “on” to make the word “hydrocarbon”, and delete the phrase “at least” throughout claim 1.
Additionally, the applicants are advised to replace the claimed “at least a polyamine, or at least a polysulfite” with the new phrase “at least a polyamine or a polysulfite”.
Finally, the applicants are advised to replace “CAB/CAP resin” as recited in claim 1 to “cellulose acetate butyrate (CAB)/cellulose acetate propionate (CAP)”1.
As to Claim 2: The applicants are advised to replace the claimed “thermosetting biocomponent” with “thermosetting biocomponent (DB1)”.
As to Claim 4: The applicants are advised to replace the claimed “the additives” with the phrase “the additive includes”.
As to Claim 5: The applicants are advised to add the term “(DB2)” after the claimed “thermosetting biocomponent”.
As to Claim 11: The applicants are advised to replace the claimed phrases “at least a solvent” and “at least a pigment” with new phrases “a solvent” and “a pigment”.
As to Claim 14: The applicants are advised to add the term “(DB2)” after the claimed phrase “thermosetting biocomponent”.
As to Claim 15: The applicants are advised to delete the term “at least” before the claimed “a solvent”, “a functional epoxy resin”, “a pigment” and “an additive”.
As to Claims 20, 24, and 29: The applicants are advised to add the phrase “the group consisting of” after the claimed phrase “selected from”.
The applicants are advised for claim 20 add the term “and” between “polyester” and “polyamide”.
As to Claim 26: The applicants are advised to add the phrase “the group consisting of”after the claimed phrase “selected from”.
The applicants are also advised to delete the “*” before the claimed “esters”, “ketones”, “carbonates”, “ethers”, “amides”, and “aromatics”.
The applicants are further advised to add the term “and” between “acetamide” and “aromatics”.
As to Claim 27: The applicants are advised to delete the phrase “Coating kit” and replace with the new phrase “The coating kit”.
As to Claim 30: The applicants are advised to add the phrase “the group consisting of” after the claimed phrase “selected from”. The applicants are also advised to replace the claimed phrase “the moisture absorber is” with the new phrase “the moisture absorbers are”.
As to Claim 34: The applicants are advised to delete the phrase “(polyurethane resin)”.
Appropriate corrections are 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.
7. Claims 1-6, 8-9, 11, 14-15, 17-18, 20, 22-24, 26-27, 29-30, and 33-34 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.
As to Claim 1: It recites, among other things, “functional (monomeric, polymeric) resins”. As recited, by virtue of using a parenthesis, it is not clear whether the functional resins include monomeric, polymeric or both.
Moreover, the claim also recites “high molecular weight thermoplastic resins selected from…”CAP resin”. While paragraph [0138] of applicants’ published application, i.e., US PG PUB 2025/025046, define that the most common high molecular weight thermoplastic polymers/resins….polyester, acrylic, vinyl, polyamides, epoxies, polyamines, phenolics, CAB, nitrocellulose, polyurethanes, phenoxy… have a molecular weight of 5,000-200,000 g/mol”, it does not further define the molecular weight of CAP resin which is said to be a high molecular weight thermoplastic resin.
Additionally, they recite particular amounts of different ingredients in claims 1 and 3. However, it is unclear what these percentages (%) are based on, whether it is based on weight percentage or volume percentage.
As to Claims 2, 23 and 26: They recite, among other things, terms of preference (“preferably” and “such as”), followed by narrower ranges and/or limitations. By virtue of using these terms, these claims raise indefiniteness as to whether the scope of these claims is properly limited to the narrower ranges and/or limitations or the broader ranges and/or limitations. It is not clear if these claims require the limitations following these terms “preferably” and “such as”. See MPEP section 2173/05 (c).
Moreover, as to claim 26, since it is dependent on a cancelled claim 25, it is not clear what claim 26 is referring to.
As to Claim 3: By virtue of using the term “also”, it is not clear whether the solvent, pigment, additive, thermoplastic resin, and functional epoxy resin is in lieu of or in addition to the solvent, pigment, additive, thermoplastic resin, and epoxy resin part of the first component of the thermosetting biocomponent.
As to Claim 5: It recites, among other things, “aliphatic (monomeric/polymeric) amine”. recited, by virtue of using parenthesis, it is not clear whether the aliphatic amines include monomeric, polymeric or both.
As to Claim 15: It is not clear whether the solvent, functional epoxy resin, pigment and additive are referring to the same solvent, epoxy resin, pigment and additive of the monocomponent recited in claim 1, on which claim 15 depends on, or additional/new.
As to Claim 17: It is not clear whether “the aromatic diamine of component B” is referring to the monomeric or polymeric aromatic polyamine of component B recited in claim 1, on which claim 17 depends on, or something new/additional. It is also not clear whether “polymeric/oligomeric polyamine” in claim 17 is meant to further limit the polymeric aromatic polyamide of claim 1, on which claim 17 depends on, or is additional/new.
As to Claim 20: It recites, among other things, “high molecular weight polymers”. While paragraph [0138] of applicants’ published application, i.e., US PG PUB 2025/025046, define that the most common high molecular weight thermoplastic polymers/resins….polyester, acrylic, vinyl, polyamides, epoxies, polyamines, phenolics, CAB, nitrocellulose, polyurethanes, phenoxy… have a molecular weight of 5,000-200,000 g/mol”, it does not further define the molecular weight of other polymers broadly embraced by the claimed high molecular weight polymers.
As to Claim 34: It is not clear whether the limitations surrounded by parentheses are required by the claim or not.
It is further noted that since claims 4, 6, 8-9, 11, 14, 18, 22, 24, 27, 29-30, and 33 are directly or ultimately dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that are indefinite for the reasons provided above.
Accordingly, the scope of these claims is deemed indefinite.
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.
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.
8. Claims 1-2, 5-6, 11, 14, 20, 22-23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Tran et al. (WO 2021/1554402; utilized US 12,617,890 as its Equivalent) in view of ANDERSEN et al. (US 2019/0092946)3 and Ek (US 5,190,610).
It is noted that Tran et al. (WO 2021/155440) is used for date purposes only, and all column, line numbers cited below refer to its Equivalent, namely US 12,617,890.
The broadest claim is directed to a coating kit for repair and/or reconstitution of rubber and/or metal worn areas, applicable on horizontal, vertical or tilted surfaces, the coating kit comprising:
a component A, main resin, which is a base composition comprising: (i) up to 90% of a polyurethane prepolymer having free isocyanate groups; (ii) up to 25% solvents; (iii) up to 35% of at least a pigment; (iv) up to 10% of at least an additive; and
a component B, hardener, which is a mixture comprising: (i) up to 90% of at least a monomeric or polymeric aromatic polyamine; (ii) up to 50% of at least a solvent; (iii) up to 35% pigment; and (iv) up to 35% additives;
a component C, composed of: (i) up to 10% of a rubber oxide primer adhesive, which is selected between an organic oxidant and an inorganic oxidant; and (ii) up to 99.5% of at least a solvent;
a component D, metal primer adhesive, comprising a thermosetting bicomponent (DB) or a thermoplastic monocomponent (DM), wherein: the thermosetting bicomponent is made up of 2 components: first component (DB1), comprising: (i) up to 95% of at least a solvent; (ii) up to 5% of at least a pigment; (iii) up to 5% of at least an additive; (iv) up to 25% of a thermoplastic resin; (v) up to 10% of an epoxy resin; and second component (DB2), comprising: (i) up to 90% of at least a solvent; (ii) up to 5% of at least an additive: (iii) up to 15% of functional (monomeric, polymeric) resins, and wherein, the thermoplastic monocomponent (DM), comprises: (i) up to 95% of at least a solvent; (ii) up to 5% of at least a pigment; (iii) up to 5% of at least an additive; (iv) up to 15% of high molecular weight thermoplastic resins, and (v) up to 15% of at least a functional (monomeric, polymeric) resin, and
a component E, which is an oxygenated and/or hydrocarbon cleaning solvent.
The claimed “up to”, absent any definition from the present specification, is interpreted to as including zero amount. Thus, all the ingredients that are part of components A-E are not required by the claim.
As to Claims 1-2, 5-6, 11, 14, 20, 22-23 and 26: Tran et al. disclose a multi-part coating kit system which may be used to repair damaged surface of a substrate including metals and elastomeric substrate (corresponding to the claimed repair of metal worn areas), applicable to vertical or underside of horizontal surfaces (Co1. 1, lines 25-40 and Col. 9, line 39-Col. 10, line 25), wherein the coating kit system comprises a part A, as the main resin, which is a base composition comprising 70-85 wt.% of a polyurethane prepolymer having free isocyanate groups (Col. 4, lines 45-67, Col. 9, lines 39-45, and Col. 10, lines 20-25), which overlaps with the claimed up to 90% of a polyurethane prepolymer having free isocyanate groups, a part B comprising, among other things, hydroquinone di-(2-hydroxethyl)ether, which is used for curing (Col.5, lines 29-67), corresponding to the claimed component B, i.e., hardener, and a part C including a polyol and catalyst (corresponding to the claimed component C composed of zero amount of rubber oxide primer adhesive). Tran et al. also exemplify a curative used in part B of the composition of the kit system (Col. 11, lines 5-35).
However, Tran et al. do not mention the addition of a metal primer adhesive comprising a thermosetting biocomponent (DB) (component D) made up of two components including a first component (DB1) comprising up to 10% of an epoxy resin selected from epoxy amino resin and a second component (DB2) comprising up to 15% of functional resins that is a polyamine such as ethylenediamine, a pigment, and an additive, and an oxygenated and/or hydrocarbon cleaning solvent (component E) including an acetone as required by claims 1-2, 5-6, 11, 14, 23, and 26.
Nevertheless, ANDERSEN et al. disclose the use of metal primer adhesive including epoxy resin, such as epoxy amino resin, and polyamine crosslinkers, e.g., ethylenediamine (corresponding to the claimed thermoplastic biocomponent (DB) comprising an epoxy resin as the first component (DB1) and polyamine as the second component (DB2) in effective amounts to obtain desired viscosity and crosslinking properties for coating compositions suitable for producing surfacer coats and repairing existing finishes that become damaged (Paragraphs [0007], [0085], and [0143]). ANDERSEN et al. also disclose that primer adhesive also comprises a pigment and a filler (corresponding to the claimed additive) (Paragraph [0143]). In other words, the amounts of epoxy resin and polyamine crosslinkers used are known results-effective variables, i.e., affecting the final properties of the product.
Additionally, Ek teach employing a cleaning solvent, such as acetone (corresponding to the claimed oxygenated cleaning solvent), for cleaning metal substrates to be preconditioned for bonding purposes (Col. 5, lines 45-65).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed metal primer adhesive comprising a thermosetting biocomponent (DB) (component D) made up of two components including a first component (DB1) comprising an optimum or workable amount of an epoxy resin selected from epoxy amino resin and a second component (DB2) comprising an optimum or workable amount of the functional resins that is a polyamine such as ethylenediamine, a pigment, and an additive, and an oxygenated and/or hydrocarbon cleaning solvent (component E) including an acetone taught by ANDERSEN et al. and Ek in the coating kit system of Tran et al., with a reasonable expectation of successfully obtaining desired viscosity and crosslinking properties for coating compositions suitable for producing surfacer coats and repairing existing finishes that become damaged, and clean metal substrates to be preconditioned for bonding purposes.
9. Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Tran et al. (WO 2021/155440; utilized US 12,617,890 as its Equivalent) in view of ANDERSEN et al. (US 2019/0092946) and Ek (US 5,190,610) as applied to claims 1-2, 5-6, 11, 14, 20, 22-23 and 26 above, and further in view of Sarangapani (US 2009/0130161).
The disclosures with respect to Tran et al., ANDERSEN et al., and Ek in paragraph 8 are incorporated here by reference.
However, they do not specifically mention the addition of the thickener additive of component A (base composition) as required by claim 29.
Nevertheless, Sarangapani discloses the use of polymeric resin (base composition) prepared from mixtures of polyurethane prepolymer and thickener for the purposes of forming a coat and applying the same on a substrate to provide surfaces with desired chemical deactivating properties (Paragraphs [0003], [0182] and [0191]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the polymeric resin (base composition) prepared from mixtures of polyurethane prepolymer and thickener taught by Sarangapani in the coating kit system suggested by Tran et al., ANDERSEN et al. and Ek, with a reasonable expectation of successfully applying the same on a substrate to provide surfaces with desired chemical deactivating properties.
Correspondence
10. On this record, it is noted that there are no prior art rejections of present claims 3-4, 8-9, 15, 17-18, 24, 27, 30 and 33-34 at this time.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 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, Arrie Lanee Reuther, be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 See NPL for support (https://www.schem.net/wholesale-cab-cap-resin-cellulose-acetate-butyrate-propionate-uses-factory-price_p290.html).
2 Cited in the IDS submitted by applicants on 10/10/2024.
3 Cited in the IDS submitted by applicants on 10/10/2024.
Prosecution Insights