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 Objections
Claims 33 & 34 are objected to by the examiner. Claim 33 depends upon claim 34 and claim 34 depends upon itself (Claims, p. 9, lines 1-6). As they stand now, the claims are improper. In the interest of compact prosecution, the examiner is interpreting and examining claims 33 & 34 as being dependent upon claim 24, aligning with the claim dependency of claim 32.
Corrective action is required.
Response to Arguments
In response to the Restriction Requirement (dated 16 March 2026), the Applicant submits the following:
-- Applicant elects Group I, encompassing claims 21-34.
-- Applicant’s election is made with traverse.
The arguments provided by the Applicant have been fully reviewed and thoroughly considered but are ultimately found unpersuasive in view of the amended claims.
The restriction requirement set forth in the Office Action (dated 16 March 2026) is appropriate. The only technical feature common to each of the inventive Groups I – V is an epoxy-functional polysiloxane and a catalyst. There are no other compositional elements required to meet the coating composition of Group I; the kits of Groups II and III; or the use of Group IV. Group V additionally requires a substrate. However, this feature is not common to any of Groups I-IV. Therefore, the restriction requirement correctly identified the technical feature common to each of Groups I-V and established that it does not make a contribution over the prior art.
The restriction requirement is maintained.
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 33 & 34 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Regarding claims 33 & 34, claim 34 depends upon itself and therefore the full metes and bounds of the claim cannot be determined. Claim 33 is dependent upon claim 34, inheriting the indefiniteness of claim 34, and is therefore similarly rejected.
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.
Claims 21-25, 28-30 & 32-34, are rejected under 35 U.S.C. § 103 as being unpatentable over Simonsen et al. (US 12,344,766 B2).
Regarding claims 21, 22, 23 & 30, Simonsen teaches an intumescent coating system (Abstract). The coating system comprises an epoxy-based binder (col. 2, lines 24-30). The invention may further comprise a polysiloxane-based binder (col. 21, lines 43-51) with a preferred embodiment thereof disclosed as formula (D1), shown below (col. 22, lines 53-65):
PNG
media_image1.png
71
219
media_image1.png
Greyscale
The polysiloxane of formula (D1) is further defined, wherein; R1 may be a C1-C6 epoxy containing group (col. 22, line 67 – col. 23, line 1). This reads on the claimed R2 group. R2 may be C1-C10 alkyl, C6-C10 aryl, C7-C10 alkyl aryl or a C1-C6 substituted alkyl (col. 23, lines 3-5). This reads on the claimed R1 group. Therefore, the terminal structure in Simonsen’s formula corresponds to Si(R1)2R2. This reads on the claimed R3 group.
Simonsen’s R2, R3, and R4 groups each overlap in scope with the claimed R1 group. The variable ‘x’ in Simonsen’s formula is an integer of at least 2 and ‘y’ is 0 or an integer of at least 1 (col. 23, lines 15-16). The sum of Simonsen’s x and y is equivalent to the claimed variable n (i.e. n=2 or more). Simonsen’s formula does not include structural units corresponding to the claimed variables m or p (i.e. m=0, p=0). The polysiloxane binder may have a Mw of 200 to 50,000 (col. 23, lines 35-40). Thus, Simonsen’s polysiloxane binder reads on the claimed formula.
The polysiloxane-based binder preferably has either a terminal &/or pendant curing-reactive functional group, such as amine or epoxy groups, and comprises a minimum of at least 2 functional groups (col. 21, lines 52-60).
Simonsen expressly states at least one polysiloxane-based binder preferably comprises a single type of curing-reactive functional group (col. 22, lines 5-7), and that the coating composition may comprise a mixture of different polysiloxane-based binders (col. 22, lines 38-40). Simonsen also makes express disclosure the polysiloxane-based binder may comprise curing-reactive groups specifically for amine/epoxy curing (col. 22, lines 8-12).
The organic resin required in Simonsen’s composition is the epoxy-based binder which is preferably present in amounts of 5.0-40 wt.% (col. 10, lines 35-37), reading on the claimed range of less than 50%. Simonsen further teaches the epoxy-based binder system may further comprise an accelerator/catalyst (col. 17, lines 7-9) with suitable examples thereof provided as tertiary amines, with 2,4,6-tris(dimethylaminomethyl)phenol disclosed as the preferred tertiary amine (col. 17, lines 13-17), reading on limitations as required by claim 30.
It would have been obvious to one of ordinary skill in the art at the time of filing to create the invention of the instant application as Simonsen provides all the necessary information to do so. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
In view of the above disclosures, Simonsen teaches an intumescent coating composition reading on limitations established by the independent base claim 21 and dependent claims 22, 23, 29 & 30.
Regarding claims 24 & 32 – 34, Simonsen teaches the use of an acid-generating compound in tandem with a carbon donor compound (col. 6, lines 34-40) to provide increased protection in the event that the intumescent coating is exposed to fire or excessive heat. Simonsen further teaches the use of an expansion agent in tandem with the aforementioned acid-generating compound and carbon donor compound and expressly states it is preferred that the intumescent coating composition of the invention comprises an acid-generating agent, an expansion agent and optionally a carbon donor compound (col. 6, lines 53-60).
As Simonsen teaches the use of all three compounds in tandem, it would have been obvious to one of ordinary skill in the art at the time of filing to include all three aforementioned compounds in a single ‘package’ as Simonsen expressly discloses the benefit thereof when used in intumescent compositions. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 25, Simonsen discloses the coating compositions preferably comprise 10-95 wt.% of the polysiloxane-based binder (col. 23, lines 41-42).
Regarding claim 28, Simonsen expressly states the binder epoxy-based binder system also comprises a curing agent which may be an amino-functional polysiloxane (col. 11, lines 17-34). Simonsen further discloses the polysiloxane-based binder may comprise curing-reactive groups specifically for amine/epoxy curing (col. 22, lines 8-12).
Recall the description of formula (D1), shown below (col. 22, lines 53-65):
PNG
media_image1.png
71
219
media_image1.png
Greyscale
In addition to the definitions of R1-R4 previously detailed, the polysiloxane of formula (D1) is further defined, wherein; R1 may be a C1-C6 amine containing group. (col. 22, line 67 – col. 23, line 1). This reads on the claimed R5 group. R2 may be C1-C10 alkyl, C6-C10 aryl, C7-C10 alkyl aryl or a C1-C6 substituted alkyl (col. 23, lines 3-5). This reads on the claimed R4 group. Therefore, the terminal structure in Simonsen’s formula corresponds to Si(R4)2R5. This reads on the claimed R6 group.
Simonsen’s R2, R3, and R4 groups each overlap in scope with the claimed R4 group. The variable ‘x’ in Simonsen’s formula is an integer of at least 2 and ‘y’ is 0 or an integer of at least 1 (col. 23, lines 15-16). The sum of Simonsen’s x and y is equivalent to the claimed variable n (i.e. q=2 or more). Simonsen’s formula does not include structural units corresponding to the claimed variables m or p (i.e. r=0, s=0). The polysiloxane binder may have a Mw of 200 to 50,000 (col. 23, lines 35-40). Thus, Simonsen’s polysiloxane binder reads on the claimed formula. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 26 is rejected under 35 U.S.C. § 103 as being unpatentable over Simonsen et al. (US 12,344,766 B2) in view Mowrer (US 8,809,468 B2).
Regarding claim 26, Simonsen is silent on the stoichiometry as required by the claim.
In the same field of endeavor, Mowrer teaches epoxy-polysiloxane based coatings comprising a polysiloxane, an epoxide resin and a curing system which may be an amino-functional polysiloxane resin (Abstract). Mowrer expressly states the coating compositions achieved improved flexibility, weatherability and corrosion resistance over the prior art (col. 21, lines 19-25). Mowrer teaches formulations of the coating compositions wherein the stoichiometric ratio of amine equivalents to epoxy equivalents range from 0.96:1.00 – 1.03:1.00 (col. 20, lines 56-59).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the stoichiometric ratio of amine equivalents to epoxy equivalents taught by Mowrer, as a guide for the same stoichiometric ratio in Simonsen, as Mowrer demonstrates this to be a suitable range for similar coating compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 27 & 31 are rejected under 35 U.S.C. § 103 as being unpatentable over Simonsen et al. (US 12,344,766 B2) in view Wade (US 2011/0311830 A1).
Regarding claim 27, although epoxy functional groups are disclosed, Simonsen is silent on the epoxy functional groups as required by the claim.
In the same field of endeavor, Wade teaches intumescent coating compositions comprising a polysiloxane comprising at least one functional group such as an epoxy or amine (Abstract). Wade teaches polysiloxanes with terminal and pendant epoxy groups, shown below: (p. 2, [0030])
PNG
media_image2.png
201
622
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill in the art at the time of filing to employ either the terminal or pendant (or both) epoxy functional groups as the epoxy functional groups taught by Simonsen, as Wade expressly states the intumescent coating composition provides good aesthetic and protective properties to the intumescent coating, aligning with objectives of Simonsen. The functional groups taught by Wade thus read on the first, second, sixth, and seventh formulas, as required by claim 27. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 31, maintaining the modification of Simonsen in view of Wade previously detailed, Simonsen teaches the use of tin-based catalysts such as dibutyltin dilaurate (col. 24, lines 25-26) but fails to teach a suitable amount of catalyst. Wade also teaches the use of dibutyltin dilaurate as a catalyst in amounts of 0.05-3 wt.% (p. 6, [0077]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the amount of catalyst taught by Wade as a guide when employing the same type of catalyst in Simonsen, as Wade demonstrates this to be a suitable range for intumescent compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights