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 1-9 in the reply filed on 01/24/2028 is acknowledged.
Claim 10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/24/2026.
Specification
The disclosure is objected to because of the following informalities:
the header for Table 7, shown below, contain whole words that are not in the same line. The whole words in the table headers should be in the same line;
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276
802
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the texts within Table 8, shown below, contain whole words that are not in the same line. The whole words in the table should be in the same line;
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463
793
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550
459
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168
520
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429
772
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the texts for Table 9, shown below, contain whole words that are not in the same line. The whole words in the table should be in the same line; and
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511
770
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219
774
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the texts for Table 10, shown below, contain whole words that are not in the same line. The whole words in the table should be in the same line.
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611
694
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Appropriate correction is required.
The use of several trade names or marks in specification at [0066], [0078]-[0079], [0082]-[0085], [0115], [0118], [0120]-[0121], [0125], [0128], [0130]-[0131], [0135], [0138], [0140]-[0141], [0145], [0147]-[0148], [0152], [0154]-[0155], [0159], [0161]-[0162], used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore, the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Examiner encourages Applicant to check if all the trade names or marks follow the guidance outlined above.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-9 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 1 line 1 recites “A low-density anti-corrosion primer”, wherein “primer” is indefinite because the term is misdescriptive as evidenced by Vocabulary (see Vocabulary at page 1 paragraphs 1-2 evidencing a primer gets you ready for what comes next… you could use a primer when you are learning to read, or another kind when you are preparing to paint a room… any way you use the word primer, it’s a first step or preparation for something else… there’s a primer you use before painting).
Examiner suggest amending the claim to insert “composition” between “primer” and “with” so as to remove the ambiguity as set forth above.
Claim 1 line 2 recites “the epoxy primer”. There is insufficient antecedent basis for this limitation in the claim.
Examiner suggests amending the claim to either i) replace the limitation “the epoxy primer” with “the primer composition”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
Claims 2-9 recite “The epoxy primer”. There are insufficient antecedent basis for these limitations in the claims.
Examiner suggests amending the claims to either i) replace “The epoxy primer” with “The primer composition”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
Claim 3 line 3 reciting “epoxy resin to be modified” is indefinite because it is not clear if the “epoxy resin” is the same or different from the epoxy resin recited in claim 1 lines 5 and 10. Additionally, it is not clear what the limitation “to be modified” means or it is incoherent. Does this mean the “epoxy resin” is modified or not?
Specification is not very clear in giving guidance to the above mentioned limitation. Examiner is treating the epoxy resin in claim 3 as the epoxy resin in claim 1.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claim 4 lines 2 and 5 reciting “epoxy resin to be modified” are indefinite because it is not clear if the “epoxy resin” is the same or different from the epoxy resin recited in claim 1 lines 5 and 10 and claim 3 line 3. Additionally, it is not clear what the limitation “to be modified” means or it is incoherent. Does this mean the “epoxy resin” is modified or not?
Specification is not very clear in giving guidance to the above mentioned limitation. Examiner is treating the epoxy resin in claim 4 as the epoxy resin in claims 1 and 3.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Regarding claim 4 lines 4-5, the phrase "a preferred range of" 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).
Examiner is treating the claim requiring “a reaction temperature for mixed reaction is a range of 80 °C to 100 °C, a reaction time is a range of 1 to 5 hours” as claimed.
Examiner suggests amending the claim to either: i) remove the additional preferential limitation; ii) amend the claim so as to incorporate the narrower preferential “range of 80 °C to 90 °C” and “range of 2 to 3 hours” as desired; or iii) some other clarifying amendment so as to remove the ambiguity as set forth above.
The term “alkylammonium salt type” in claim 9 line 6 is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Examiner suggests amending the claims to either i) delete “type”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
The term “one type of phenolic amide” in claim 9 line 17 is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Examiner suggests amending the claims to either i) delete “type”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 116179081 A, with reference to the machine translation and Google translation) (“Wang” hereinafter) in view of Solli et al. (CN 18974182 A, with reference to US 2025/0223449 A1 as the translation) (“Solli” hereinafter).
Regarding claim 1, Wang teaches a low-density anti-corrosion primer (see 112 rejection, see Wang at [0012] teaching high-solids, low-viscosity general-purpose primer), which is taken to meet the claimed low-density anti-corrosion primer composition based on the structure as outlined below,
with strong adhesion to heavy flash rust surface (the primer as taught by Wang is expected to be capable of having a strong adhesion to heavy flash rust surface),
wherein the epoxy primer is made from raw materials comprising the following components: a component A and a component B (see Wang at [0012]-[0013] teaching high-solids, low-viscosity general-purpose primer is prepared from raw materials comprising the following components… component A and component B);
the component A comprises epoxy resin (see Wang at [0014] teaching component A includes epoxy resin),
glass microspheres (see Wang at [0040] teaching the filler is at least one of the following… glass microspheres),
thixotropic agent (see Wang at [0014] teaching… rheology additives, see Wang at [0040] teaching the rheology modifier is at least one of… organic bentonite). The rheology additives is taken to meet the claimed thixotropic agent based on specification at [0078] disclosing the thixotropic agent is at least one selected from the group consisting of… organic bentonite),
wetting dispersant (see Wang at [0014] teaching… wetting and dispersing agent),
pigment (see Wang at [0014] teaching… pigment),
barium sulfate (see Wang at [0040] teaching the filler is at least one of the following… barium sulfate),
talcum powder (see Wang at [0040] teaching the filler is at least one of the following… talc powder), which is taken to meet the claimed talcum powder,
solvent A (see Wang at [0014] teaching… solvent),
defoamer (see Wang at [0014] teaching… defoaming agent),
first silane coupling agent (see Wang at [0014] teaching… silane coupling agent), and
aluminum powder slurry (see Wang at [0014] teaching… aluminum slurry, see Wang at [0042] teaching the aluminum powder slurry);
in the component A, based on 100 parts by weight of the epoxy resin (see Wang at [0014]-[0015] teaching component A… based on 100 parts by weight of epoxy resin):
the epoxy resin 100 parts by weight (see Wang at [0015]-[0016] teaching… epoxy resin… 100 parts by weight);
the thixotropic agent 5-15 parts by weight (see Wang at [0015]-[0016] teaching… rheology additives… 5-15 parts by weight);
the wetting dispersant 0.5-5 parts by weight (see Wang at [0015]-[0016] teaching… wetting and dispensing agent… 1 to 10 parts by weight) (see MPEP 2144.05(I));
the solvent A 60-150 parts by weight (see Wang at [0015]-[0016] teaching… solvent… 90-150 parts by weight) (see MPEP 2144.05(I));
the defoamer 1-5 parts by weight (see Wang at [0015]-[0016] teaching… defoaming agent… 1 to 10 parts by weight) (see MPEP 2144.05(I));
the first silane coupling agent 1-10 parts by weight (see Wang at [0015]-[0016] teaching… silane coupling agent… 1 to 10 parts by weight);
the aluminum powder slurry 40-100 parts by weight (see Wang at [0015]-[0016] teaching… aluminum slurry… 20-60 parts by weight) (see MPEP 2144.05(I));
the component B comprises curing agent and accelerator (see Wang at [0017] teaching component B includes a curing agent and accelerator), and
in the component B, based on 100 parts by weight of the curing agent (see Wang at [0017]-[0018] teaching component B… based on 100 parts by weight of curing agent):
the curing agent 100 parts by weight (see Wang at [0019] teaching… curing agent… 100 parts by weight);
the accelerator 0.5-5 parts by weight (see Wang at [0019] teaching… accelerator… 0.5 to 10 parts by weight) (see MPEP 2144.05(I)).
Wang does not explicitly teach the ranges for glass microspheres is 150-300 parts by weight, for barium sulfate is 60-200 parts by weight, for talcum powder is 60-200 parts by weight, based on 100 parts by weight of the epoxy resin. However, as mentioned, Wang teaches the filler is at least one of the following… talc powder… barium sulfate… glass microspheres (see Wang at [0040]). Wang also teaches based on 100 parts by weight of epoxy resin… filler… 300-500 parts by weight (see Wang at [0015]-[0016]). One of ordinary skill in the art would appreciate that the fillers can be a combination of talc powder, barium sulfate, and glass microspheres. The sum of the claimed ranges for talcum powder, barium sulfate, and glass microspheres is 270-700 parts by weight, which overlaps with the 300-500 parts by weight filler as taught by Wang (see MPEP 2144.05(I)).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range as taught by Wang and arrive at claimed range because there is a reasonable expectation of success that the disclosed ranges would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
Furthermore, Wang does not explicitly teach that i) the glass microspheres is a double-layer coated and hollow, ii) the pigment is in the range of 1-10 parts by weight based on 100 parts by weight of the epoxy, and iii) component B further comprises solvent B and the solvent B is 10-50 parts by weight based on 100 parts by weight of the curing agent.
With respect to i), like Wang, Solli teaches a primer composition comprising component A comprising epoxy resin and component B comprising curing agent (see Solli at [0050]-[0052] teaching a kit suitable for the preparation of a primer coating composition… comprising… a component (A) comprising an epoxy resin; and a component (B) comprising a curing agent).
Solli further teaches the primer coating composition… comprises microspheres… these microspheres may be… coated… may be hollow (see Solli at [0201])… it is preferred if the inorganic, spherical microspheres are hollow… this means the particles have a void or cavity in their centres (see Solli at [0204])… the microspheres may therefore ensure that the primer layer composition has a low density and high volume solids… the use of microspheres, especially hollow microspheres, makes it possible to keep the binder content low whilst maintaining a high filler content (see Solli at [0206]). Solli also teaches the microspheres… more preferably consist of glass… this is because glass particles provide a good balance of crush strength, hardness and conductivity… optionally the microspheres… may be surface treated… some examples of surface treatment include treatment to alter the hydrophobicity of the surface, to improve compatibility with the binder and/or to facilitate chemical incorporation into the binder… preferably the particles are treated with vinyl silane (see Solli at [0208])… the microspheres can be provided as part of… component A (see Solli at [0216]). Hollow coated glass microspheres that are surface-treated with vinyl silane is taken to meet the claimed i) “the glass microspheres is a double-layer coated and hollow” because the coating and the surface treatment is broadly interpreted as double layered.
As such, one of ordinary skill in the art would appreciate that Solli teaches that hollow coated glass microspheres that are surface-treated with vinyl silane i) ensure that the primer layer composition has a low density and high volume solids, ii) makes it possible to keep the binder content low whilst maintaining a high filler content, iii) provide a good balance of crush strength, hardness and conductivity, and iv) surface treatment improve compatibility with the binder and/or to facilitate chemical incorporation into the binder, and seek those advantages by using hollow coated glass microspheres that are surface-treated with vinyl silane as the glass microspheres in the primer composition as taught by Wang.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use hollow coated glass microspheres that are surface-treated with vinyl silane as taught by Solli as the glass microspheres in the primer composition as taught by Wang because hollow coated glass microspheres that are surface-treated with vinyl silane i) ensure that the primer layer composition has a low density and high volume solids, ii) makes it possible to keep the binder content low whilst maintaining a high filler content, iii) provide a good balance of crush strength, hardness and conductivity, and iv) surface treatment improve compatibility with the binder and/or to facilitate chemical incorporation into the binder.
With respect to ii), as mentioned, Wang teaches pigments (see Wang at [0014])… the pigment is at least one of carbon black, iron oxide red, iron oxide yellow, titanium dioxide, and phthalocyanine blue (see Wang at [0041]). However, Wang also teaches that based on 100 parts by weight of epoxy resin… pigment… 20-60 parts by weight (see Wang at [0015]-[0016]).
Solli also teaches the coating composition optionally comprises fillers, colour pigments and anticorrosive pigments (see Solli at [0234])… representative examples of pigments include… red iron oxide, yellow iron oxide, titanium dioxide… carbon black (see Solli at [0240]). Solli further teaches the amount of the at least one… pigment, is preferably in the range 0.05 to 50 wt%... based on the total weight of the coating composition (see Solli at [0246]).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang and Solli and arrive at claimed ii) “the pigment is in the range of 1-10 parts by weight based on 100 parts by weight of the epoxy” because there is a reasonable expectation of success that the disclosed amounts would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
With respect to iii), Solli further teaches the primer coating composition… comprises at least one glycol ether solvent… the use of a glycol ether solvent has been found to enable long pot lives and is also essential to allowing application of the primer layer composition to a wet or rusted substrate… it also acts as a wetting agent for the extenders in the formulation… this solvent ensures therefore that the primer layer composition… adheres to the substrate below even when the substrate is wet or rusted on application of the composition… the glycol ether can be provided as part of component A and/or part of component B (see Solli at [0180]-[0181]). The total amount of solvent in the primer coating composition is from 2.0 to 15 wt%... on the total weight of the coating composition (see Solli at [0200]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that a solvent in both components A and B in the primer composition is suitable for its intended purpose.
Furthermore, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang and Solli and arrive at claimed iii) “component B further comprises solvent B and the solvent B is 10-50 parts by weight based on 100 parts by weight of the curing agent” because there is a reasonable expectation of success that the disclosed amounts would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
Regarding claim 2, Wang in view of Solli teach the limitations as applied to claim 1 above, and Wang in view of Solli further teach wherein in the component A, based on 100 parts by weight of the epoxy resin (see Wang at [0014]-[0015] teaching component A… based on 100 parts by weight of epoxy resin):
the epoxy resin 100 parts by weight (see Wang at [0015]-[0016] teaching… epoxy resin… 100 parts by weight);
the thixotropic agent 5-13 parts by weight (see Wang at [0015]-[0016] teaching… rheology additives… 5-15 parts by weight) (see MPEP 2144.05(I));
the wetting dispersant 1.8-3 parts by weight (see Wang at [0015]-[0016] teaching… wetting and dispensing agent… 1 to 10 parts by weight) (see MPEP 2144.05(I));
the solvent A 100-150 parts by weight (see Wang at [0015]-[0016] teaching… solvent… 90-150 parts by weight) (see MPEP 2144.05(I));
the defoamer 2-4 parts by weight (see Wang at [0015]-[0016] teaching… defoaming agent… 1 to 10 parts by weight) (see MPEP 2144.05(I));
the first silane coupling agent 3-6 parts by weight (see Wang at [0015]-[0016] teaching… silane coupling agent… 1 to 10 parts by weight) (see MPEP 2144.05(I));
the aluminum powder slurry 40-80 parts by weight (see Wang at [0015]-[0016] teaching… aluminum slurry… 20-60 parts by weight) (see MPEP 2144.05(I));
in the component B, based on 100 parts by weight of the curing agent (see Wang at [0017]-[0018] teaching component B… based on 100 parts by weight of curing agent):
the curing agent 100 parts by weight (see Wang at [0019] teaching… curing agent… 100 parts by weight);
the accelerator 0.5-2 parts by weight (see Wang at [0019] teaching… accelerator… 0.5 to 10 parts by weight) (see MPEP 2144.05(I));
the weight ratio of the component A to the component B is 100:(10-50) (see Wang at [0021] teaching the mass ratio of component A to component B is 1:0.1-0.5 (or (100:(10-50)) (see MPEP 2144.05(I)).
Wang does not explicitly teach the ranges for glass microspheres is 150-250 parts by weight, for barium sulfate is 90-120 parts by weight, for talcum powder is 120-150 parts by weight, based on 100 parts by weight of the epoxy resin. However, as mentioned, Wang teaches the filler is at least one of the following… talc powder… barium sulfate… glass microspheres (see Wang at [0040]). Wang also teaches based on 100 parts by weight of epoxy resin… filler… 300-500 parts by weight (see Wang at [0015]-[0016]). One of ordinary skill in the art would appreciate that the fillers can be a combination of talc powder, barium sulfate, and glass microspheres. The sum of the claimed ranges for talcum powder, barium sulfate, and glass microspheres is 360-520 parts by weight, which overlaps with the 300-500 parts by weight filler as taught by Wang (see MPEP 2144.05(I)).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang because there is a reasonable expectation of success that the disclosed ranges would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
Wang does not explicitly teach that i) the pigment is in the range of 3-10 parts by weight based on 100 parts by weight of the epoxy, and ii) component B further comprises solvent B and the solvent B is 10-30 parts by weight based on 100 parts by weight of the curing agent.
With respect to i), as mentioned, Wang teaches pigments (see Wang at [0014])… the pigment is at least one of carbon black, iron oxide red, iron oxide yellow, titanium dioxide, and phthalocyanine blue (see Wang at [0041]). However, Wang also teaches that based on 100 parts by weight of epoxy resin… pigment… 20-60 parts by weight (see Wang at [0015]-[0016]).
Solli also teaches the coating composition optionally comprises fillers, colour pigments and anticorrosive pigments (see Solli at [0234])… representative examples of pigments include… red iron oxide, yellow iron oxide, titanium dioxide… carbon black (see Solli at [0240]). Solli further teaches the amount of the at least one… pigment, is preferably in the range 0.05 to 50 wt%... based on the total weight of the coating composition (see Solli at [0246]).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang and Solli and arrive at claimed i) “the pigment is in the range of 3-10 parts by weight based on 100 parts by weight of the epoxy” because there is a reasonable expectation of success that the disclosed amounts would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
With respect to ii), Solli further teaches the primer coating composition… comprises at least one glycol ether solvent… the use of a glycol ether solvent has been found to enable long pot lives and is also essential to allowing application of the primer layer composition to a wet or rusted substrate… it also acts as a wetting agent for the extenders in the formulation… this solvent ensures therefore that the primer layer composition… adheres to the substrate below even when the substrate is wet or rusted on application of the composition… the glycol ether can be provided as part of component A and/or part of component B (see Solli at [0180]-[0181])… the total amount of solvent in the primer coating composition is from 2.0 to 15 wt%... on the total weight of the coating composition (see Solli at [0200]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that a solvent in both components A and B in the primer composition is suitable for its intended purpose.
Furthermore, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang and Solli and arrive at claimed ii) “component B further comprises solvent B and the solvent B is 10-30 parts by weight based on 100 parts by weight of the curing agent” because there is a reasonable expectation of success that the disclosed amounts would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
Regarding claims 3-4, Wang in view of Solli teach the limitations as applied to claim 1 above, and Wang in view of Solli further teach double-layer coated hollow glass microspheres (see claim 3) (see Solli at [0201], [0204], [0206], [0208], [0216] teaching hollow coated glass microspheres that are surface-treated with vinyl silane and claim 1 rejection for details),
prepared by mixing and reacting raw materials including epoxy resin to be modified, rust capturing filler, isocyanate prepolymer, catalyst, and reaction solvent in a protective gas atmosphere (claim 3), and wherein: a weight ratio of the epoxy resin to be modified, the rust capturing filler, and the isocyanate prepolymer is (5-15):(1-5):1; a dosage of the catalyst is 0.01wt% to 5wt% of isocyanate prepolymer; a dosage of the reaction solvent used is 20-40wt% of the epoxy resin to be modified; a reaction temperature for mixed reaction is a range of 80 °C to 100 °C, a reaction time is a range of 1 to 5 hours (claim 4) (see 112 rejection, these recitations are being treated as product-by-process limitations because they are not seen to differ structurally from the applied prior art Wang in view of Solli (see MPEP 2113.I). In this instance, the structure imparted by the recitations is double-layer coated hollow glass microspheres (see claim 1 rejection). Additionally, specification is not very clear in giving guidance to the above mentioned limitations).
Regarding claims 5-6 and 8, Wang in view of Solli teach the limitations as applied to claims 1 and 3 above, and Wang in view of Solli further teach wherein: the rust capturing filler is prepared by immersing hollow glass microspheres in a solution containing tannic acid, a second silane coupling agent, and a soaking solvent, followed by low-temperature freeze-drying; the isocyanate prepolymer is prepared by vacuum dehydration of dimer acid polyester polyol, followed by cooling, and then performing pre-polymerization reaction with isocyanate in a protective gas atmosphere; the epoxy resin to be modified is at least one type of bisphenol A epoxy resins, wherein an epoxy equivalent of the epoxy resin to be modified is 150-1000; the catalyst is at least one selected from the group consisting of sulfuric acid, perchloric acid, sodium methoxide, lithium methoxide, potassium eicosyl sulfonate, alkali metal hydroxide, triarylphosphine, triphenylphosphine, stannous octoate, dibutyltin dilaurate, and iron bromide; the reaction solvent is a mixture of xylene and at least one of butyl acetate, propylene glycol methyl ether acetate, and dipropylene glycol dimethyl ether, wherein the weight ratio of the mixture of the xylene and at least one of the butyl acetate, the propylene glycol methyl ether acetate, and the dipropylene glycol dimethyl ether is (1.5-1):1 (claim 5), wherein: a weight ratio of the tannic acid, the second silane coupling agent, and the hollow glass microspheres is (0.1-0.5):(0.1-0.5):1; a weight ratio of the soaking solvent, the tannic acid, the second silane coupling agent, and the hollow glass microspheres is (0.4-2):(0.1-0.5):(0.1-0.5):1; a weight ratio of isocyanate to dimer acid polyester polyol is 1:(0.5-10) (claim 6), and wherein: the soaking temperature is 10-50 °C, and the soaking time is 1-4 hours; the temperature of the low-temperature freeze-drying is -30 °C to -90 °C, and the time of the low-temperature freeze-drying is 1-5 hours; the temperature of the vacuum dehydration is 110-150 °C, the vacuum degree is -0.08Pa to -0.10Pa, and the time of the vacuum dehydration is 0.5h-2h; the temperature after cooling is below 60 °C; the reaction temperature of the pre-polymerization reaction is between 80 °C and 100 °C, and the reaction time of the pre-polymerization reaction is between 1 and 4 hours (claim 8) (these recitations are being treated as product-by-process limitations because they are not seen to differ structurally from the applied prior art Wang in view of Solli (see MPEP 2113.I). In this instance, the structure imparted by the recitations is double-layer coated hollow glass microspheres (see claim 1 rejection). Additionally, specification is not very clear in giving guidance to the above mentioned limitations).
Regarding claim 7, Wang in view of Solli teach the limitations as applied to claims 1, 3 and 5 above, and Wang in view of Solli further teach wherein: a standard median particle size of the hollow glass microspheres is 18-60 µm (see Solli at [0212] teaching the microspheres have a D50 diameter of 10 to 80 µm) (see MPEP 2144.05(I)),
the second silane coupling agent is at least one selected from the group consisting of vinyltrimethoxysilane, γ-glycidoxypropyltrimethoxysilane, and γ-aminopropyltriethoxysilane; the soaking solvent is a mixture of water and ethanol, with a weight ratio of (0.5-2):1; the isocyanate is at least one selected from the group consisting of 2,6-toluene diisocyanate, 4,4'- diphenylmethane diisocyanate, carbodiimide-uretonimine modified 4,4'-diphenylmethane diisocyanate, 2,4'-diphenylmethane diisocyanate, and polymethylene polyphenyl polyisocyanate; the molecular weight of the dimer acid polyester polyol is between 1000 and 10000 (these recitations are being treated as product-by-process limitations because they are not seen to differ structurally from the applied prior art Wang in view of Solli (see MPEP 2113.I). In this instance, the structure imparted by the recitations is double-layer coated hollow glass microspheres (see claim 1 rejection). Additionally, specification is not very clear in giving guidance to the above mentioned limitations).
Regarding claim 9, Wang in view of Solli teach the limitations as applied to claim 1 above, and Wang further teaches wherein the epoxy resin is at least one type of liquid bisphenol A epoxy resin (see Wang at [0038] teaching the epoxy resin is at least one of liquid bisphenol A type epoxy resin);
the thixotropic agent is at least one selected from the group consisting of… organic bentonite (see Wang at [0044] teaching the rheology modifier is at least one of… organic bentonite);
the wetting dispersant is at least one selected from the group consisting of… polyacrylate solution (see Wang at [0046] teaching the wetting and dispersing agent is at least one of the following… polyacrylate solution);
the pigment is at least one selected from the group consisting of… carbon black (see Wang at [0041] teaching the pigment is at least one of… carbon black);
the solvent A is a mixture of n-butanol and xylene (see Wang at [0048] teaching the solvent is at least one of xylene, n-butanol);
the first silane coupling agent is at least one selected from the group consisting of… vinyltrimethoxysilane (see Wang at [0045] teaching the silane coupling agent is at least one selected from… vinyltrimethoxysilane);
the aluminum powder slurry is a non floating aluminum powder slurry (see Wang at [0042] teaching the aluminum powder slurry is a non-floating type aluminum powder slurry);
the accelerator is an epoxy curing accelerator at least one selected from the group consisting of… triethylenediamine (see Wang at [0051] teaching the accelerator is at least one of the following… epoxy curing reaction accelerator triethylenediamine).
Wang does not explicitly teach i) the curing agent is at least one type of phenolic amide (see 112 rejection), ii) the weight ratio of n-butanol to xylene is (0.1-1):1 in solvent A; and iii) the solvent B is a mixture of n-butanol and xylene, and the weight ratio on n-butanol to xylene is (0.3-1.5):1.
With respect to i), Wang further teaches the curing agent is at least one of modified phenolic amine (see Wang at [0050]). Wang also teaches patent CN103013276 discloses a general-purpose epoxy primer… comprising two components, A and B… component A includes… liquid bisphenol A epoxy resin… component B includes polyamide curing agent and epoxy curing accelerator (see Wang a [0005]). In summary, Wang teaches that for an epoxy primer composition comprising component A comprising liquid bisphenol A epoxy resin, a curing agent may be phenolic amine or polyamide which appears to be equivalent to the claimed “i) the curing agent is at least one of phenolic amide” (see MPEP 2144.06 stating art recognized equivalence for the same purpose).
With respect to ii) and iii), as mentioned, Solli teaches the primer coating composition… comprises at least one glycol ether solvent… the use of a glycol ether solvent has been found to enable long pot lives and is also essential to allowing application of the primer layer composition to a wet or rusted substrate… it also acts as a wetting agent for the extenders in the formulation… this solvent ensures therefore that the primer layer composition… adheres to the substrate below even when the substrate is wet or rusted on application of the composition… the glycol ether can be provided as part of component A and/or part of component B (see Solli at [0180]-[0181])… the total amount of solvent in the primer coating composition is from 2.0 to 15 wt%... on the total weight of the coating composition (see Solli at [0200]). Solli further teaches other solvents may also be present… other suitable solvents include… xylene… n-butanol (see Solli at [0197]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that a solvent in both components A and B in the primer composition is suitable for its intended purpose.
Furthermore, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Wang and Solli and arrive at claimed ii) “the weight ratio of n-butanol to xylene is (0.1-1):1 in solvent A”; and iii) “the solvent B is a mixture of n-butanol and xylene, and the weight ratio on n-butanol to xylene is (0.3-1.5):1” because there is a reasonable expectation of success that the disclosed amounts would be suitable, it is not inventive to discover the optimum or workable ranges by routine experimentation, and the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731