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 .
Response to Amendment
In response to the amendment received on 07/08/2026:
claims 1-2 and 4-10 are currently pending;
claim 10 is withdrawn;
the objections to the specifications are maintained for at least the reasons as set forth herein;
the 112(b) rejections to claims 1-2 and 4-9 are withdrawn in light of the amendments to the claims. However, new 112(b) rejections are outlined below; and
all prior art grounds of rejection are withdrawn in light of the amendments that incorporated the transitional phrase “consisting of” in independent claim 1 lines 3, 5 and 8.
Specification
The disclosure is objected to because of the following informalities:
Table 7, shown with Examiner’s annotation below, contains whole words that are not in the same line. The whole words in the table should be in the same line. Additionally, a line for the column is not aligned. Appropriate corrections are required.
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Similarly, Tables 8-10 still contain whole words that are not in the same line. Appropriate corrections are 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 1-2 and 4-9 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 9 reciting “the epoxy resin” is indefinite because there are two epoxy resins contained in component A, which are “a first epoxy resin” in lines 5 and 10, and “a second epoxy resin” in line 26.
Examiner is treating “the epoxy resin” as “the first epoxy resin”.
Examiner suggests clarifying 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 1 line 26 reciting “a second epoxy resin for modification” is indefinite because it is not clear what is “for modification”, or what is “being modified”?
Specification is not very clear in giving guidance to the above mentioned limitation.
Examiner is treating “a second epoxy resin for modification” as “a second epoxy resin”.
Examiner suggests clarifying 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).
Claims 2 and 4-9 are rejected due to their dependency on claim 1.
Allowable Subject Matter
Claims 1-2 and 4-9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: there are no prior art references of record that teach or fairly suggest to one or ordinary skill in the art the cumulative limitations of the independent claim 1.
Specifically, it is noted that 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) teach most of the limitations of independent claim 1 as outlined in the previous office action dated 04/08/2026.
However, Applicant amended independent claim 1 incorporating the transitional phrase “consisting of” in lines 3, 5 and 8 (see MPEP 2111.03.II), which overcame the prior art references Wang in view of Solli because Wang further teaches that component A includes… reactive diluent… polyol modified epoxy resin (see Wang at [0014]-[0015])… the active diluent is at least one of monofunctional, difunctional, and trifunctional groups, preferably at least one of triethylene glycol diglycidyl ether, 1,4-butanediol diglycidyl ether, glycerol diglycidyl ether, trimethylolpropane diglycidyl ether, and plant polyene phenolic diglycidyl ether (see Wang at [0039])… the polyol-modified epoxy resin is prepared by mixing the epoxy resin to be modified, the polyether polyol, and the catalyst, and reacting them under nitrogen protection (see Wang at [0034])… adding polyol-modified epoxy resin increases the proportion of hydroxyl groups in the entire system, increases the flexibility of the paint film, and significantly improves the adhesion of the epoxy primer to the steel substrate and its impact resistance (see Wang at [0136]). And, there are no prior art references of record that provide adequate teachings or apparent reason that would lead the person of ordinary skill to modify Wang to exclude the reactive diluent and polyol modified epoxy resin, and/or a modification to exclude the polyol modified epoxy resin would render Wang inoperable.
As such, the prior art references of record fail to teach or render obvious the cumulative limitations of the independent claim 1 as claimed. Therefore, the cumulative limitations of the independent claim 1 is considered allowable.
Response to Arguments
Applicant’s amendments that incorporated the transitional phrase “consisting of” in independent claim 1 lines 3, 5 and 8, filed 07/08/2026, have obviated the previously applied grounds of rejection and so the accompanying arguments are considered moot.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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