DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 7-12, 15-18, and 22 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.
With respect to claims 7-12, 15-18, and 22, each claim recites “The composition according to claim 1” in line 1. However, claim 1 has been cancelled. Therefore, it is unclear which claim these claims are meant to depend from. For the purposes of examination, claims 7-12, 15-18, and 22 have been interpreted as if they depend from claim 5, which contains all the limitations of claim 1 before its cancellation.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 3, 5-8, 10-12, 15-18, 20, and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Killilea et al. (WO 2007/089913 A1, “Killilea”) in view of Milic (US 7,034,072 B2) and Larson et al. (US 6,153,690, “Larson”).
With respect to claims 5-6, 11-12, and 18, Killilea discloses a coated article, comprising a cement fiberboard substrate and a coating system applied to the substrate. The coating system comprises: (i) at least one acid-functional alkali-soluble polymer, (ii) at least one water-soluble silicate salt, and (iii) water (Abstract). The coating system contains about 10-35 wt% of the one or more water-soluble silicate salts (salt of silicic acid) ([0043]), corresponding to the presently claimed water-soluble salt of an acid. The water is present in an amount of about 50-85 wt% ([0044]), and thus the coating system is an aqueous coating system. The acid-functional alkali-soluble polymer is a water-dispersible polymer and includes polyurethanes ([0030]). The coating may contain additional ingredients including latex polymers and water-dispersible polymers that are not alkali-soluble ([0033]). The latex polymer is an acrylate polymer containing OH groups and acetoacetoxy groups ([0034]) and is made by emulsion polymerization ([0035]) (i.e., is an emulsion polymer). The coating composition may contain 20-95 wt% of a multistage latex polymer ([0040]), which may be up to 95 wt% soft stage polymer (non-alkali soluble) ([0038-0039]). The latex polymer corresponds to the presently claimed isocyanate-reactive compound that comprises an isocyanate-reactive emulsion polymer. The coating is applied to cement fiberboard substrates (Abstract, [0004]). As can be seen in Fig. 1 below, the coating system layer(s) 20 of Killilea lie atop (i.e., are applied to) surface 14 of the substrate 12 directly (i.e., the cementitious substrate has at least one uncoated outer surface at least a portion of which is coated with the claimed coating composition) ([0023]).
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Killilea does not disclose a water-dispersible polyisocyanate, nor wherein the water-dispersed polyisocyanate is isocyanate functional and the water-soluble inorganic or the water-soluble monomeric or the oligomeric organic acid or the water-soluble salt contain on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate, nor wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Milic teaches an aqueous coating composition comprising an aqueous dispersion of polyurethane and having about 5-40 wt% of a water-dispersible polyisocyanate that is unblocked and acts as crosslinking agents (Col. 1, lines 49-52; Col. 3, lines 26-27 and 61-63); the phrase “about 5-40 wt%” includes values slightly above and below 5 wt% and slightly above and below 40 wt%. The coating is used in industrial fields (Col. 1, lines 13-14) and provides robust, stable, workable, and repairable coatings (Col. 2, lines 12-13). The polymers are made by emulsion polymerization (Col. 2, lines 42-43). The water-dispersible polyisocyanate is inherently isocyanate functional because it is a polyisocyanate.
Killilea and Milic are analogous inventions in the field of aqueous coatings for substrates in the industrial field.
It would have been obvious to one of ordinary skill in the art before the invention was made to use about 5-40 wt% of a water-dispersible polyisocyanate (which is inherently isocyanate functional) taught by Milic in the coating of Killilea in order to provide a coating that is robust, stable, workable, and repairable (Milic, Col. 2, lines 12-13).
Killilea in view of Milic does not disclose wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Larson teaches a waterborne polymer made from an isocyanate and isocyanate-reactive acrylic polymer (Abstract; Col. 3, lines 15-20). The isocyanate-reactive acrylic polymer is an emulsion polymer (Col. 3, lines 25-28, 51-61). Larson further teaches a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups is from 0.5 to 5; when the stoichiometric ratio is above 5, adverse effects on water sensitivity, shelf stability, impact resistance, and solvent resistance are seen; when the stoichiometric ratio is below 0.5, no enhancement in water sensitivity, shelf stability, impact resistance, and solvent resistance is seen (Col. 6, lines 30-52). The ratio taught by Larson overlaps with that presently claimed. When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Killilea in view of Milic and Larson are analogous inventions in the field of isocyanates reacted with acrylic emulsified polymers.
It would have been obvious to one of ordinary skill in the art before the invention was made to modify the coating of Killilea in view of Milic to have a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups of 0.5 to 5 as taught by Larson in order to provide a coating having good water sensitivity, shelf stability, impact resistance, and solvent resistance (Larson, Col. 6, lines 30-52). When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Regarding the water-dispersed polyisocyanate and water-soluble salt containing on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate and about 5 to about 20 wt% of the water-soluble salt, Killilea discloses the amount of silicate salt is 10-35 wt% ([0043]) and Milic teaches the use of about 5-40 wt% water-dispersed polyisocyanate. The phrase “about 5-40 wt%” includes values slightly above and below 5 wt% and slightly above and below 40 wt%. Thus, on a solids basis there is about 12.5% (5*100/[5+35] = 12.5%) to about 80% (40*100/[10+40] = 80%) water-dispersed polyisocyanate. Similarly, there is about 20% (10*100/[10+40] = 20%) to about 87.5% (35*100/[5+35] = 87.5%) silicate salt, which overlaps the claimed range of about 20% water-soluble salt.
The phrase “about 80%” includes values slightly above and below 80% while the presently claimed amount of “about 85 wt%” includes values slightly above and below 85 wt%, such that the amount disclosed by Killilea in view of Milic and Larson reads on the presently claimed amount of water-dispersed polyisocyanate.
Alternatively, Killilea in view of Milic and Larson teaches the use of about 80% water-dispersed polyisocyanate (which is inherently isocyanate functional), while the present claims require about 85% water-dispersed polyisocyanate.
It is apparent, however, that the instantly claimed amount of water-dispersed polyisocyanate and that taught by Killilea in view of Milic and Larson 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 amount of water-dispersed polyisocyanate taught by Killilea in view of Milic and Larson and the amount disclosed in the present claims, and further given the fact that no criticality is disclosed in the present invention with respect to the amount of water-dispersed polyisocyanate, it therefore would have been obvious to one of ordinary skill in the art that the amount of water-dispersed polyisocyanate disclosed in the present claims is but an obvious variant of the amounts disclosed in Killilea in view of Milic and Larson, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
With respect to claims 3 and 20, Killilea discloses a coated article, comprising a cement fiberboard substrate and a coating system applied to the substrate. The coating system comprises: (i) at least one acid-functional alkali-soluble polymer, (ii) at least one water-soluble silicate salt, and (iii) water (Abstract). The coating system contains about 10-35 wt% of the one or more water-soluble silicate salts (salt of silicic acid) ([0043]), corresponding to the presently claimed water-soluble salt of an acid. The water is present in an amount of about 50-85 wt% ([0044]), and thus the coating system is an aqueous coating system. The acid-functional alkali-soluble polymer is a water-dispersible polymer and includes polyurethanes ([0030]). The coating may contain additional ingredients including latex polymers and water-dispersible polymers that are not alkali-soluble ([0033]). The latex polymer is an acrylate polymer containing OH groups and acetoacetoxy groups ([0034]) and is made by emulsion polymerization ([0035]) (i.e., is an emulsion polymer). The coating composition may contain 20-95 wt% of a multistage latex polymer ([0040]), which may be up to 95 wt% soft stage polymer (non-alkali soluble) ([0038-0039]). The latex polymer corresponds to the presently claimed isocyanate-reactive compound that comprises an isocyanate-reactive emulsion polymer. The coating is applied to cement fiberboard substrates (Abstract, [0004]). The article can be prepared by applying the coating system as multiple compositions, wherein the applied coating composition can be dried to remove at least a portion of the water prior to the addition of one or more additional coating compositions ([0058]). The first coating composition would read on the aqueous solution, the second coating composition would read on the aqueous coating composition, and the outer coating composition would read on the composition containing an isocyanate-reactive compound. The coating system is coated over at least one major surface of the substrate with the coating system and up to four minor surfaces including any edges ([0060-0061]). The coating may additionally be overcoated with a topcoat, wherein the topcoat may include sealers and/or primers ([0062]). As can be seen in Fig. 1 below, the coating system layer(s) 20 of Killilea lie atop (i.e., are applied to) surface 14 of the substrate 12 directly (i.e., the cementitious substrate has at least one uncoated outer surface at least a portion of which is coated with the claimed coating composition) ([0023]).
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Killilea does not disclose a water-dispersible polyisocyanate, nor wherein the water-dispersed polyisocyanate is isocyanate functional and the water-soluble inorganic or the water-soluble monomeric or the oligomeric organic acid or the water-soluble salt contain on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate, nor wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Milic teaches an aqueous coating composition comprising an aqueous dispersion of polyurethane and having about 5-40 wt% of a water-dispersible polyisocyanate that may be blocked or unblocked and act as crosslinking agents (Col. 1, lines 49-52; Col. 3, lines 26-27, 45-46, and 61-63); the phrase “about 5-40 wt%” includes values slightly above and below 5 wt% and slightly above and below 40 wt%. The coating is used in industrial fields (Col. 1, lines 13-14) and provides robust, stable, workable, and repairable coatings (Col. 2, lines 12-13). The water-dispersible polyisocyanate is inherently isocyanate functional because it is a polyisocyanate.
Killilea and Milic are analogous inventions in the field of aqueous coatings for substrates in the industrial field.
It would have been obvious to one of ordinary skill in the art before the invention was made to use about 5-40 wt% of a water-dispersible polyisocyanate (which is inherently isocyanate functional) taught by Milic in the coating of Killilea in order to provide a coating that is robust, stable, workable, and repairable (Milic, Col. 2, lines 12-13).
Killilea and Milic does not disclose wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Larson teaches a waterborne polymer made from an isocyanate and isocyanate-reactive acrylic polymer (Abstract; Col. 3, lines 15-20). The isocyanate-reactive acrylic polymer is an emulsion polymer (Col. 3, lines 25-28, 51-61). Larson further teaches a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups is from 0.5 to 5; when the stoichiometric ratio is above 5, adverse effects on water sensitivity, shelf stability, impact resistance, and solvent resistance are seen; when the stoichiometric ratio is below 0.5, no enhancement in water sensitivity, shelf stability, impact resistance, and solvent resistance is seen (Col. 6, lines 30-52). When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Killilea in view of Milic and Larson are analogous inventions in the field of isocyanates reacted with acrylic emulsified polymers.
It would have been obvious to one of ordinary skill in the art before the invention was made to modify the coating of Killilea in view of Milic to have a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups of 0.5 to 5 as taught by Larson in order to provide a coating having good water sensitivity, shelf stability, impact resistance, and solvent resistance (Larson, Col. 6, lines 30-52). When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Regarding the water-dispersed polyisocyanate and water-soluble salt containing on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate and about 5 to about 20 wt% of the water-soluble salt, Killilea discloses the amount of silicate salt is 10-35 wt% ([0043]) and Milic teaches the use of about 5-40 wt% water-dispersed polyisocyanate. The phrase “about 5-40 wt%” includes values slightly above and below 5 wt% and slightly above and below 40 wt%. Thus, on a solids basis there is about 12.5% (5*100/[5+35] = 12.5%) to about 80% (40*100/[10+40] = 80%) water-dispersed polyisocyanate. Similarly, on a solids basis, there is about 20% (10*100/[10+40] = 20%( to about 87.5% (35*100/[5+35] = 87.5%) silicate salt, which overlaps the claimed range of about 20% water-soluble salt.
The phrase “about 80%” includes values slightly above and below 80% while the presently claimed amount of “about 85 wt%” includes values slightly above and below 85 wt%, such that the amount disclosed by Killilea in view of Milic and Larson reads on the presently claimed amount of water-dispersed polyisocyanate.
Alternatively, Killilea in view of Milic and Larson teaches the use of about 80% water-dispersed polyisocyanate (which is inherently isocyanate functional), while the present claims require about 85% water-dispersed polyisocyanate.
It is apparent, however, that the instantly claimed amount of water-dispersed polyisocyanate and that taught by Killilea in view of Milic and Larson 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 amount of water-dispersed polyisocyanate taught by Killilea in view of Milic and Larson and the amount disclosed in the present claims, and further given the fact that no criticality is disclosed in the present invention with respect to the amount of water-dispersed polyisocyanate, it therefore would have been obvious to one of ordinary skill in the art that the amount of water-dispersed polyisocyanate disclosed in the present claims is but an obvious variant of the amounts disclosed in Killilea in view of Milic and Larson, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
With respect to claims 7 and 10, Killilea discloses the silicate salts may be sodium, potassium, or ammonium silicates ([0043]), i.e. salts of an inorganic acid.
With respect to claim 8, Killilea discloses the composition may comprise an anionic emulsifier, i.e. surfactant, such as compounds including salts of organic acids such as potassium stearate ([0028]).
With respect to claim 15, Killilea discloses the isocyanate-reactive latex (emulsion) polymer ([0034]) as set forth above.
With respect to claim 16, Killilea discloses the isocyanate-reactive acrylic latex polymer ([0034]) as set forth above.
With respect to claim 17, Killilea discloses the isocyanate-reactive latex (emulsion) polymer is prepared with an alkali-soluble polymer ([0038]), i.e. is stabilized by an alkali-soluble polymer.
With respect to claim 22, Killilea discloses the isocyanate-reactive latex polymer is an acrylate polymer containing acetoacetoxy groups ([0034]) as set forth above.
Claims 9 and 21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Killilea et al. (WO 2007/089913 A1, “Killilea”) in view of Milic (US 7,034,072 B2) and Larson et al. (US 6,153,690, “Larson”) as applied to claims 3 and 5 above, and optionally further in view of Vetter et al. (US 2008/0199725 A1, “Vetter”).
With respect to claim 9, Killilea discloses the composition may comprise an anionic emulsifier, i.e. surfactant, such compounds including salts of phosphorus acids such as ammonium or sodium salts of phosphate esters of ethoxylated nonylphenol ([0028]).
Killilea in view of Milic and Larson does not disclose the aqueous coating composition comprising a phosphorous acid or its salt.
However, Vetter discloses a cement fiberboard substrate that is treated with an aqueous solution containing at least one phosphorous acid or salt of a phosphorous acid, and overcoated with a sealer, primer, or topcoat that also comprises at least one phosphorous acid or salt thereof (Abstract).
Therefore, if it was determined that the phosphate ester salt of Killilea in view of Milic and Larson did not meet the presently claimed phosphorous acid or salt, it would have been obvious to one of ordinary skill in the art to include a phosphorous acid or salt of Vetter in the coating composition of Killilea in view of Milic and Larson, in order to gain the benefit of improved adhesion to burnished regions and edges as taught by Vetter ([0006-0008], [0039]).
With respect to claim 21, Killilea discloses the coating system is coated over at least one major surface of the substrate with the coating system and up to four minor surfaces including any edges ([0060-0061]).
Killilea in view of Milic and Larson does not explicitly disclose that the minor surfaces may be burnished regions.
However, Vetter discloses that burnished regions typically occur during sawing fiber cement products, are proximate to corners and edges, and are in particular need of additional adhesion from pre-coats ([0039]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to particularly apply the coating system of Killilea in view of Milic and Larson to burnished regions of the substrate in order to gain the benefit of improved adhesion as taught by Vetter ([0039]).
Claims 5-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Killilea et al. (WO 2007/089913 A1, “Killilea”) in view of Kita et al. (US 2009/0104447 A1, “Kita”) and Larson et al. (US 6,153,690, “Larson”).
With respect to claims 5-6, Killilea discloses a coated article, comprising a cement fiberboard substrate and a coating system applied to the substrate. The coating system comprises: (i) at least one acid-functional alkali-soluble polymer, (ii) at least one water-soluble silicate salt, and (iii) water (Abstract). The coating system contains about 10-35 wt% of the one or more water-soluble silicate salts (salt of silicic acid) ([0043]), corresponding to the presently claimed water-soluble salt of an acid. The water is present in an amount of about 50-85 wt% ([0044]), and thus the coating system is an aqueous coating system. The acid-functional alkali-soluble polymer is a water-dispersible polymer and includes polyurethanes ([0030]). The coating may contain additional ingredients including latex polymers and water-dispersible polymers that are not alkali-soluble ([0033]). The latex polymer is an acrylate polymer containing OH groups and acetoacetoxy groups ([0034]) and is made by emulsion polymerization ([0035]) (i.e., is an emulsion polymer). The coating composition may contain 20-95 wt% of a multistage latex polymer ([0040]), which may be up to 95 wt% soft stag polymer (non-alkali soluble) ([0038-0039]). The latex polymer corresponds to the presently claimed isocyanate-reactive compound that comprises an isocyanate-reactive emulsion polymer. The coating is applied to fiberboard substrates (Abstract, [0004]). As can be seen in Fig. 1 below, the coating system layer(s) 20 of Killilea lie atop (i.e., are applied to) surface 14 of the substrate 12 directly (i.e., the cementitious substrate has at least one uncoated outer surface at least a portion of which is coated with the claimed coating composition) ([0023]).
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Killilea does not disclose a water-dispersible polyisocyanate, nor wherein the water-dispersed polyisocyanate is isocyanate functional and the water-soluble inorganic or the water-soluble monomeric or the oligomeric organic acid or the water-soluble salt contain on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate, nor wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Kita teaches a coating composition made from an acrylic copolymer and a blocked isocyanate compound (Abstract, [0076], [0079]). The isocyanate compound is present in an amount of 5-50% in order to provide sufficient adhesion to the base, good flexibility, minimal cracking, and good durability against environmental changes ([0082]). During the curing process, the isocyanate groups are unblocked and are formed ([0079]) and thus the isocyanate compound is isocyanate functional at the time of the curing step.
Killilea and Kita are analogous inventions in the field of acrylic resin coating compositions.
It would have been obvious to one of ordinary skill in the art before the invention was made to modify the coating of Killilea to contain an isocyanate compound in an amount taught by Kita in order to provide a coating having sufficient adhesion to the base, good flexibility, minimal cracking, and good durability against environmental changes (Kita, [0082]).
Killilea in view of Kita does not disclose wherein the water-dispersed polyisocyanate and isocyanate-reactive emulsion polymer is present in amounts sufficient to provide a stoichiometric excess, equality, or deficiency of isocyanate groups to isocyanate-reactive groups.
Larson teaches a waterborne polymer made from an isocyanate and isocyanate-reactive acrylic polymer (Abstract; Col. 3, lines 15-20). The isocyanate-reactive acrylic polymer is an emulsion polymer (Col. 3, lines 25-28, 51-61). Larson further teaches a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups is from 0.5 to 5; when the stoichiometric ratio is above 5, adverse effects on water sensitivity, shelf stability, impact resistance, and solvent resistance are seen; when the stoichiometric ratio is below 0.5, no enhancement in water sensitivity, shelf stability, impact resistance, and solvent resistance is seen (Col. 6, lines 30-52). When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Killilea in view of Kita and Larson are analogous inventions in the field of isocyanates reacted with acrylic emulsified polymers.
It would have been obvious to one of ordinary skill in the art before the invention was made to modify the coating of Killilea in view of Kita to have a stoichiometric ratio of isocyanate functional groups to isocyanate-reactive functional groups of 0.5 to 5 as taught by Larson in order to provide a coating having good water sensitivity, shelf stability, impact resistance, and solvent resistance (Larson, Col. 6, lines 30-52). When there is a ratio of 0.5 to less than 1, there is a deficiency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of 1, there is an equivalency of isocyanate functional groups to isocyanate-reactive functional groups; when there is a ratio of greater than 1 to 5, there is an excess of isocyanate functional groups to isocyanate-reactive functional groups.
Regarding the water-dispersed polyisocyanate and water-soluble salt containing on a solids basis about 85 to about 95 wt% of the water-dispersed polyisocyanate and about 5 to about 20 wt% of water-soluble salt, Killilea discloses the amount of silicate salt is 10-35 wt% ([0043]) and Kita teaches the use of 5-50 wt% polyisocyanate. Thus, on a solids basis there is 12.5% (5*100/[5+35] = 12.5%) to about 83% (50*100/[10+50] ≈ 83%) water-dispersed polyisocyanate. The presently claimed value “about 85 wt%” includes values slightly above and below 85 wt%, such that the amount disclosed by Killilea in view of Kita and Larson reads on the presently claimed amount of water-dispersed polyisocyanate. Similarly, on a solids basis, there is about 16.67% (10*100/[10+50] ≈ 16.67%) to about 87.5% (35*100/[5+35 = 87.5%) silicate salt, which overlaps the claimed range of about 5 to about 20 wt% water-soluble salt.
Alternatively, Killilea in view of Kita and Larson teaches the use of about 83 wt% of the water-dispersed polyisocyanate, while the present claims require about 85 wt% of the water-dispersed polyisocyanate.
It is apparent, however, that the instantly claimed amount of the water-dispersed polyisocyanate and that taught by Killilea in view of Kita and Larson 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 amount of water-dispersed polyisocyanate taught by Killilea in view of Kita and Larson and the amount disclosed in the present claims, and further given the fact that no criticality is disclosed in the present invention with respect to the amount of the water-dispersed polyisocyanate, it therefore would have been obvious to one of ordinary skill in the art that the amount of water-dispersed polyisocyanate disclosed in the present claims is but an obvious variant of the amounts disclosed in Killilea in view of Kita and Larson, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding the water-dispersed polyisocyanate being isocyanate functional, while Kita discloses the use of blocked isocyanates as set forth above, given that the claims are drawn to a cured product, the curing reaction results in the isocyanate compound becoming unblocked (Kita, [0076], [0079]) and being isocyanate functional before continuing to react with isocyanate-reactive groups to form the final product.
Response to Arguments
Due to the cancellation of claim 1, the pre-AIA 35 U.S.C. 103(a) rejection of claim 1 is withdrawn.
Applicant’s arguments filed 15 December 2025 have been fully considered, but they are not persuasive.
Regarding the pre-AIA 35 U.S.C. 103(a) rejections, Applicant argues the cited references do not disclose nor suggest applying the claimed coating to an uncoated cementitious substrate. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument, this is not found persuasive because Killilea discloses the coating system layer(s) 20 lie atop (i.e., are applied to) surface 14 of the substrate 12 directly (i.e., the cementitious substrate has at least one uncoated outer surface at least a portion of which is coated with the claimed coating composition) ([0023]; Fig. 1), and thus the cited references satisfy the claimed limitations for the reasons set forth in the above pre-AIA 35 U.S.C. 103(a) rejections.
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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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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, Callie E 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 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.
/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787