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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/3/2026, has been entered.
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.
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, 10, 11-13, 16 are rejected 35 U.S.C. 103 as being unpatentable over Menovcik, et. al., (EP0595286, herein Menovcik).
Regarding Claims 1, 10, 11, 12, Menovcik teaches the compositions for solvent based coatings [P2; L49] comprising: dihydroxy terminated polyamide [P9; Example 7], reads on the polyamide oligomer predominantly having at least two amide linkages and two terminal end groups selected from the end groups of hydroxyl groups, which is the polyamide macromonomer in an amount between 6 to 25 percent by weight [P2; L36], overlaps the claimed range; isophorone diisocyanate (IPDI) 267.6 g [P9; Example 7] reads on diisocyanate component and also reads on the reactive polyisocyanate, which is the diisocyanate functional monomer is utilized in an amount between 25 and 40 percent by weight [P2; L44] lies in the claimed range; n-butyl acetate 300 g [P10; L5] reads on the non-reactive organic diluent; the n-butyl acetate concentration is 300/(267.6+73+0.35+83.8+340+110+34+110+36+300+100+300)=14.6%, lies in the claimed range. Menovcik further teaches triols; hexanetriol [P3; L44], reads on compounds of less than 500 g/mole molecular weight having three groups reactive with isocyanates selected from the group of hydroxyl groups, which is the prepolymer, and in the range of prepolymer comprises from about 30 percent to about 50 percent of the total resin composition weight [P2; L40], lies in the claimed range.
Menovcik teaches the claimed thermosettable composition of a), b), c) and d) and the ranges as set forth above. Menovcik teaches example 7 (i) isophorone diisocyanate (IPDI); (ii) neopentylglycol (NPG); (iii) trimethylolpropane (TMP), [Page 9; Example 7] the average functionality of (i) to (iii), is (267.9/222.29x2+73/104x2+0.35/134x3)/(267.6/222.29+73/104+0.35/134)=2.0005, which is above 2. Menovcik further explicitly teaches higher functional alcohols can include for example, trimethylolpropane [0023; and Page 9; example 7], which can lead to where polyols having three or more hydroxy groups are chosen, the result is a branched polyester [0022].
Hence, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of a), b), c) and d) and the ranges to form the composition with the isocyanate and hydroxyl end groups with the average functionality above 2.1, which is based upon the further optimization of the amount of specific polyols having three hydroxy groups, such as trimethylolpropane (TMP), and additionally adjust the amount of dihydroxy terminated polyamide [P9; Example 7] into the claimed range, in order to achieve the certain branched polyester formation, which is desirable and is to be incorporated into a branched polyurethane [0023] as taught by Menovcik, wherein the branched polyester is known capable of enhance polyurethane properties by increasing crosslinking density, compared to linear polyester.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Menovcik teaches all of the claimed ingredients in the claimed amounts, and the composition as being made by a substantially similar process as of the mixture of the above ingredients was then heated [0075]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. viscosity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 13, Menovcik teaches the multi-layer coating is then baked to cross-link and cure the polymeric materials and to drive the small amount of residual water and/or solvent from the coating layer(s). [P6; L39], which indicates the evaporation of the solvent lead to the final formation of the thermoset.
Regarding Claim 16, Menovcik teaches the present invention are utilized in coating compositions for solvent based coatings [P2; L50]
Claims 2, 3, 5-8,14-15 are rejected 35 U.S.C. 103 as being unpatentable over Menovcik, et. al., (EP0595286, herein Menovcik) as applied in claim 1, in the view of Erdodi, et. al., (US20170233605, herein Erdodi).
Regarding Claims 2, 3, Menovcik teaches the solvent borne thermosettable composition as set forth in claim 1. Menovcik does not specifically teach the wherein the polyamide oligomer is polyamide repeat units derived from the specific polymerization. However, Erdodi teaches Polyamide oligomer made from piperazine reacted with a dicarboxylic acid [Table 1; 0124] wherein, the piperazine reads on the cyclic diamine having two amine groups capable of forming covalent bonds with 4 carbon atoms having two secondary terminal amine groups; Erdodi further teaches the dicarboxylic acid as monomers include dicarboxylic acids; 2 to 36 carbon atoms [0053] overlaps the claimed range. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the Polyamide oligomer made from piperazine reacted with a dicarboxylic acid [Table 1; 0124] of Erdodi as the specified monomers to be polymerized, into the composition formation. Doing so would further lead to the suitability of the dispersion formation as of superior heat and UV resistance, and better overall mechanical properties, and performance advantages in elasticity [0079] as taught by Erdodi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 5, Menovcik and Erdodi collectively teach the solvent borne thermosettable composition as set forth in claim 2. Menovcik does not teach the wherein the polyamide oligomer is comprised of repeat units from dicarboxylic acids reacted with amine groups wherein at least 50 mole % of said dicarboxylic acid component being in an amide repeat unit are dicarboxylic acids of 10 to 50 carbon atoms. However, Erdodi teaches “monomers include dicarboxylic acids; 2 to 36 carbon atoms” [0053] overlaps the claimed range; “amide linkages are characterized as being at least 50 mole % amides linkages of the type formed from the reaction of a secondary amine with a carboxylic acid; amide linkage of the type formed from secondary amines reacted with carboxylic acid to include those derived from lactams with tertiary amide linkages.” [0087], lies in the claimed range. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the “monomers include dicarboxylic acids; 2 to 36 carbon atoms” [0053]; “amide linkages are characterized as being at least 50 mole % amides linkages of the type formed from the reaction of a secondary amine with a carboxylic acid; amide linkage of the type formed from secondary amines reacted with carboxylic acid to include those derived from lactams with tertiary amide linkages.” [0087] into the composition. Doing so would further lead to the desired property of diacids with larger alkylene groups as this generally provides polyamide repeat units with lower Tg value [0053] as taught by Erdodi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 6, Menovcik and Erdodi collectively teach the solvent borne thermosettable composition as set forth in claim 2. Menovcik does not teach the wherein at least 50 wt. % of the repeat units from carboxylic acids are derived from dimer fatty acids. However, Erdodi teaches “monomers include dicarboxylic acids; dimer fatty acids” [0053] and “at least 50 wt. % of said polyamide oligomer or telechelic polyamide comprise repeat units from diacids” [0058], lies in the claimed range, collectively indicates the claimed at least 50 wt. % of the repeat units from carboxylic acids are derived from dimer fatty acids. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the “monomers include dicarboxylic acids; dimer fatty acids” [0053] and “at least 50 wt. % of said polyamide oligomer or telechelic polyamide comprise repeat units from diacids” [0058], into the composition. Doing so would further lead to the desired property of the diacids with larger alkylene groups as this generally provides polyamide repeat units with lower Tg value [0053] as taught by Erdodi.
Regarding Claims 7, 8, Menovcik and Erdodi collectively teach the solvent borne thermosettable composition as set forth in claim 2. Menovcik teaches the polyamide macromonomer in an amount between 6 to 25 percent by weight [P2; L36] overlap the claimed ranges, but does not explicitly teach the combined repeat units of diamine and lactone and/or carboxylic acid monomers forming at least one amide linkage during their polymerization. However, Erdodi teaches “amide forming monomers create on average one amide linkage per repeat unit. These include diacids and diamines when reacted with each other, aminocarboxylic acids, and lactams.” [0047] indicates the claimed amide linkage formation. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add “amide forming monomers create on average one amide linkage per repeat unit. These include diacids and diamines when reacted with each other, aminocarboxylic acids, and lactams.” [0047] into the composition formation. Doing so would further lead to the suitability of reaction design and process toward the desired property as of “the current technology provides the ability to bring the desired physical properties into coating technology for substrates and achieve high integrity films from aqueous based dispersions. The inherent polarity of amide linkages in combination with olefinic properties of the amide repeat units provides for a wide variety of polarities, surface tensions (and surface energy), low friction surfaces, wear resistance, UV light resistance, alkali resistance, corrosion resistance, water and solvent resistance, and good adhesion to a variety of substrates. The fact that these substrates are rigid opens the opportunity to crosslink the binder of the dispersions to give further benefits in term of chemical resistance, hardness, abrasion resistance, and corrosion resistance.” [0020] as taught by Erdodi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 14, Menovcik teaches the solvent borne thermosettable composition as set forth in claim 1. Menovcik does not explicitly teach the wherein said polyisocyanate component has two or more isocyanate groups per polyisocyanate and the ratio of isocyanate groups of said polyisocyanate to combined hydroxyl, amino and/or carboxylic groups is from 2:1 to 1:1. However, Erdodi teaches “Suitable polyisocyanates have an average of about two or more isocyanate groups” [0071]; “polyamide oligomers with high percentages, or specified percentages, of two functional groups of a single chemical type, e.g. two terminal amine groups (meaning either primary, secondary, or mixtures), two terminal carboxyl groups, two terminal hydroxyl groups (again meaning primary, secondary, or mixtures), or two terminal isocyanate groups (meaning aliphatic, aromatic, or mixtures).” [0042]. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the range of the wherein said polyisocyanate component has two or more isocyanate groups per polyisocyanate and the ratio of isocyanate groups of said polyisocyanate to combined hydroxyl, amino and/or carboxylic groups is from 2:1 to 1:1, into the composition. Doing so would further lead to the suitability of reaction design and process toward the desired property as of “the current technology provides the ability to bring the desired physical properties into coating technology for substrates and achieve high integrity films from aqueous based dispersions. The inherent polarity of amide linkages in combination with olefinic properties of the amide repeat units provides for a wide variety of polarities, surface tensions (and surface energy), low friction surfaces, wear resistance, UV light resistance, alkali resistance, corrosion resistance, water and solvent resistance, and good adhesion to a variety of substrates. The fact that these substrates are rigid opens the opportunity to crosslink the binder of the dispersions to give further benefits in term of chemical resistance, hardness, abrasion resistance, and corrosion resistance.” [0020] as taught by Erdodi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 15, Menovcik teaches the solvent borne thermosettable composition as set forth in claim 1. Menovcik teaches the multi-layer coating is then baked to cross-link and cure the polymeric materials and to drive the small amount of residual water and/or solvent from the coating layer(s). [P6; L39], which indicates the evaporation of the solvent lead to the final formation of the thermosettable composition. Menovcik does not explicitly teach the wherein as the organic diluent evaporates, the polyamide oligomer is crosslinked via reactions with said polyisocyanate component reactive with hydroxyl, carboxylic, and/or amino groups to form covalent chemical bonds to create a polymer of number average molecular weight of at least 1,000,000 g/mole. However, Erdodi teaches “multiple polyamide oligomers or telechelic polyamides can be linked with condensation reactions to form polymers, generally above 100,000 g/mole.” [0044] via “linkages connecting hydrocarbon type linkages in the polyamide oligomer as being amide linkages. Heteroatom linkages are linkages such as amide, ester, urethane, urea, ether linkages, where a heteroatom connects two portions of an oligomer or polymer that are generally characterized as hydrocarbons, carbon to carbon bond, such as hydrocarbon linkages” [0048] reads on the covalent bond, which can further increase the molecular weight from over 100,000 g/mole to 1,000,000 g/mole. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the multiple polyamide oligomers or telechelic polyamides can be linked with condensation reactions to form polymers, generally above 100,000 g/mole.” [0044] via “linkages connecting hydrocarbon type linkages in the polyamide oligomer as being amide linkages. Heteroatom linkages are linkages such as amide, ester, urethane, urea, ether linkages, where a heteroatom connects two portions of an oligomer or polymer that are generally characterized as hydrocarbons, carbon to carbon bond, such as hydrocarbon linkages” [0048], into the composition. Doing so would further lead to the suitability of reaction design and process toward the desired property as of “the current technology provides the ability to bring the desired physical properties into coating technology for substrates and achieve high integrity films from aqueous based dispersions. The inherent polarity of amide linkages in combination with olefinic properties of the amide repeat units provides for a wide variety of polarities, surface tensions (and surface energy), low friction surfaces, wear resistance, UV light resistance, alkali resistance, corrosion resistance, water and solvent resistance, and good adhesion to a variety of substrates. The fact that these substrates are rigid opens the opportunity to crosslink the binder of the dispersions to give further benefits in term of chemical resistance, hardness, abrasion resistance, and corrosion resistance.” [0020] as taught by Erdodi.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claim 4, 9 are rejected 35 U.S.C. 103 as being unpatentable over Menovcik, et. al., (EP0595286, herein Menovcik) and Erdodi, et. al., (US20170233605, herein Erdodi) as applied in the claim 2, in the view of Campbell, et. al., (US20110306724, herein Campbell).
Regarding Claims 4, 9, Menovcik and Erdodi collectively teach the solvent borne thermosettable composition as set forth in claim 2. Menovcik does not teach the wherein at least 50 mole % of said diamines are diamines having two primary amine groups. However, Erdodi teaches “the polyamide can comprise amide repeat units from primary amine groups.” [0019], in the range of “at least 60, 70, or 80 mole %” [0019] lies in the claimed range; and “Preferred diamines include those with up to 60 carbon atoms, and optionally including a variety of cyclic” [0054] wherein, “polyamide oligomer or telechelic polyamide comprise repeat units from diacids and diamines of the structure of the repeat unit being
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wherein Ra is the alkylene portion of the dicarboxylic acid and is a cyclic, containing of 2 to 36 carbon atoms; Rb is a cyclic, alkylene group containing up to 2 to 36 carbon atoms [0058-59] overlap in the claimed range, hence, indicates the repeat units from diamines are derived from cyclic can be 0-100% based on the selection of Ra and Rb either both cyclic or linear, which encompasses the claimed range. Menovcik and Erdodi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the “the polyamide can comprise amide repeat units from primary amine groups.” [0019], in the range of “at least 60, 70, or 80 mole %” [0019] lies in the claimed range; and “Preferred diamines include those with up to 60 carbon atoms, and optionally including a variety of cyclic” [0054], into the composition. Doing so would further lead to the suitability of reaction design and process toward the desired property as of “the current technology provides the ability to bring the desired physical properties into coating technology for substrates and achieve high integrity films from aqueous based dispersions. The inherent polarity of amide linkages in combination with olefinic properties of the amide repeat units provides for a wide variety of polarities, surface tensions (and surface energy), low friction surfaces, wear resistance, UV light resistance, alkali resistance, corrosion resistance, water and solvent resistance, and good adhesion to a variety of substrates. The fact that these substrates are rigid opens the opportunity to crosslink the binder of the dispersions to give further benefits in term of chemical resistance, hardness, abrasion resistance, and corrosion resistance.” [0020] as taught by Erdodi.
Menovcik is silent on the claimed diamine structures. However, Campbell teaches “1,2-cyclohexanediamine (also named 1,2-diaminocyclohexane)” [0153] matches the claimed structure. Menovcik and Campbell are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyamide based polyurethane dispersion composition toward functional coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Menovcik to add the “1,2-cyclohexanediamine (also named 1,2-diaminocyclohexane)” [0153] of Campbell into the composition development. Doing so would further lead to the suitability of the dispersion formation as of “chain extending agents (also refered to as chain extenders) may be added and allowed to react with isocyante terminated prepolymer to provide the aqueous polyurethane dispersion. Upon reaction between the prepolymer and the chain extending agents the polyurethane polymer and the polyurethane dispersion is created.” [0151].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “there is no motivation in EP '286 to use reactants having an average functionality of 2.1 or greater, or a reasonable expectation that using reactants with the claimed average functionality would result in a thermosettable composition with the desired properties”, the argument is not persuasive.
In this case, Menovcik teaches the claimed thermosettable composition of a), b), c) and d) and the ranges as set forth in the rejection above. Menovcik teaches example 7 (i) isophorone diisocyanate (IPDI); (ii) neopentylglycol (NPG); (iii) trimethylolpropane (TMP), [Page 9; Example 7] the average functionality of (i) to (iii), is (267.9/222.29x2+73/104x2+0.35/134x3)/(267.6/222.29+73/104+0.35/134)=2.0005, which is above 2.
Menovcik further explicitly teaches higher functional alcohols can include for example, trimethylolpropane [0023; and Page 9; example 7], which can lead to where polyols having three or more hydroxy groups are chosen, the result is a branched polyester [0022].
Hence, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of a), b), c) and d) and the ranges to form the composition with the isocyanate and hydroxyl end groups with the average functionality above 2.1, which is based upon the further optimization of the specific polyols having three hydroxy groups, such as trimethylolpropane (TMP), in order to achieve the certain branched polyester formation, which is desirable and is to be incorporated into a branched polyurethane [0023] as taught by Menovcik, wherein the branched polyester is known capable of enhance polyurethane properties by increasing crosslinking density, compared to linear polyester.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767