DETAILED ACTION
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
In the claims filed on 07/23/2026, claims 1, 3, 4, and 6-20 are pending. Claims 2 and 5 are canceled.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1, 3, 4, and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Flosbach et al. (US 2003/0191272 A1).
Regarding claim 1, Flosbach teaches a dual cure coating composition, the resin solids content of which is composed of [0008] 30 to 90 wt. % of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], wherein the hydroxy-functional component is able to be cross-linked by a cross-linking agent [0011], wherein the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which reads on a coating composition comprising a) from 12 to 72% by weight of a polymeric binder selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A). The % by weight is based on the calculations 40% * 30% / 100% = 12% and 80% * 90% / 100% = 72%. Flosbach teaches that the resin solids content of the dual cure coating composition is further composed of [0008] 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component [0011], wherein it comprises cross-linking components conventional for cross-linking hydroxy-functional binders [0041], which reads on the coating composition further comprising b) from 4 to 40% by weight of a crosslinking agent having functional groups that are reactive to OH groups, as component (B). The % by weight is based on the calculations 40% * 10% / 100% = 4 and 80% * 50% / 100% = 40%. Flosbach teaches that the resin solids content of the dual cure coating composition is further composed of [0008] 0 to 60 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], wherein the one or more binders differing from the polyester urethane and/or reactive diluent are (meth)acrylic copolymer resins, polyurethane resins, polyester resins, and/or reactive diluents that may in each case comprise olefinic double bonds as reactive functional groups [0035], which reads on the coating composition further comprising c) from 0 to 48% by weight, of at least one monomeric and/or oligomeric reactive diluent with at least one olefinic double bond, as component (C), wherein the weight percentage is based on the total weight of the coating composition. The % by weight is based on the calculations 40% * 0% / 100% = 0% and 80% * 60% / 100% = 48%.
Flosbach does not teach with sufficient specificity that the coating composition comprises a) from 28 to 50% by weight of the polymeric binder selected from the group consisting of polyacrylates (A1) and/or polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the wt. % of Flosbach’s at least one hydroxy-functional polyester urethane having olefinic double bonds in Flosbach’s dual cure coating composition to be 28 to 50 wt. %. The proposed modification would read on the coating composition comprising a) from 28 to 50% by weight of the polymeric binder selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that the resin solids content of the dual cure coating composition is composed of [0008] 30 to 90, preferably 40 to 70 wt. %, of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], 0 to 60, preferably 5 to 50 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], and 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component [0011], and that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which means that the wt. % of Flosbach’s at least one hydroxy-functional polyester urethane having olefinic double bonds in Flosbach’s dual cure coating composition would have affected an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
Flosbach does not teach with sufficient specificity that the coating composition comprises b) from 15 to 25% by weight of the crosslinking agent having functional groups that are reactive to OH groups, as component (B). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the wt. % of Flosbach’s at least one cross-linking agent for the hydroxy-functional component in Flosbach’s dual cure coating composition to be 15 to 25% by weight. The proposed modification would read on the coating composition comprising b) from 15 to 25% by weight of the crosslinking agent having functional groups that are reactive to OH groups, as component (B) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an extent to which Flosbach’s at least one cross-linking agent for the hydroxy-functional component cross-links and/or cures Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that the resin solids content of the dual cure coating composition is composed of [0008] 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component and optionally the at least one binder other than the polyester urethane and/or the at least one reactive diluent [0011], 30 to 90, preferably 40 to 70 wt. % of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], and 0 to 60, preferably 5 to 50 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], and that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which means that the wt. % of Flosbach’s at least one cross-linking agent for the hydroxy-functional component in Flosbach’s dual cure coating composition would have affected an extent to which Flosbach’s at least one cross-linking agent for the hydroxy-functional component cross-links and/or cures Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition, and would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
Flosbach does not teach with sufficient specificity that the coating composition comprises c) from 35 to 50% by weight, of the at least one monomeric and/or oligomeric reactive diluent with at least one olefinic double bond as component (C), wherein the weight percentage is based on the total weight of the coating composition. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the wt. % of Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent in Flosbach’s dual cure coating composition to be 35 to 48 wt. %. The proposed modification would read on the coating composition comprising c) from 35 to 48% by weight, of the at least one monomeric and/or oligomeric reactive diluent with at least one olefinic double bond as component (C), wherein the weight percentage is based on the total weight of the coating composition as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that the resin solids content of the dual cure coating composition is composed of [0008] 0 to 60, preferably 5 to 50 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], 30 to 90, preferably 40 to 70 wt. % of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], and 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component and optionally the at least one binder other than the polyester urethane and/or the at least one reactive diluent [0011], and that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which means that the wt. % of Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent in Flosbach’s dual cure coating composition would have affected an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
The Office recognizes that all of the claimed physical properties are not positively taught by Flosbach, namely that the coating composition, after being cured into a coating layer, has a hardness of at least 110 seconds as measured according to the standard DIN EN ISO 1522. However, Flosbach renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the coating composition as explained above. Furthermore, the specification of the instant application recites that this coating composition has high hardness after curing (p. 1, l. 30-31), that the coating composition according to the present invention has a high hardness after being cured into a coating layer (p. 2, l. 25-26), and that this coating layer has a very high hardness after curing (p. 17, l. 2). Also, Flosbach teaches that the coatings applied from the dual cure coating compositions, when cured both thermally and by UV irradiation, are distinguished by excellent hardness [0055], that when the coatings are only thermally cured, the hardness are at least satisfactory [0055], and that in examples, clear coat layers of produced metal test panels that were cross-linked by UV irradiation [0065] and by being baked for 10 minutes at 140° C [0064] had a hardness tested according to DIN EN-ISO 1522 of 170 seconds or 140 seconds [0065]. Therefore, the claimed physical properties would naturally arise from the coating composition that is rendered obvious by Flosbach. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Flosbach satisfies the limitation wherein the polyacrylate with a crosslinkable amount of hydroxyl groups (A1) is a (meth)acrylate copolymer synthesized from (meth)acrylate without hydroxyl functionality, (meth)acrylate with at least one hydroxyl functionality, and optionally (meth)acrylic acid, and optionally other monomers containing at least one olefinic double bond per molecule other than the foregoing mentioned (meth)Acrylates and (meth)acrylic acid as claimed. This is because claim 1 does not require the polymeric binder to be selected from polyacrylates (A1) with a crosslinkable amount of hydroxyl groups if the polymeric binder is selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, and Flosbach’s teachings read on the polymeric binder being selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups as explained above.
Regarding claim 3, Flosbach satisfies the limitation wherein the polyacrylates with a crosslinkable amount of hydroxyl groups (A1) have an OH number of from 20 to 200 mg KOH/g and/or the polyesters with a crosslinkable amount of hydroxyl groups (A2) have an OH number of from 20 to 200 mg KOH/g as claimed. This is because claims 1 and 3 do not require the polymeric binder to be selected from polyacrylates (A1) with a crosslinkable amount of hydroxyl groups if the polymeric binder is selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, and Flosbach’s teachings read on the polymeric binder being selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups as explained above.
Regarding claim 4, Flosbach satisfies the limitation wherein the polyacrylates with a crosslinkable amount of hydroxyl groups (A1) have an acid value of from 0 to 200 mg KOH/g and/or the polyesters with a crosslinkable amount of hydroxyl groups (A2) have an acid value of from 1 to 200 mg KOH/g as claimed. This is because claims 1 and 4 do not require the polymeric binder to be selected from polyacrylates (A1) with a crosslinkable amount of hydroxyl groups if the polymeric binder is selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, and Flosbach’s teachings read on the polymeric binder being selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups as explained above.
Regarding claim 6, Flosbach satisfies the limitation wherein the (meth)acrylate without hydroxyl functionality is one or more selected from the group consisting of alkyl (meth)acrylates and cycloalkyl (meth)acrylates, C1-C18-alkyl (meth)acrylates and C3-C8-cycloalkyl (meth)acrylates, C1-C12-alkyl (meth)acrylates and C3-C6-cycloalkyl (meth)acrylates, C1-C6-alkyl (meth)acrylates and C5-C6-cycloalkyl (meth)acrylates, ethyl acrylate, ethyl methacrylate, propyl acrylate, propyl methacrylate, isopropyl acrylate, isopropyl methacrylate, butyl acrylate, butyl methacrylate, isobutyl acrylate, isobutyl methacrylate, tert-butyl acrylate, tert-butyl methacrylate, amyl acrylate, amyl methacrylate, hexyl acrylate, hexyl methacrylate, ethylhexyl acrylate, ethylhexyl methacrylate, 3,3,5-trimethylhexyl acrylate, 3,3,5-trimethylhexyl methacrylate, stearyl acrylate, stearyl methacrylate, lauryl acrylate, lauryl methacrylate, cyclopentyl acrylate, cyclopentyl methacrylate, isobornyl acrylate, isobornyl methacrylate, cyclohexyl acrylate, cyclohexyl methacrylate, and any combinations thereof and/or the (meth)acrylate with at least one hydroxyl functionality is one or more selected from the group consisting of hydroxyalkyl (meth)acrylates, hydroxy C1-C6-alkyl (meth)acrylates, hydroxy C2-C4-alkyl (meth)acrylates, 2-hydroxyethyl acrylate, 2-hydroxyethyl methacrylate, 2-hydroxypropyl acrylate, 2- hydroxypropyl methacrylate, 3-hydroxypropyl acrylate, 3-hydroxypropyl methacrylate, 3-hydroxybutyl acrylate, 3-hydroxybutyl methacrylate, and any combinations thereof; and/or the (meth)acrylic acid is acrylic acid, methacrylic acid, or any combinations thereof; and/or the other monomers containing at least one olefinic double bond per molecule other than the foregoing mentioned (meth)acrylates and (meth)acrylic acid is one or more selected from the group consisting of vinylaromatic hydrocarbons, styrene, vinyltoluene, alpha-methylstyrene, and any combinations thereof as claimed. This is because claims 1 and 6 do not require the polymeric binder to be selected from polyacrylates (A1) with a crosslinkable amount of hydroxyl groups, wherein the polyacrylate with a crosslinkable amount of hydroxyl groups (A1) is a (meth)acrylate copolymer synthesized from (meth)acrylate without hydroxyl functionality, (meth)acrylate with at least one hydroxyl functionality, and optionally (meth)acrylic acid, and optionally other monomers containing at least one olefinic double bond per molecule other than the foregoing mentioned (meth)acrylates and (meth)acrylic acid, if the polymeric binder is selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, and Flosbach’s teachings read on the polymeric binder being selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups as explained above.
Regarding claim 7, Flosbach teaches that the at least one hydroxy-functional polyester urethane having olefinic double bonds [0009] is obtainable by the reaction of a component containing at least one isocyanate group and at least one olefinic double bond with a non-aromatic polyester polyol [0012], that the non-aromatic polyester polyol is randomly composed of non-aromatic polyester building blocks and has a highly branched structure [0022], and that the non-aromatic polyester polyol is preferably synthesized from components, which comprise hydroxyl components, which consist of 0 to 20 wt. % of at least one diol and 80 to 100 wt. % of at least one polyol having 3 to 6 hydroxyl groups, carboxyl components, which consist to an extent of 0 to 20 wt. % of at least one monocarboxylic acid and 80 to 100 wt. % of at least one dicarboxylic acid, and optionally, least one hydroxycarboxylic acid component [0023], which reads on wherein the polyester with a crosslinkable amount of hydroxyl groups (A2) comprises, in the form of polycondensation monomeric units, organic polyols containing more than two hydroxyl groups per molecule and polybasic organic carboxylic acids containing two carboxyl groups or latent carboxyl groups per molecule as claimed.
Regarding claim 8, Flosbach teaches that the hydroxyl components consist of 0 to 20 wt. % of at least one (cyclo)aliphatic diol and 80 to 100 wt. % of at least on (cyclo)aliphatic polyol having 3 to 6 hydroxyl groups [0025], that the carboxyl components consist of 0 to 20 wt. % of at least one (cyclo)aliphatic monocarboxylic acid and 80 to 100 wt. % of at least one (cyclo)aliphatic dicarboxylic acid [0029], and that at least one (cyclo)aliphatic hydroxycarboxylic acid may optionally also participate in the synthesis of the polyester polyol [0033], which reads on wherein the organic polyol containing more than two hydroxyl groups per molecule is one or more selected from aliphatic polyols, and/or the polybasic organic carboxylic acid containing two carboxyl groups or latent carboxyl groups per molecule is one or more selected from aliphatic polycarboxylic acids, and aliphatic hydroxycarboxylic acids as claimed.
Regarding claim 9, Flosbach teaches that the at least one cross-linking agent for the hydroxy-functional component [0011] comprises aminoplast resins, melamine resins, polyisocyanates, the NCO-groups of which may be blocked, or tris(alkoxycarbonylamino)triazines [0041], which reads on wherein the crosslinking agent as component (B) comprises one or more selected from the group consisting of nonblocked, partially blocked, and fully blocked polyisocyanates and amino resins as claimed.
Regarding claim 10, Flosbach teaches that the at least one cross-linking agent for the hydroxy-functional component [0011] comprises aminoplast resins, in particular melamine resins, or polyisocyanates, the NCO-groups of which may be blocked [0041], that examples of polyisocyanates usable in free or blocked form are [0043] (cyclo)aliphatic polyisocyanates [0018, 0019], which reads on wherein the polyisocyanate crosslinking agent as component (B) comprises one or more selected from the group consisting of aliphatic and cycloaliphatic polyisocyanate, and/or amino resin crosslinking agent as component (B) is one or more selected from melamine-formaldehyde resins, ad any combination thereof as claimed.
Regarding claim 11, Flosbach teaches that the one or more binders differing from the polyester urethane and/or reactive diluent are (meth)acrylic copolymer resins, polyurethane resins, polyester resins, and/or reactive diluents that may in each case comprise olefinic double bonds as reactive functional groups [0035], that examples of binders comprising olefinic double bonds are polyurethane (meth)acrylates, polyester (meth)acrylates, and epoxy resin (meth)acrylates having number average molecular masses of for examples 500 to 10000 [0037], that reactive diluents having olefinic double bonds may be mono-, di-, or polyunsaturated [0039], that examples of monounsaturated reactive diluents are (meth)acrylic acid and the esters thereof, maleic acid and the semi-esters thereof, vinyl acetate, vinyl ethers, styrene, vinyltoluene, that examples of diunsaturated reactive diluents are di(meth)acrylates such as alkylene glycol di(meth)acrylate, 1,3-butanediol di(meth)acrylates, vinyl (meth)acrylate, allyl (meth)acrylate, divinylbenzene, dipropylene glycol di(meth)acrylate, hexanediol di(meth)acrylate, that examples of polyunsaturated reactive diluents are glycerol tri(meth)acrylate, trimethylolpropane tri(meth)acrylate, pentaerythritol tetra(meth)acrylate, and dipentaerythritol hexa(meth)acrylate [0039], that examples of reactive diluents having hydroxyl groups as well as olefinic double bonds are glycerol mono- and di(meth)acrylate, trimethylolpropane mono- and di(meth)acrylate, pentaerythritol tetra(meth)Acrylate, and dipentaerythritol hexa(meth)acrylate [0040], which reads on wherein the reactive diluent as component (C) is one or more selected from (meth)acrylic acid, mono-, di-, tri-, tetra-, penta-, and hexa(meth)acrylates, polyester (meth)acrylates, epoxy (meth)acrylates, urethane (meth)acrylates, maleic acid and its diesters and monoesters, vinyl acetate, vinyl ethers, and any combination thereof as claimed.
Regarding claim 12, Flosbach teaches that the at least one hydroxy-functional polyester urethane having olefinic double bonds [0009] has a number average molecular mass of 1000 to 5000 [0012], which reads on wherein the polyesters with a crosslinkable amount of hydroxyl groups (A2) have a number-average molecular weight Mn of from 1000 to 5000 g/mol as claimed.
Regarding claim 13, Flosbach teaches that in the ready-to-apply state, the dual cure coating composition has a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], and that the volatile constituents they contain are organic solvents and/or water, optionally together with volatile additives [0046], which reads on wherein the content of volatile organic compounds (VOC) of the coating composition is no more than 60% by weight. The % by weight is based on the calculations 100% - 40% = 60%.
Flosbach does not teach with sufficient specificity wherein the content of volatile organic compounds (VOC) of the coating composition is no more than 40% by weight. Before the effective filing date of the claimed invention, one of ordinary skill in art would have found it obvious to optimize Flosbach’s solids content of Flosbach’s dual cure coating composition to be 60 to 80 wt. %. The proposed modification would read on wherein the content of volatile organic compounds (VOC) of the coating composition is no more than 40% by weight as claimed. The % by weight is based on the calculation 100% - 60% = 40%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], and that the volatile constituents they contain are organic solvents and/or water, optionally together with volatile additives [0046], which means that Flosbach’s solids content of Flosbach’s dual cure coating composition in wt. % would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
Regarding claim 14, Flosbach teaches that the dual cure coating compositions are produced only shortly before application by mixing together separately stored components [0042], and that in the case of two components, one of the two components is the coating base component, and the other component contains the free polyisocyanate cross-linking agent [0042], which reads on wherein the coating composition, before being cured into a coating layer, is a two-component coating composition, with component (A) being stored separately from component (B) as claimed.
Regarding claim 15, Flosbach teaches that the dual cure coating compositions are produced only shortly before application by mixing together separately stored components [0042], which reads on a process for preparing a coating composition according to claim 1, the process comprising mixing the components comprised therein as claimed.
Regarding claim 16, Flosbach teaches that the durable curing coating compositions are applied to a dry film thickness, using known processes, in particular by spraying, and that after a short flash-off phase, the applied dual cure coating composition is cross-linked thermally, for example at 20 to 160°C [0053], which reads on a method of using the coating composition according to claim 1, the method comprising using the coating composition for producing a cured coating layer on a substrate by applying and subsequently thermally curing the coating composition as claimed.
Regarding claim 17, Flosbach teaches that the dual cure coating composition may, for example, be used in the production of multilayer coatings on any desired substrate, and in particular for the production of an outer pigmented top coating, transparent clear coat or transparent sealing coat of a multilayer coating [0052], that the outer coating layer may, for example, be applied by the wet-on-wet process onto a prior coating applied onto a substrate [0052], and that the dual cure coating compositions are applied to a dry film thickness using known processes [0053], which reads on a coating layer which is produced on a substrate using the coating composition according to claim 1 as claimed.
Regarding claim 18, the Office recognizes that all of the claimed physical properties are not positively taught by Flosbach, namely that the coating layer according to claim 17 after curing has a hardness of at least 110 seconds as measured according to the standard DIN EN ISO 1522. However, Flosbach renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the coating layer according to claim 17 as explained above. Furthermore, the specification of the instant application recites that this coating composition has high hardness after curing (p. 1, l. 30-31), that the coating composition according to the present invention has a high hardness after being cured into a coating layer (p. 2, l. 25-26), and that this coating layer has a very high hardness after curing (p. 17, l. 2). Also, Flosbach teaches that the coatings applied from the dual cure coating compositions, when cured both thermally and by UV irradiation, are distinguished by excellent hardness [0055], that when the coatings are only thermally cured, the hardness are at least satisfactory [0055], and that in examples, clear coat layers of produced metal test panels that were cross-linked by UV irradiation [0065] and by being baked for 10 minutes at 140° C [0064] had a hardness tested according to DIN EN-ISO 1522 of 170 seconds or 140 seconds [0065]. Therefore, the claimed physical properties would naturally arise from the coating layer that is rendered obvious by Flosbach. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 19, Flosbach teaches that the dual cure coating composition, the resin solids content of which is composed of [0008] 30 to 90 wt. % of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], wherein the hydroxy-functional component is able to be cross-linked by a cross-linking agent [0011], wherein the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which reads on the coating composition according to claim 1, comprising from 12 to 72% by weight of a polymeric binder selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A).
Flosbach does not teach with sufficient specificity that the coating composition according to claim 1 comprises a) from 28 to 40% by weight of the polymeric binder selected from the group consisting of polyacrylates (A1) and/or polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the wt. % of Flosbach’s at least one hydroxy-functional polyester urethane having olefinic double bonds in Flosbach’s dual cure coating composition to be 28 to 40 wt. %. The proposed modification would read on the coating composition according to claim 1, comprising from 28 to 40% by weight of a polymeric binder selected from polyesters (A2) with a crosslinkable amount of hydroxyl groups, as component (A) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that the resin solids content of the dual cure coating composition is composed of [0008] 30 to 90, preferably 40 to 70 wt. %, of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], 0 to 60, preferably 5 to 50 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], and 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component [0011], and that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which means that the wt. % of Flosbach’s at least one hydroxy-functional polyester urethane having olefinic double bonds in Flosbach’s dual cure coating composition would have affected an extent of curing and/or cross-linking of Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
Regarding claim 20, Flosbach teaches that the resin solids content of the dual cure coating composition is further composed of [0008] 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component [0011], wherein it comprises cross-linking components conventional for cross-linking hydroxy-functional binders [0041], wherein the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which reads on the coating composition according to claim 1, comprising from 4 to 40% by weight of a crosslinking agent having functional groups that are reactive to OH groups, as component (B). The % by weight is based on the calculations 40% * 10% / 100% = 4 and 80% * 50% / 100% = 40%.
Flosbach does not teach with sufficient specificity that the coating composition according to claim 1 comprises from 16 to 20% by weight of a crosslinking agent having functional groups that are reactive to OH groups, as component (B). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the wt. % of Flosbach’s at least one cross-linking agent for the hydroxy-functional component in Flosbach’s dual cure coating composition to be 16 to 20% by weight. The proposed modification would read on the coating composition according to claim 1, comprising from 16 to 20% by weight of a crosslinking agent having functional groups that are reactive to OH groups, as component (B) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an extent to which Flosbach’s at least one cross-linking agent for the hydroxy-functional component cross-links and/or cures Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition when it is dual cured and/or cross-linked, and for optimizing an ability of Flosbach’s dual cure coating composition to be applied to a surface because Flosbach teaches that the resin solids content of the dual cure coating composition is composed of [0008] 10 to 50 wt. % of at least one cross-linking agent for the hydroxy-functional component and optionally the at least one binder other than the polyester urethane and/or the at least one reactive diluent [0011], 30 to 90, preferably 40 to 70 wt. % of at least one hydroxy-functional polyester urethane having olefinic double bonds [0009], and 0 to 60, preferably 5 to 50 wt. % of at least one binder other than the polyester urethane and/or at least one reactive diluent [0010], and that in the ready-to-apply state, the dual cure coating compositions have a solids content, constituted by the resin solids content, at least one photoinitiator, optionally together with non-volatile additives, optionally pigments, and optionally extenders of 40 to 80 wt. % [0046], which means that the wt. % of Flosbach’s at least one cross-linking agent for the hydroxy-functional component in Flosbach’s dual cure coating composition would have affected an extent to which Flosbach’s at least one cross-linking agent for the hydroxy-functional component cross-links and/or cures Flosbach’s at least one hydroxy-functional polyester urethane, Flosbach’s at least one binder other than the polyester urethane and/or at least one reactive diluent, and Flosbach’s dual cure coating composition, and would have affected an ability of Flosbach’s dual cure coating composition to be applied to a surface.
Response to Arguments
Applicant’s arguments, see p. 6-9, filed 07/23/2026, with respect to the rejection(s) of claims 1, 3, 4, and 6-20 under 35 U.S.C. 103 as being unpatentable over Flosbach et al. (US 2003/0191272 A1) in view of Baumgart (US 2004/0157003 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Flosbach et al. (US 2003/0191272 A1).
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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