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 .
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, 3, 4, 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Flosbach (US20030191272, herein Flosbach), in the view of Baumgart (US20040157003, herein Baumgart).
Regarding Claims 1, 3, 4, 6, 19, 20, Flosbach teaches dual cure coating composition [0008] comprising: binder, (meth)acrylic copolymer [0035] reads on polyacrylates (A1), in the range of 0-60% [0035], overlaps the claimed range; reactive diluent, such as di(meth)acrylate [0039], which is oligomer with olefinic double bond, in the range of 0-60% [0035], overlaps the claimed range; 10 to 50 wt. % cross-linking agent [0011], such as isophorone diisocyanate isocyanurate [0044] with reactive isocyanate functional groups that readily react with hydroxyl group, and overlap the claimed range. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have optimize and utilize the (meth)acrylic copolymer [0035], in the range of 0-60% [0035]; reactive diluent, in the range of 0-60% [0035]; 10 to 50 wt. % cross-linking agent [0011], and apply into the composition preparation. Doing so would further achieve the desired property as of the coatings applied from the dual cure coating compositions, when cured both thermally and by UV irradiation, are distinguished by excellent solvent resistance, acid resistance, mar resistance, hardness and very good optical properties [0055], as taught by Flosbach.
Flosbach teaches binder, (meth)acrylic copolymer [0035], but does not explicitly teach the claimed specified polyacrylate A1. However, Baumgart teaches the methacrylate copolymer (A) formed by the monomers including: ethylhexyl acrylate [0188], 2-hydroxyethyl methacrylate [0188], with the acid number of 15 mg KOH/g; OH number of 175 mg KOH/g [0189] both lie in the claimed ranges, which indicates the (meth)acrylate copolymer synthesized from (meth)acrylate without hydroxyl functionality, (meth)acrylate with hydroxyl functionality.
Flosbach and Baumgart are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of (meth)acrylate copolymer-based dual cure coating composition formation toward application in automotive bodies and body parts. 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 Flosbach to substitute the specific methacrylate copolymer (A) formed by the monomers including: ethylhexyl acrylate, 2-hydroxyethyl methacrylate [0188], with the acid number of 15 mg KOH/g; OH number of 175 mg KOH/g [0189] and apply into the composition formation. Doing so would further achieve the outstanding scratch resistance with high hardness; outstanding optical property [0184] as taught by Baumgart.
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.
Flosbach teaches the coatings applied from the dual cure coating compositions were thermally cured [0055], and form the coatings on desired substrates [0052].
Flosbach and Baumgart teach the coating composition as set forth above, which is capable of forming the coating layer upon curing process. As such, the teaching of Flosbach and Baumgart can render obvious of the desired hardness of the coating layer, with the same degree as the breath of the instant claimed limitations.
Regarding Claims 7, 8, Flosbach teaches polyester polyol (a2) produced by polycondensation from the previously stated components (a21), (a22) [0034], wherein, the (a21) is glycerol [0028], which is aliphatic trihydric alcohol, with 3 hydroxyl groups; (a22) is 1,4-cyclohexanedicarboxylic acid [0031], which is aliphatic dicarboxylic acid with 2 carboxyl groups.
Regarding Claims 9, 10, Flosbach teaches free or blocked form as cross-linking agents (c) are the polyisocyanates [0043], such as isophorone diisocyanate isocyanurate [0044], which is (cyclo)aliphatic polyisocyanate.
Regarding Claim 11, Flosbach teaches reactive diluent is di(meth)acrylate [0039].
Regarding Claim 12, Flosbach teaches binder, (meth)acrylic copolymer [0035], but does not explicitly teach the claimed specified polyacrylate A1 and the molecular weight. However, Baumgart teaches the methacrylate copolymer (A) formed by the monomers including: ethylhexyl acrylate, 2-hydroxyethyl methacrylate [0188], Baumgart further teaches the (meth)acrylate copolymer (A) has number-average molecular weight of from 1000 to 10000 daltons [0093, 96], overlaps the claimed range. Flosbach and Baumgart are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of (meth)acrylate copolymer-based dual cure coating composition formation toward application in automotive bodies and body parts. 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 Flosbach to substitute the specific methacrylate copolymer (A) formed by the monomers including: ethylhexyl acrylate, 2-hydroxyethyl methacrylate [0188] with number-average molecular weight of from 1 000 to 10 000 daltons [0093, 96] and apply into the composition formation. Doing so would further achieve the outstanding scratch resistance with high hardness; outstanding optical property [0184] as taught by Baumgart.
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 13, Flosbach and Baumgart collectively teach the coating composition set forth above in claim 1. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Flosbach and Baumgart teach all of the claimed ingredients, in the claimed amounts, and Flosbach teaches the composition as being made by a substantially similar process as of thermally cured [0055]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, instant application discloses producing a cured coating layer on a substrate by application and subsequent thermal curing the coating composition [Instant App. US20220251410; 0013]. Therefore, the claimed effects and physical properties, i.e. VOC, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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 14, Flosbach teaches the dual cure coating compositions are produced only shortly before application by mixing together separately stored components [0042], which indicates the dual (two) components been mixed and form the composition, then thermally cured [0055].
Regarding Claims 15-16, Flosbach teaches the dual cure coating compositions are produced only shortly before application by mixing together separately stored components [0042], Flosbach further teaches the coatings applied from the dual cure coating compositions were thermally cured [0055], and form the coatings on desired substrates [0052].
Regarding Claims 17-18, Flosbach teaches the coatings applied from the dual cure coating compositions were thermally cured [0055], and form the coatings on desired substrates [0052], reads on the coating layer.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Flosbach and Baumgart teach all of the claimed ingredients, in the claimed amounts set for the above, and Flosbach teaches the coating layer as being made by a substantially similar process as of thermally cured [0055]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, instant application discloses producing a cured coating layer on a substrate by application and subsequent thermal curing the coating composition [Instant App. US20220251410; 0013]. Therefore, the claimed effects and physical properties, i.e. hardness of the coating later, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 extension fee 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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