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, 2, 3, 4, 9-11, 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (EP3527602, herein Yamauchi), in the view of Richter (US5914383, herein Richter), and Kie (JP2015127368, herein Kie, a machine translation is being used for citation purpose).
Regarding Claims 1, 3, 4, 9, 15-19, Yamauchi teaches polyisocyanate which is manufactured via “HDI” [0294] as starting materials, which is “1,6-diisocyanatohexane (also referred to as "hexamethylene diisocyanate"; hereinafter sometimes abbreviated as "HDI"” [0002] matches “HDI” [Instant App. P2; 0020]; the polyisocyanate composition comprising: “components A, C, B” [Table 1, 0323], wherein the A is “(A) of an isocyanurate trimer” [0012] reads on trimolecular polymer “trimolecular isocyanurate structure” [Instant App. P3; 0048]; the C is “(C) pentamer of the aliphatic diisocyanate” [0012] reads on the “pentamethylene-1,5-diisocyanate” [Instant App. P2; 0019]; the B is “(B) of iminooxadiazinedione trimer” [0012] reads on “trimolecular iminooxadiazinedione structure” [Instant App. P3; 0048].
Yamauchi does not explicitly teach wherein the specified iminooxadiazinedione structure is as shown in Formula 1, or the isocyanurate structure is as shown in Formula 2, however, Richter teaches the trimers are iminooxadiazinediones B [P3; L26], structure see below: “R1, R2 and R3 are the same or different and represent the groups obtained by removing an isocyanate group from an aliphatic, cycloaliphatic, aromatic and/or araliphatic isocyanate” [P4; L11].
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Richter further teaches the trimers are isocyanurates A [P3; L40], structure see below:
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The iminooxadiazinediones trimer B and isocyanurates trimer A collectively reads on the formulae 1 and 2, which are “trimolecular polymer” [Instant App. P2; 0012]; and “The trimolecular polymer includes an isocyanurate ring or includes an iminooxadiazinedione ring, N on the structure of the ring is linked with residues of a diisocyanate monomer” [Instant App. P2; 0013].
Yamauchi and Richter are both considered to be analogous to the claimed invention because they are in the same field of polyisocyanate based coating compositions development via polyisocyanate mixture containing isocyanate trimers. 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 Yamauchi to add the teachings of Richter and provide wherein said the specified formulae 1 and 2. Doing so would lead to the desired property of “It may be advantageous to utilize mixtures of certain isocyanates in the trimerization reaction according to the invention, for example, to match in optimal manner the property profile of the respective product or product mixture.” [P8; L24] as taught by Richter.
Yamauchi does not explicitly teach the polymer larger than three molecules, formed by the aliphatic diisocyanate, and comprises an iminooxadiazinedione structure. However, Kie teaches “polyisocyanate having an isocyanurate group is not particularly limited, but examples
thereof include isocyanurate trimers, pentamers, heptamers and higher isocyanurate
polymers.” [0039] wherein “The content (molar concentration) of isocyanurate groups
relative to the total of 100 mol% of isocyanurate groups, iminooxadiazinedione groups” [0121] which can lead to the claimed molar ratio of the iminooxadiazinedione structure in the composition to the isocyanurate structure in the composition is 0.01-0.8:1.
Kie further teaches “The content of the isocyanurate trimer is preferably 55 to 95 mass % based on the total amount of the polyisocyanate composition.” [0040], wherein “polyisocyanate having an isocyanurate group is not particularly limited, but examples thereof include isocyanurate trimers, pentamers, heptamers and higher isocyanurate polymers.” [0039], hence, the pentamers, heptamers and higher isocyanurate polymers can fall into the range of 5 to 45 mass%, wherein, these mass ranges can further lead to the molar ratio of the iminooxadiazinedione structure in the polymer larger than three molecules to the iminooxadiazinedione structure in the composition is 0.2-0.8:1.
Yamauchi and Yie are both considered to be analogous to the claimed invention because they are in the same field of polyisocyanate based coating compositions development via polyisocyanate mixture containing isocyanate trimers. 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 Yamauchi to add the teachings of Yie and provide wherein said the specified molar ratio of the iminooxadiazinedione structure in the composition to the isocyanurate structure and molar ratio of the iminooxadiazinedione structure in the polymer larger than three molecules to the iminooxadiazinedione structure in the composition into the composition development. Doing so would lead to the desired property of “polyisocyanate composition which can give a
coating composition having low viscosity and excellent adhesion and quick-drying properties,
and which also has excellent storage stability; a coating composition containing the
polyisocyanate composition; and a cured product made of the coating composition”. [0010] as taught by Kie.
Regarding Claims 2, Yamauchi teaches “isocyanurate trimer (1) in the polyisocyanate composition according to the present embodiment is not particularly limited, but is preferably 55 mass% to 95 mass%” [0054] overlaps the claimed range.
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)
Regarding Claims 10, 11, Yamauchi teaches “1,6-diisocyanatohexane (hereinafter, simply referred to as "HDI" [0029]
Claims 5, 6, 8, 12, 13, 14, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi (EP3527602, herein Yamauchi), Richter (US5914383, herein Richter) and Kie (JP2015127368, herein Kie, a machine translation is being used for citation purpose) as applied in claim 1 above, in the view of Schaefer (US20180086938, herein Schaefer).
Regarding Claim 5, 6, 8, 12, 13, 14, 20, Yamauchi teaches the formulation of polyisocyanate composition via S1 “HDI” [0294] with the catalyst of “Examples of the catalyst for forming iminooxadiazinedione include: tetraethylammonium fluoride” [0098-99] matches the claimed catalyst in S1, hence, lead to the formation of liquid I;
Yamauchi does not explicitly teach the catalyst in S2, however, Schaefer teaches the “trimethyl-2-hydroxypropylammonium 2-ethylhexanoate (DABCO TMR)” [0177, 0184-185] matches the claimed catalyst.
Schaefer further teaches “The coatings of the invention are produced in a temperature range ambient temperature to 80° C” [0133] overlap the claimed range.
Yamauchi and Schaefer are both considered to be analogous to the claimed invention because they are in the same field of polyisocyanate based coating compositions development via catalyst selection. 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 Yamauchi to add the teachings of Schaefer and provide wherein said the catalyst of “trimethyl-2-hydroxypropylammonium 2-ethylhexanoate (DABCO TMR)” [0177] and at the desired temperature along the reaction as of “The coatings of the invention are produced in a temperature range ambient temperature to 80° C” [0133] to further react the liquid I taught by Yamauchi, and continue to generate the claimed liquid II, i.e., formulate the coating composition via the S1 and S2. Doing so would lead to the desired property of “The coating compositions of the invention exhibit, in particular, rapid drying and development of pendulum hardness at temperatures to 80° C. and good chemical resistance.” [0141] as taught by Schaefer.
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)
Yamauchi teaches the step of S3 “purification was performed twice with a thin film evaporator under conditions” [0294]
Regard to the conversion rate, Yamauchi teaches “Polyisocyanates which have isocyanurate groups and derive from aliphatic diisocyanates; The isocyanatoisocyanurates generally have an NCO content of 10% to 30% by weight” [0057] which indicates and overlaps the claimed conversion rate in the S1 and S2 steps separately.
Hence, Yamauchi and Schaefer have collectively taught all the claimed ingredients, reaction temperature and conversion rates. 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 Yamauchi to combine the teachings of Schaefer and provide wherein said the claimed steps S1 to S3. Doing so would lead to the desired property of “The coating compositions of the invention exhibit, in particular, rapid drying and development of pendulum hardness at temperatures to 80° C. and good chemical resistance.” [0141] as taught by Schaefer.
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that “Kie fails to disclose this claimed limitation "a molar ratio of the iminooxadiazinedione structure in the composition to the isocyanurate structure in the composition is 0.01-0.8:1" and "a molar ratio of the iminooxadiazinedione structure in the polymer larger than three molecules to the iminooxadiazinedione structure in the composition is 0.2-0.8:1", and Kie also fails to teach the special role of the content and distribution of iminooxadiazinedione groups/structures in improving the performance of the composition”, is not persuasive.
In this case, Kie explicitly teaches “The content of the isocyanurate trimer is preferably 55 to 95 mass % based on the total amount of the polyisocyanate composition.” [0040], wherein “polyisocyanate having an isocyanurate group is not particularly limited, but examples thereof include isocyanurate trimers, pentamers, heptamers and higher isocyanurate polymers.” [0039], hence, the pentamers, heptamers and higher isocyanurate polymers can fall into the range of 5 to 45 mass%, wherein, these mass ranges can further lead to the molar ratio of the iminooxadiazinedione structure in the polymer larger than three molecules to the iminooxadiazinedione structure in the composition can lead to the claimed ratio range which is 0.01-0.8:1, which is the distribution of iminooxadiazinedione groups/structures.
Furthermore, Kie teaches the desired property of “polyisocyanate composition which can give a
coating composition having low viscosity and excellent adhesion and quick-drying properties,
and which also has excellent storage stability; a coating composition containing the
polyisocyanate composition; and a cured product made of the coating composition” [0010] and weather resistance, adhesion [0113], actually match the aliphatic polyisocyanate composition provided by the present disclosure may have both a lower viscosity and a better crosslinking property, may significantly reduce the usage amount of a solvent when used in a coating composition, is more environmentally friendly, and also has a better paint film property so that the drying speed, paint film hardness, solvent rub resistance and many other aspects are significantly improved. [Instant App. US20220298293; 0039], hence, match these properties are expected results.
Hence, Kie not only explicitly teaches the claimed molar ratio range, matches the claimed distribution of iminooxadiazinedione groups/structures; but also, teaches the aliphatic polyisocyanate composition with the specific desired properties as expected property as set forth above, which matches the unexpected property raised by the applicant, which are actually expected results, therefore, Kie does not teach away the instant application.
Conclusion
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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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767