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 .
Response to Arguments
In response to the non-final Office Action (dated 1 December 2025) the Applicant submits the following:
No claim cancellations or claim amendments have been entered.
The Applicant challenges the combination of Dong in view of Zhan & Joege, stating Joege does not teach combination of a polyurethane polymer and an acrylic polymer and therefore, employing a range taught by Joege as a guide for the modification of Dong in view of Zhan is improper (Remarks, p. 8, top paragraph).
The examiner maintains the rejection as Joege was only used insofar as employing the hydroxyl number of the binder of the coat as a guide for the modification of Dong in view of Zhan. While Joege’s binder is not identical to the claimed binder, the reference does nevertheless teach an acrylic binder (p. 7, [0084]-[0085]) used in combination with a polyurethane resin in applications similar to those of Dong and Zhan. The prior art compositions and end uses are sufficiently related that one skilled in the art would look to Joege for a suitable range of properties like OH value.
The Applicant further argues that when an acrylic binder with the claimed hydroxyl number is used, the resulting resin allows for a composition that exhibits a variety of improved properties (chemical resistance, transparency, lower gloss, etc.). The Applicant states the above improvements are not mentioned in Joege (Remarks, p. 8, bottom paragraph).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., all properties except gloss, Remarks, p. 8, bottom paragraph) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
This rejection is FINAL.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 16 & 24 are rejected under 35 U.S.C. § 103 as being obvious over Dong et al. (US 10,184,065 B2) in view of Zhan et al. (US 2019/0119522 A1) and Joege et al. (US 2016/0251542 A1).
Regarding claims 1 & 9, Dong teaches a composition comprising an acrylic polymer dispersion and a polyurethane/acrylic hybrid; the intended purpose of said composition is to serve as a coating (Abstract). The polyacrylic (PA) dispersion may comprise a homopolymer of acrylic, a copolymer of acrylic, a copolymer of acrylic with other vinyl monomers, or mixtures thereof (col. 4, lines 33-36). For said acrylic polymers, Dong defines ‘polyacrylic’ &/or ‘PA’ to mean polymers, copolymers or resins resulting from the polymerization of one or more acrylic monomers (i.e., methyl acrylate, ethyl acrylate, butyl acrylate, 2-ethylhexyl acrylate, acrylic acid, etc.) &/or methacrylate monomers (i.e., methyl methacrylate, ethyl methacrylate, butyl methacrylate, hexyl methacrylate, cyclohexyl methacrylate, benzyl methacrylate, methacrylic acid) and other vinyl monomers, such as styrene, alpha-methyl styrene, vinyl acetate and acrylonitrile (col. 1, line 63 – col. 2, line 7). In an embodiment, the acrylic polymer comprises units of (DAAM) diacetone acrylamide (col. 1, lines 42-44). In another embodiment, the polyurethane/acrylic hybrid dispersion comprises units of (DAAM) diacetone acrylamide (col. 1, lines 46-48).
As such, Dong teaches a composition suitable for use as a coating, said composition comprising an acrylic polymer (binder) and a polyurethane/acrylic hybrid dispersion, wherein either the acrylic polymer or the polyurethane/acrylic hybrid or both (col. 2, lines 42-45) comprise units of diacetone acrylamide (DAAM), and may further comprise any of the acrylic monomers mentioned above.
Dong is silent on the nature of the coating (topcoat, sealing coat, primer, etc.) and further does not teach the hydroxyl number of the acrylic polymer (polyacrylic) as required by the claim.
In the same field of endeavor, Zhan teaches a coating composition resulting in coatings with balanced flexibility & anti-tacky properties (Abstract). The coating composition comprises a polyurethane-acrylic polymer in the form of an aqueous dispersion (p. 2, [0022]). The acrylic polymer may comprise units of ethylenically multifunctional compounds, with an example thereof provided as allyl methacrylate. The acrylic polymer may also comprise units of ethylenically monofunctional compounds, with examples thereof provided as styrene, 2-ethylhexyl (meth)acrylate, methyl methacrylate, and butyl acrylate (p. 3, [0034], [0035]). Thus, the acrylic polymer taught by Zhan is comparable to the acrylic polymer taught by Dong. The primary goal of Zhan’s invention was to create a top coat (p. 1, [0002]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a top coat composition by modifying Dong with the teachings of Zhan as Zhan expressly identifies the shortcomings and inadequacies of the compositions taught by Dong, rendering them not suitable for leather topcoats (p. 1, [0003]).
Modification of Dong in view of Zhan results in a coating composition suitable for use as a topcoat; with said topcoat composition comprising an acrylic polymer (binder) and a polyurethane/acrylic hybrid dispersion, wherein either the acrylic polymer or the polyurethane/acrylic hybrid or both (col. 2, lines 42-45) comprise units of diacetone acrylamide (DAAM), which may further comprise a polymer or copolymer of any of the acrylic monomers previously mentioned.
Both Dong & Zhan are silent on the hydroxyl number of the acrylic polymer as required by the claim.
In the same field of endeavor, Joege teaches a topcoat composition (Abstract) comprising a binder (C) which is a copolymer obtained by polymerization of ethylenically unsaturated monomers in the presence of a polyurethane resin with polymerizable double bonds (p. 6, [0063]). Said binder (C) has preferable hydroxyl number of 5 – 100 mg KOH/g (p. 6, [0068]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a top coat composition by further modifying Dong in view of Zhan by employing the hydroxyl number range of 5 – 100 mg KOH/g as a guide for the appropriate hydroxyl number of the acrylic polymer taught by Dong in view of Zhan as Joege demonstrates this to be a suitable hydroxyl number range for acrylic binders in compositions for top coats. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Dong in view of Zhan in further view of Joege as detailed above results in top coat composition comprising an acrylic polymer (binder) and a polyurethane/acrylic hybrid dispersion, wherein either the acrylic polymer or the polyurethane/acrylic hybrid or both (col. 2, lines 42-45) comprise units of diacetone acrylamide (DAAM), which may further comprise a polymer or copolymer of any of the acrylic monomers previously mentioned, wherein the acrylic (binder) polymer has a hydroxyl number of 5 – 100 mg KOH/g, reading on limitations established by claims 1 & 9.
Regarding claim 2, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Joege details the weight ratios of components in their composition, teaching binder (C) is present in a ratio of 1:2.5 – 1:1 to binder (A). Binder (A) may be a polyurethane dispersion (p. 5, [0048]), and is comprised in the composition in amounts of 20% – 60% (p. 5, [0052]). Therefore, binder (C) will be present in amounts of 8% – 50%.
It would have been obvious to one of ordinary skill in the art at the time of filing to create a top coat by further modifying Dong in view of Zhan in further view of Joege (previously detailed) by employing the ratio of acrylic binder (C) to polyurethane dispersions (A) taught by Joege as a guide when making said top coat composition, as Joege demonstrates these are appropriate amounts of each component in top coat formulations. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 3 & 4, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Dong teaches the coating composition may contain at least one thickener, defoaming agent, surfactant, dispersant, solvent, biocides, colorants, rheology modifier, crosslinkers (col. 5, lines 11 – 18). Dong expresses preferred use of diisocyantes, with examples thereof provided such as hexamethylene isocyanate and isophorone diisocyanate (col. 3, line 59 – col. 4, lines 12). Dong does not teach the use of said diisocyanates as hardeners explicitly.
In the same field of endeavor, Joege discloses the use of hexamethylene-1,6-diisocyanate (HDI) as a preferred hardener to be used in conjunction with polyurethane (p. 4, [0044]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a top coat by further modifying Dong in view of Zhan in further view of Joege (previously detailed) by using HDI as a hardener in said top coat composition, as Joege teaches HDI to be a suitable hardener in similar compositions. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 5 & 6, maintaining the modification of Dong in view of Zhan and Joege previously detailed, the phrases “provided from at least one biobased source” and “wherein the at least one biobased source is a vegetable source’ refer to the process by which the claimed polyurethane dispersion is obtained. This limitation is further detailed in the instant specification (p. 4 & 5, [0049]). The specification details various biobased sources, however, none of the mentioned biobased sources appear to impart any physical, structural or other compositional distinction to the end product (i.e., polyurethane dispersion). Therefore, the phrase “provided from at least one biobased source’ is interpreted as a product-by-process limitation.
The patentability of a product, does not depend on its method of production; determination of patentability is based on the product itself. If the product in the product- by-process claim is the same as, or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. See MPEP § 2113.
Regarding claims 7 & 8, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Joege teaches the use of silica (p. 8, [0091]) in amounts of 0.1% – 50% (p. 8, [0095]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 10, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Zhan discloses suitable glass transition temperatures (Tg) of the acrylic polymer ranging from -13°C – 10°C (p. 3, [0036]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 11, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Dong discloses the coating composition is an aqueous (waterborne) composition (col. 1, lines 5 & 6).
Regarding claims 12 & 13, maintaining the modification of Dong in view of Zhan and Joege previously detailed, Dong states the invention relates to low volatile organic compounds (VOC) and Joege discloses their coating composition as substantially free of organic solvents & thus, more benign (p. 1, [0007]) with Joege expressly stating the coating composition more preferably contains no more than 1.0 wt.% organic solvents, and most preferably contains no organic solvents at all (p. 2, [0021]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 14 – 16, as shown in detail herein, the modification of Dong in view of Zhan in further view of Joege, results in a composition for use as a top coat that abides by the limitations of claims 1 – 16 & 24, and thus, is in effect identical to the top coat composition of the instant application. Products of identical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP § 2112.01.
Regarding claim 24, maintaining the modification of Dong in view of Zhan in further view of Joege previously detailed, although Dong, Zhan & Joege do not explicitly claim an article comprising a substrate with their inventive coating system disposed on said substrate, Joege provides examples of their coating system disposed on substrates throughout the specification. For example, the inventive coating composition is applied as a top coat to a substrate with a metal surface (p. 9, [0099]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 17 – 21 are rejected under 35 U.S.C. § 103 as being obvious over Dong et al. (US 10,184,065 B2) in view of Zhan et al. (US 2019/0119522 A1) and Joege et al. (US 2016/0251542 A1) in further view of Thomas et al. (US 2015/0299502 A1).
Regarding claim 17, maintaining the modification of Dong in view of Zhan and Joege previously detailed, neither Dong nor Zhan teach their composition further comprises a sealing coat. Joege teaches aqueous coating compositions comprising acrylic binders and polyurethane dispersions for coating compositions applied as a top coat on to a substrate with at least a sealing (primer) coat (Abstract). Joege does not teach an appropriate hydroxyl number for the primer/sealing coat.
In the same field of endeavor, Thomas teaches a primer coating composition comprising (a) a (meth)acrylic polymer containing hydroxyl groups (p. 3, [0034]), (b) a polyester containing hydroxyl groups with a hydroxyl value of at least 100 mg KOH/g, and (c) a crosslinking agent containing at least 2 isocyanate groups (Abstract). The (meth)acrylic polymer has a hydroxyl number of 15-100 mg KOH/g (p. 3, [0039]). Thomas also discloses one of the goals for creating their invention is to provide compositions for primer coats that provide additional properties, stating adhesion as one of the desired aforementioned properties (p. 1, [0005]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a coatings system comprising a top coat composition (previously detailed) & further comprising a sealing (primer) coat composition by modifying Dong in view of Zhan in further view of Joege (previously detailed) by incorporating the sealing coat taught by Thomas, as said sealing coat is expressly recognized as being suitable for use in this capacity. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Dong in view of Zhan and Joege in further view of Thomas as detailed above results in a coatings system comprising a top coat composition (abiding by limitations in claims 1 – 16 & 24); said coatings system further comprising a sealing coat abiding by the limitations established in claim 17.
Regarding claim 18, maintaining the modification of Dong in view of Zhan and Joege in further view of Thomas previously detailed, Thomas teaches their inventive primer coat (i.e., corresponding to the claimed sealing coat) may further comprise additional additives, explicitly citing surfactants and stabilizers (i.e., dispersants) (p. 7, [0084]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 19, maintaining the modification of Dong in view of Zhan and Joege in further view of Thomas previously detailed, Thomas teaches the aforementioned (meth)acrylic polymer comprises a high Tg monomer (p. 4, [0045]), providing examples thereof as methyl methacrylate. A polymer formed from methyl methacrylate reads on a polymethyl methacrylate. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 20, maintaining the modification of Dong in view of Zhan and Joege in further view of Thomas previously detailed, Thomas discloses the allowable hydroxyl values of the (meth)acrylic polymer component, citing a range of 15 to 100 mg KOH/g (p. 3, [0039]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 21, the modification of Dong in view of Zhan & Joege in further view of Thomas remains as applied to claims 17 – 20 above. In an embodiment, Zhan discloses the Tg of the acrylic polymer ranges from -13°C to 10°C (p. 3, [0009]). In another embodiment, Zhan teaches the Tg of the acrylic polymer ranges from −10°C to 0°C (p. 5, [0058]).
It would have been obvious to one of ordinary skill in the art at the time of filing to create a coatings system comprising a top coat composition (previously detailed) & further comprising a sealing (primer) coat composition by modifying Dong in view of Zhan in further view of Joege in further view of Thomas (previously detailed) by employing the two Tg ranges taught by Zhan for the acrylic polymer as guides for the acrylic polymers used in the coating compositions.
As Zhan discloses two unique Tg ranges (one range comprising approximately equal amounts of positive & negative Tg temperatures, the other range comprising only negative Tg numbers), it would have been obvious to try embodiments wherein the acrylic polymer in the sealing coat has only negative Tg temperatures, thus resulting in a Tg range of -13°C – 0°C. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 22 is rejected under 35 U.S.C. § 103 as being obvious over Dong et al. (US 10,184,065 B2) in view of Zhan et al. (US 2019/0119522 A1) and Joege et al. (US 2016/0251542 A1) in further view of Thomas et al. (US 2015/0299502 A1) in further view of Gothlich et al. (US 2008/0171195 A1).
Regarding claim 22, the modification of Dong in view of Zhan in further view of Joege in further view of Thomas remains as applied to claims 17 – 21 above. Joege recognizes the disadvantages associated with solvents in liquid coating compositions and emphasizes the need for coating compositions that are substantially free of organic solvents (p. 1, [0006], [0007]). Joege does not expressly teach a waterborne sealing (primer) layer, however, Joege does disclose that suitable primer coats are described in WO2006/079628 (p. 10, [0138]). Gothlich is the English equivalent of this publication.
In the same field of endeavor, Gothlich teaches primer layers that can be based on organic solvents, aqueous, or predominantly aqueous preparations, or solvent-free preparations (p. 3, [0055]). It would have been obvious to one of ordinary skill in the art at the time of filing to select an aqueous or predominantly aqueous (i.e., waterborne) composition for the sealing coat as Joege expressly teaches away from the use of solvent-based coatings; recognizes the suitability of primers disclosed by Gothlich; and Gothlich recognizes the suitability of waterborne primers. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights