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
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
The Applicant argues the disclosure of Shaffer is too general to provide motivation for a specific filler amount to use in the composition of Rule. Additionally, the Applicant argues that Rule and Shaffer have different viscosity and solids content so there is no reasonable expectation of success in incorporating 40% by weight or greater of inorganic filler into the composition of Rule.
The Applicant argues that in order for Rule to be used as a prior art in combination with Schaffer, three very specific selections would have to be made from the disclosure of Schaffer to conceive of trying to incorporate 40% by weight or greater of an inorganic filler into the compositions of Rule: 1) to add a filler; 2) to add filler in an amount of 40% by weight or greater out of all listed optional ingredients potentially being included in an amount of up to 50% by weight; and 3) to prepare a high solids composition (e.g., a liquid composition that is at least 90% solids). This is acknowledged by the Examiner.
However, all of these selections would be obvious to select in combination as each is taught as a suitable potential formulation of Schaffer and the selection of each aspect of the invention as taught by Schaffer is obvious. Regardless of whether a specific combination of the selection of options 1-3 is chosen or only one, all iterations are obvious as all are taught by Schaffer.
The Applicant also argues that Shaffer does not provide any guidance to make such a combination or provide expectations that the combination would be feasible because Shaffer states that the “choice of solvent or diluent and the concentration depends on the choice of coating ingredients in the coating process. The Applicant argues that there is no possible way to coat any liquid composition that is 100% solids coating, particularly compositions containing 40% filler.
However, a coating can comprise a high level of solids and still be a coating composition, wax coatings for example are coating compositions and can still be used as coatings. Shaffer argues that these coatings can comprise high levels of solids and be used as liquid coatings (Paragraph [0078]).
Response to Amendment
The Declaration under 37 CFR 1.132 filed December 8, 2025 is insufficient to overcome the rejection of claims 3-7, 11-14, and 21 based upon Rule in view of Shaffer as set forth in the last Office action.
The Applicant argues that the Affidavit written by Rule demonstrates that 40% inorganic filler cannot be incorporated in the composition of Rule WO 2019/048956.
Specifically, Rule argues that more than 20% inorganic filler in a high viscosity polymer material cannot be incorporated and still maintain a functional 2 part curable composition. Rule argues that small amounts of filler are beneficial but amounts above 20% were expected to raise viscosity too much. Rule also argues that the oligomers of WO 2019/048956 are very viscous and the incorporation of more than 20% filler would increase viscosity at least ten fold and likely more. Rule states that in this composition with a filler amount of 40% or more would result in viscosities that are too high and a formulation that is no longer handleable as a two part composition.
This declaration is regarded as opinion based evidence MPEP 716.01(c)(III). Therefore, the examiner must assess the value of opinion based evidence by considering the nature of the matter sought be established, the strength of any opposing evidence, and the interest of the expert in the outcome of the case.
The Declarant argues that increased filler of more than 20% will provide at least a 10 fold increase, at minimum in the compositions viscosity. The Declarant provided no evidence of this.
Additionally, two part, paste-like, very high viscosity compositions do exist. Regardless of whether a high viscosity material was the intended outcome of Rule, this does not discount its potential as a coating composition.
Also inorganic fillers do not necessarily increase viscosity. Some inorganic fillers are used as dispersion aids or lubricants.
The interest of the declarant on the outcome of this case is high, as the Declarant is an inventor on the present case, and would have an interest in finding that the claims are patentably distinct over Rule WO 2019/048956.
This factor weighs significantly against the weight of Declarant’s opinion. The Declaration is therefore insufficient to establish non-obviousness of the claimed invention.
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 3-7, 11-14, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Rule WO 2019048956 in view of Shaffer US 20110229645A1.
Regarding claims 12, 3-4, and 22, Rule teaches a two part composition comprising a first part comprising a polymeric material comprising a reaction product of a uretdione-containing material comprising a reaction product of a diisocyanate reacted with itself, a first hydroxyl-containing compound having a single OH group, wherein the first hydroxyl-containing compound is a primary alcohol or a secondary alcohol, and a second hydroxyl-containing compound having more than one OH group (Claim 13). Rule teaches the second part comprises at least one amine, the at least one amine having an average amine functionality of 2.0 or greater, wherein each amine is a primary amine or a secondary amine (Claim 13).
Rule teaches the uretdione functionality is greater than 1.1 this falls within the claimed range of the claimed uretdione functionality. Rule does not teach the molecular weight of the uretdione material, but 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. Therefore, Rule’s uretdione material will necessarily possess the claimed uretdione functionality and molecular weight.
Rule teaches the composition can comprise a filler (Paragraph [0064]). However, Rule is silent on the amount of filler in the composition.
Shaffer teaches a curable composition comprising a uretdione composition prepared from an isocyanate and a polyol (Paragraph [0011-0015]). Shaffer also teaches that the composition can be used to for protective coating applications (Paragraph [0077]). Rule teaches that the composition can be used as a coating (Abstract). Shaffer also teaches that the composition can comprise up to 50% of filler based on the total composition (Paragraph [0067]). It would have been obvious to one of ordinary skill in the art at the time of filing to use filler amount of Shaffer in the composition of Rule because Shaffer teaches that up to 50% of filler is a suitable amount of filler in a similar composition for a similar application.
Rule in view of Shaffer is silent on suitable amounts of filler in each part of the two part composition. However, there are only three possible combinations when adding filler to the composition of Rule: filler in only the first part; filler in only the second part; or filler in both the first and second parts. It would have been obvious to select inclusion of filler in both the first and second parts as this represents one option in a very limited set of possible combinations. It would have been further obvious to include filler in both the first and second components in amounts corresponding to greater than 0 and less than 100 wt% of the individual components such that the sum total equals up to 50 wt%, as this range is recognized by Shaffer as being suitable in similar formulations used in similar applications. This overlaps the amount of filler required in the claimed first and second parts.
Regarding claim 5, Rule teaches the polyol can be an alkylene polyol (Paragraph [0054]). This reads on the claimed “alkylene polyol.”
Regarding claims 6, Rule teaches the hydroxyl compound can have the formula:
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62
243
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where R9 can be:
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84
525
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where R14 and R15 are alkylenes y is an integer from 1 to 40 (Paragraph [0054-0056]). This reads on the limitations of claim 6.
Regarding claim 7, Rule teaches that the compound can be poly(tetramethylene ether) glycol.
Regarding claim 11, Rule teaches that the viscosity of the polymeric material has a dynamic viscosity 10 P or greater (Paragraph [0067]). This exactly overlaps with the claimed range of 10,000 cP or more.
Regarding claim 13, Rule teaches that the amines can be amine terminated polyethers (Paragraph [0073]). This reads on the limitations of claim 13.
Regarding claim 14, Rule teaches that the amine can be an amine with a functionality that is greater than 2.0 (Paragraph [0073]). This overlaps with the claimed range of 3.0 or less.
Regarding claim 21, Rule teaches the polymeric material comprises 90% solid components or greater (Paragraph [0003]).
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Rule WO 2019048956 A1 in view of Shaffer US 20110229645A1 in further view of Senkfor US 20130344340A1.
Regarding claim 2, Rule is silent on the type of filler. Senkfor teaches a two component composition comprising an isocyanate component (a) and an amine component (b) (Abstract). Senkfor also teaches that the isocyanate component can be an isocyanate prepolymer prepared from a polyisocyanate reacted with a polyol (Abstract, Paragraph [0017]). Senkfor teaches the polyisocyanate can also be a uretdione like DESMODUR N 3400 (Paragraph [0016]). DESMODUR N 3400 is a polyuretdione prepared from hexamethylene diisocyanate reacted with itself (DESMODUR N 3400 Data Sheet, Page 1). This reads on the limitations of (a)(i) and (a)(ii).
Senkfor teaches the addition of a second component comprising an amine (Abstract). Senkfor teaches the amine can be a primary or secondary amine (Paragraph [0020]). This reads on the claimed “primary or secondary amine.” Senkfor also teaches the amine can be a polyamine having at least 2 functional groups (Paragraph [0020]). This reads on the limitations of claim a.
Senkfor also teaches the composition can comprise fillers. Senkfor teaches that the composition can be used to form a protective coating (Paragraph [0153]).
Senkfor teaches that the filler can be silica (Paragraph [0155]). This reads on the claimed silicon dioxide. It would have been obvious to one of ordinary skill in the art at the time of filing to use the filler of Senkfor in the composition of Rule as the filler of Senkfor is shown to be suitable in a similar composition in a similar application.
Regarding claim 9, Senkfor teaches that sulfur containing compounds are fuel resistant (Paragraph [0004]). Senkfor teaches that polysulfides have high tensile strength, high tear strength, thermal resistance and resistance to high ultraviolet light (Paragraph [0004]). Senkfor also teaches that the incorporation of sulfur containing compounds into polyurea compositions would be desirable to provide optimum properties (Paragraph [0005]). Senkfor also teaches that the sulfur containing compound can comprise an epoxy group (Paragraph [0027]). This reads on the claimed “epoxy component.”
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the sulfur containing compound comprising an epoxy group in the composition of Rule because of the advantages of the incorporation of a sulfur containing compound.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rule WO 2019048956 A1 in view of Shaffer US 20110229645A1, in further view of Priemen US 20160222226A1.
Regarding claims 8, Rule is silent on the molecular weight of the polyol. Senkfor is also silent on the molecular weight of the resulting polyol. Priemen teaches a coating composition comprising a filler (Paragraph [0001]) a uretdione (Paragraph [0066]) reacted with a polyol (Paragraph [0066-0068]). Priemen teaches the polyol can be polypropylene glycol (Paragraph [0068]). Priemen teaches that the molecular weight of the polyol can be from 400-5000 (Paragraph [0067]). This reads on the limitations of claims 8. It would have been obvious to one of ordinary skill in the art at the time of filing to use the polyol of Priemen in the composition of Rule because Priemen teaches a suitable polyol for use in a similar coating composition for a similar application . "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rule WO 2019048956 A1 in view of Senkfor US 20130344340A1 and Shaffer US 20110229645A1 in further view of Chisorb 336 Data Sheet, 2012.
Regarding claim 10, Rule teaches the composition can comprise additives (Paragraph [0064]). Senkfor also teaches the composition can comprise an additive like a UV absorber (Paragraph [0155]). CHISORB 336 is a cyanoacrylate UV absorber used in coating compositions (Page 1). CHISORB 336 broadens its absorption wavelengths up to about 380 nm without causing any adversely effect on the initial natural color of the substrates being stabilized (Page 1). It would have been obvious to one of ordinary skill in the art at the time of filing to use the UV absorber CHISORB 336 in the composition of Rule in view of Senkfor and Shaffer for the advantage of no adverse effects on the color of the coating. This reads on the claimed acrylate component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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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.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762