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 6/10/2026 have been fully considered but they are not persuasive.
The Applicant argues that the factual question addressed by the Declaration is whether a person of ordinary skill in the art would have had a reasonable expectation of success in incorporating 40% by weight or greater of an inorganic filler into the compositions of Rule.
However, the Declaration says nothing of the expectations of a person of ordinary skill in the art. The Declaration does not establish the level of ordinary skill in the art, does not establish that the Declarant is a person of ordinary skill in the art (as opposed to a person with a greater than ordinary level of skill), and makes no assertions as to the expectations of anyone other than the Declarant. The Applicant has established the Declarant as a person with expert skill in the art (Page 1 of the Declaration). The Declaration does establish the Declarant’s opinion as to the state of the art and likelihood of success. The Declaration qualifies any statements regarding expectation of success as the Declarant’s own opinion (note the use of language such as “I did not think that it would be possible”; “in my experience”; etc.). While the Declaration may factually establish the opinion of one inventor of the instant application, it does not purport to establish any expectations of one of ordinary skill in the art. Any facts established by the Declaration are insufficient to demonstrate non-obviousness of the claimed invention.
Additionally the Applicant further argues that that the Office’s arguments are speculative and that the Office has not provided any evidence to rebut specific factual statements regarding the viscosity of the Rule oligomers and the expected effect of adding 40% or more inorganic filler. To reiterate, the factual evidence established by the Declaration is the inventor’s opinion as to the likelihood of success when using higher amounts of filler in Rule’s composition. The rejection under 35 U.S.C. 103 presents the Office’s position on the obviousness of higher amounts of filler. The Declaration fails to establish expectations associated with one of ordinary skill in the art, nor does the Declaration present any objective evidence of non-obviousness. To the extent that the broad statements regarding Rule are understood by the Applicant to be objective evidence, these statements are not commensurate in scope with the claims and are therefore insufficient to establish non-obviousness.
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, as stated in the previous office action, 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 further argued Rule teaches a fundamentally different composition from the composition of Schaffer.
The cited Rule doesn’t require additives other than fillers in amounts that would require the composition as a whole to include less than 40 wt% of filler. Therefore, all of the further additives are optional. It would have been obvious for the composition to comprise only filler in amounts of up to 50%.
Applicant’s arguments, filed 6/10/2026, with respect to claim 22 have been fully considered and are persuasive. The 35 USC 103 rejection of claim 22 has been withdrawn.
Specifically the Applicant argues that the Examiner cites Schaffer as teaching “up to 50%” of the filler. This does not overlap with the claimed range of 55% or greater. Therefore Schaffer does not teach the required amount of filler.
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 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 21, 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.
Allowable Subject Matter
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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