DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/05/2026 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 6/17/2022 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-24, 26, 27, and 29-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim limitation “and (ii) optionally at least one polymer carrying more than one OH group, which is different from the polyester polyol of claim 17 (D)” is indefinite as claim 17 has been deleted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 20-24, and 26-32 (all pending claims) is/are rejected under 35 U.S.C. 103 as being unpatentable over Clauss et al (US 2021/0108784) in view of Kube (US 6,191,212).
Clauss teaches an organic-solvent based (0171) two-component coating composition comprising a) a first component (K1) comprising (1) at least one polyester polyol, and b) a second component (K2) comprising (1) at least one compound, oligomer or polymer carrying more than one N=C=O group m (0205)or blocked N=C=O group (0224). Clauss teaches the polyester polyol (the polyester in Claus is understood to be polyester polyol because it comprises -OH functionality as a result of component B being present) comprising units derived from:
a) dicarboxylic acid (herein understood to read on the claimed “at least one COOH group or derivative thereof carrying component or mixture of components (A) comprising at least one compound carrying two COOH groups or derivatives thereof (A1).” Clauss teaches A1 may be cyclohexane-1,2- dicarboxylic acid or a derivative thereof (0093).
b) at least one monoalcohol, a diol, a triol, a tetraol or polyol (abstract) (herein understood to read on the claimed “one OH group carrying component or mixture of components (B)” such as:
(i) at least one compound carrying three OH groups selected from the group consisting of 1,3,5-tris(hydroxymethyl)isocyanurate, 1,3,5-tris(2-hydroxyethyl) isocyanurate, 1,3,5-tris(2-hydroxyisopropyl)isocyanurate, 1,3,5-tris(2- hydroxypropyl )isocyanurate (0119)
(ii) at least one compound carrying two OH groups selected from the group consisting of 1,1-bis(hydroxymethyl)-cyclohexane, 1,2-bis(hydroxymethyl)- cyclohexane, 1,3-bis(hydroxymethyl)-cyclohexane, 1,4-bis(hydroxymethyl)- cyclohexane, 1,1-bis(hydroxyethyl)-cyclohexane, 1,2-bis(hydroxyethyl)- cyclohexane, 1,3-bis(hydroxyethyl)-cyclohexane and 1,4-bis(hydroxyethyl)- cyclohexane (0118),
(ii) optionally at least one compound or polymer carrying at least three OH groups, which is different from B1 (0119) (B3), and
(iv) optionally at least one compound or polymer carrying two OH groups, which is different from B2 (0118)
The polyester polyol may be obtained by a process comprising the step of reacting a) at least one COOH group or derivative thereof carrying component or mixture of components (A) comprising (i) at least one compound carrying two COOH groups or a derivative thereof (A1), b) at least one OH group carrying component or mixture of components (B) comprising (i) at least one compound carrying three OH groups selected from the group consisting of 1,3,5-tris(hydroxymethyl)isocyanurate, 1,3,5-tris(2-hydroxy- ethyl)isocyanurate, 1,3,5-tris(2-hydroxyisopropyl)isocyanurate, 1,3,5-tris(2- hydroxypropyl] )isocyanurate and 1,3,5-tris(2-hydroxybuty])isocyanurate (B1), (ii) at least one compound carrying two OH groups selected from the group consisting of 1,1-bis(hydroxymethyl)-cyclohexane, 1,2-bis(hydroxymethyl)- cyclohexane, 1,3-bis(hydroxymethyl)-cyclohexane, 1,4-bis(hydroxymethyl)- cyclohexane, 1,1-bis(hydroxyethyl)-cyclohexane, 1,2-bis(hydroxyethyl)- cyclohexane, 1,3-bis(hydroxyethyl)-cyclohexane and 1,4-bis(hydroxyethyl)- cyclohexane (B2), (iii) optionally at least one compound, oligomer or polymer carrying at least three OH groups, which is different from B1 (B3), and (iv) optionally at least one compound, oligomer or polymer carrying two OH groups, which is different from B2 (B4), (abstract). Clauss teaches component B3 is optional, thus, the ratio of mol OH groups derived from components B1 to the sum of mol OH groups derived from components B1 and B3 may be 100%.
With regards to claim 20, Clauss teaches A1 may be cyclohexane-1,2- dicarboxylic acid or a derivative thereof (0093).
With regards to claim 21, Clauss teaches B1 may be tris(2-hydroxyethyl) isocyanurate (0119)-herein understood to anticipate the claimed1,3,5-tris(2-hydroxyethyl) isocyanurate because a skilled artisan would be able to at once envisage all the species encompassed by the disclosed genus.
With regards to claim 22, Clauss teaches may be bis(hydroxymethyl)- cyclohexane-herein understood to anticipate the claimed species because a skilled artisan would be able to at once envisage all the species encompassed by the disclosed genus.
With regards to claims 23, Clauss teaches component B3 is optional; thus, B1 and B2 may be 100%.
With regards to claim 24, Clauss teaches component B3 is optional, thus, the ratio of mol OH groups derived from components B1 to the sum of mol OH groups derived from components B1 and B3 may be 100%.
With regards to claim 26, Clauss teaches a solution comprising at least one polyester polyol of claim 17 and at least one organic solvent (0171).
With regards to claim 29, Clauss teaches component F is at least one oligomer or polymer carrying more than one N=C=O group or blocked N=C=O group (0206).
With regards to claim 30, Claus teaches component F is at least oligomer or polymer carrying more than one N=C=O group and comprising (1) at least one unit independently derived from the group consisting of aliphatic and alicyclic compounds carrying at least two N=C=O groups, and (ii) at least one isocyanurate structural unit (0213).
With regards to claim 31, Clauss teaches component F may have a N=C= content of 5 to 40% (0210).
With regards to claim 32, Clauss teaches an article coated with the composition of claim 27 (0248).
Clauss is relied upon as above, but does not teach the ratio of mol OH groups derived from components B1 to mol OH groups derived from component B2 is in the range of 25% to 700%. However, Kube teaches that an increase in functionality of the polyol component of a polyurethane composition increases the molecular weight and shear strength of the composition (see Background). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the ratio of dill and triol components in the composition of Clauss in order to control the polyol functionality and the resulting properties of the composition (e.g. molecular weight, shear strength).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clauss et al (US 2021/0108784) in view of Kube (US 6,191,212), as applied to claims above, and further in view of Eklund et al ((US 2014/0255560).
With regards to claim 28, Clauss in view of Kube is relied upon as above, but does not teach the two-component composition may further comprise at least one (meth)acrylic polymer carrying more than one OH group. However, Ekland teaches the addition of (meth)acrylic polymer carrying more than one OH group to a polyester polyol polyurethane composition improves the gas transmission properties thereof (see summary of the invention). Thus, it would have been obvious to one of ordinary skill in the art to add a one (meth)acrylic polymer carrying more than one OH group to polyester polyol component of the composition taught in Clauss in order to improve the gas transmission properties of the resulting composition.
Response to Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive.
Rejections Under 35 U.S.C. § 103
With regards to the rejection of claims under 35 U.S.C. § 103 as allegedly unpatentable over Clauss in view of U.S. Patent No. 6,191,212 to Kube (hereinafter "Kube") , applicant argues the claimed composition differs from Claus in that the polyester polyol is defined by a specific ratio of molar OH groups derived from components B1 to molar OH groups derived from component B2, namely, in the range of 25 to 700%. Said argument is noted but is not persuasive as Kube is relied upon to render obvious said feature.
Applicant, however, argues said limitation is critical to achieving the advantageous balance of high solid content and extended gel time. Applicant further argues neither Claus nor Kube discloses or suggests a polyester polyol wherein this particular ratio is controlled within the claimed range. Thus, applicant argues The Examiner's position that Kube teaches the general principle of increasing polyol
functionality to enhance molecular weight and shear strength, and therefore renders it obvious to
optimize the diol/triol ratio to control composition properties, is not persuasive. Said argument is noted but is not persuasive as the Courts have held the mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention MPEP 2145).
In support of the argument of criticality, applicant points to Table 2 of the present application which applicant argues demonstrates the inventive clear coat compositions containing polyester polyols la, 1b, 1c, and 1 d exhibit both higher solid content and longer gel time compared to comparative clear coat compositions made with polyester polyol comp la. Applicant argues Table 2 further indicates that both solid content and gel time decrease as the ratio of molar OH groups derived from THEIC (B1) to CHDM (B2) declines and that while solid content remains constant, gel time decreases as the ratio increases from 1c. Said argument is noted but is not persuasive as said showing is not commensurate in scope with the pending claims; the data in the table it limited to a fairly narrow/specific compositions.
Thus, applicant’s arguments are not persuasive for the reasons noted herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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