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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/29/2025, has been entered.
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, 6-10, 12, 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Mano (US20210071030, herein Mano), in the view of Matsunaga (JP03203974, herein Matsunaga, a machine translation is being used for citation purpose), Li (US20200248053, herein Li) and Nishioka (US20200283639, herein Nishioka).
Regarding claims 1, 7, 8 and 15, Mano teaches polyurethane coating composition [0010] can be used for producing a coated product by a process of forming a coating film [0178], reads on the sealer application, comprising: polyol [0025]; polyisocyanate compound [0025]; dibutyltin dilaurate [0144] reads on the curing catalyst, Mano further teaches the catalyst range between 0.5/(49.6+4+0.5+0.2+1.08+45.7+100)=0.25% [Ex. 1, Table 2, P9] to 4/(49.6+4+4+0.2+1.08+129.9+20)=1.9% [Ex. 7, Table 4, P10], overlap the claimed range.
Mano teaches ethyl acetate [0105] reads on the solvent, but Mano does not explicitly teach the solvent concentration and does not teach filler, however, Matsunaga teaches ethyl acetate [P3; L112], and solvent, usually 10-70% [P6; L290], overlaps the claimed range and “Fillers include calcium carbonate” [P6; L279]; “5-80% Filler” [P6; L290] overlaps the claimed range.
Mano and Matsunaga are analogous to the claimed invention because they are in the same field of the urethane composites-based coating composition formation. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add ethyl acetate [P3; L112], and solvent, usually 10-70% [P6; L290], “fillers include calcium carbonate” [P6; L279]; “5-80% Filler” [P6; L290] into the coating composition formation, because doing so would further achieve the desired property of “excellent rust prevention properties” [P10; L600] as taught by Matsunaga.
Mano teaches polyol [0025] in the range of 3 to 30% by mass [0029] overlaps the claimed range, polyisocyanate compound [0025], but does not specifically teach the wherein the polyol mixture comprises a polyester polyol and a polyether polyol, and the isocyanate compound comprises a blocked isocyanate.
However, Nishioka teaches “polyethylene adipate, polybutylene adipate, poly-3-methylpentyl adipate” [0118]; “polyether polyols such as polypropylene glycol” [0159]; an isocyanate compound “blocked polyisocyanate compound (B)” [0103], in the range of “10 to 25% by mass” [0103] overlaps the claimed range.
Mano and Nishioka are analogous to the claimed invention because they are in the same field of the urethane composites-based coating composition formation via polyol 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 add the “polyol compound (D-1): polyether polyols; polyester polyols” [0159]; an isocyanate compound “blocked polyisocyanate compound (B)” [0103], in the range of “10 to 25% by mass” [0103] into the coating composition of Mano, because doing so would further achieve the desired property of “excellent rust prevention properties” [P10; L600] as taught by Matsunaga.
Mano teaches polyol [0025], but does not specifically teach the 10 to 25% by weight of the polyester polyol, an amount of about 5 to 15% by weight of the polyether polyol.
However, Li teaches hydroxyl component (B) comprises a polyester polyol and a polyether polyol, the polyester polyol accounts for from 30 to 65 percent by weight of the total weight of the hydroxyl component (B), and the polyether polyol accounts for from 5 to 35 percent by weight of the total weight of the hydroxyl component (B) [0027], which indicates the blending ratio range of polyester polyol to polyether polyol as 30/35 to 65/5, hence, overlaps the claimed range.
Mano and Li are analogous to the claimed invention because they are in the same field of the urethane composites-based coating composition formation via polyol 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 add the hydroxyl component (B) comprises a polyester polyol and a polyether polyol, the polyester polyol accounts for from 30 to 65 percent by weight of the total weight of the hydroxyl component (B), and the polyether polyol accounts for from 5 to 35 percent by weight of the total weight of the hydroxyl component (B) [0027] into the coating composition formation, because doing so would further achieve the suitability of the composition formation which further lead to the effective bonding substrates selectivity and further application [0064-65].
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). See MPEP § 2144.05.
Regarding claim 6, Mano teaches the isocyanate compound comprises “hexamethylene diisocyanate; isophorone diisocyanate” [0072-73]
Regarding claims 9, 10, 12, 14, Mano, Matsunaga, Nishioka, and Li collectively teach the composition and ranges as set forth in claim 1 above, Mano further teaches Pigment (carbon black) [0150] as additive, in the concentration of 4/(49.6+4+0.5+0.2+1.08+45.7+100)=1.98% [Ex. 1, Table 2, P9] lies in the claimed range.
Response to Arguments
Applicant’s arguments, filed 8/29/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mano (US20210071030, herein Mano), Matsunaga (JP03203974, herein Matsunaga, a machine translation is being used for citation purpose), Li (US20200248053, herein Li) and Nishioka (US20200283639, herein Nishioka), as set forth above in the new rejection.
In this case, the new added reference Mano teaches polyurethane coating composition [0010] can be used for producing a coated product by a process of forming a coating film [0178], reads on the sealer application, comprising: polyol [0025]; polyisocyanate compound [0025]; dibutyltin dilaurate [0144] reads on the curing catalyst, ethyl acetate [0105] reads on the solvent.
Additionally, another newly added reference_ Li teaches hydroxyl component (B) comprises a polyester polyol and a polyether polyol, the polyester polyol accounts for from 30 to 65 percent by weight of the total weight of the hydroxyl component (B), and the polyether polyol accounts for from 5 to 35 percent by weight of the total weight of the hydroxyl component (B) [0027], which indicates the blending ratio range of polyester polyol to polyether polyol as 30/35 to 65/5, hence, overlaps the claimed range, as set forth in the new rejection above, which can further lead to the the suitability of the composition formation which further lead to the effective bonding substrates selectivity and further application [0064-65] as taught by Li.
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
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767