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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/2026 has been entered.
Election/Restrictions
Claims 16-23, species i (crosslinkable silane-functional monomer) and species ii (crosslinkable silane-functional oligomer) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/24/2025.
Response to Amendment
The amendment filed on 4/28/2026 has been entered. Claim(s) 1, 8-9 and 11 is/are currently amended. Claim(s) 2, 4 and 10 has/have been cancelled. Claims 24-25 are new. Claim(s) 1, 3, 5-9 and 11-25 is/are pending with claim(s) 16-23 withdrawn from consideration. Claim(s) 1, 3, 5-9, 11-15 and 24-25 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 4/28/2026, with respect to Advisory Action has been fully considered but is not persuasive.
Applicant argued that the unexpected advantages demonstrated in the present disclosure are not attributable solely to the use of separate binders. Rather, the improved performance arises from the specific claimed composition and curing system, including: (a) from 24% to 90% by weight of crosslinkable silane-functional monomer and/or oligomer and/or polymer; (b) from 9% to 75% by weight of unsaturated polyester; and (c) curing via thermal polymerization using a thermal initiator. As demonstrated in the Examples (see paragraphs [0120]-[0122] and Table 13), the claimed compositions produce tack-free coatings upon curing at 140 °C for 20 minutes and exhibit an advantageous combination of properties, including high hardness, effective crosslinking performance, high gel content, and maintained flexibility without cracking. Consistent with these results, the specification explains that the obtained dual-reactive coating compositions enable a balanced performance of flexibility and hardness and completely suppress brittleness and cracking of a topcoat or clearcoat (see paragraph [0072]). These properties address the known deficiencies of reactive silane systems, which commonly suffer from post- curing, cracking, and phase separation that negatively impact durability, chemical resistance, and appearance, particularly in automotive coating applications (see paragraph [0004]). Importantly, the cited reference Klaus does not teach or suggest the specific combination of components within the claimed ranges together with the thermal polymerization system, nor does Klaus recognize or address the performance improvements demonstrated by Applicant's compositions. The unexpected balance of hardness, crosslink density, and flexibility obtained by the claimed compositions would not have been reasonably expected based on the teachings of Klaus.
In response, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, Claim 1 recites (a) from 24% to 90% by weight of crosslinkable silane-functional monomer and/or oligomer and/or polymer prepared by polymerization of monomers comprising: i) from 20% to 50% by weight of vinyl alkoxy silane represented by Formula I H2C=CH-(CH2)n-Si-(R1)m(R2)3-m wherein R1 is an aryl or alkyl group having C1-CG, R2 is an alkoxyl group having C1-CG, m is 0 or 1 and n is an integer from 0 to 3; ii) from 50% to 80% by weight of at least one (meth)acrylate monomer; and iii) from 0% to 30% by weight of styrenic monomer, all weight percentages are based on the total weight of the silane-functional polymer. This covers wide variety of monomer and/or oligomer and/or polymer depending on the values of R1, R2, n and m; the (meth)acrylate monomer; and the styrenic monomer. However, the examples only employ one crosslinkable silane-functional monomer vinyltrimethoxysilane; two or three (meth)acrylate monomers (methyl methacrylate, n-butyl acrylate, ethylhexyl acrylate); and one styrenic monomer (styrene). It is not known if other crosslinkable silane-functional monomers, oligomers, or polymers; other (meth)acrylate monomers; and other styrenic monomers would give the same result. Also, it is not clear if the examples cover both inside and outside the claimed range of 20% to 50% by weight of vinyl alkoxy silane, 50% to 80% by weight of at least one (meth)acrylate monomer, and 0% to 30% by weight of styrenic monomer; and 24-90 wt% of the crosslinkable silane-functional monomer and/or oligomer and/or polymer. Claim 1 recites (b) 9-75 wt% of unsaturated polyester, which covers virtually unlimited variety of unsaturated polyesters. However, the examples only employ a few polyesters based on itaconic acid and maleic anhydride. It is not clear if other unsaturated polyesters would give the same result. Also, it is not clear if the examples cover both inside and outside the claimed range of 9-75 wt% of the unsaturated polyesters. Similar issues exist in the claimed (c) and (d) wherein the claimed scopes exceed the examples.
Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
Applicant's argument filed on 4/28/2026, with respect to 112(a) rejection has been fully considered and is persuasive. The 112(a) rejection is withdrawn.
Applicant's argument filed on 4/28/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Klaus neither discloses nor suggests the use of unsaturated polyester in the claimed amount. Specifically, Klaus merely describes 70 wt% of alkoxysilane-functional urethane acrylate in Example 4 and provides no disclosure or suggestion of replacing a portion of this single dual-functional binder with separate components, including a polymer with alkoxysilane groups and a polyurethane acrylate, and then further substituting the polyurethane acrylate with an unsaturated polyester.
In response, in this example of alkoxysilane-functional urethane acrylate, the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups are present in the same binder. However, Klaus teaches that the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups may be present in the same binder and/or in separate binders [P4 para.2].
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9. In this case, the alkoxysilane-functional urethane acrylate contains silane group and unsaturated bond in a 1:1 ratio. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to separate the silane group and unsaturated bond in a 1:1 ratio. It would have been obvious to one of ordinary skill in the art at the time of filing to make a coating composition according to Klaus, substituting the 70 wt% of alkoxysilane-functional urethane acrylate with 35 wt% of a polymer with alkoxysilane groups and 35 wt% of a polyurethane acrylate, based on Klaus’ suggestion of separate binders.
Applicant argued that the Office's proposed modification would require a substantial reconstruction of Klaus and is based on impermissible hindsight.
In response, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argued that Klaus is entirely silent regarding any range of unsaturated polyester and provides no indication that the amount of such a component would influence the performance of the coating system. Accordingly, Klaus provides no guidance that would lead a skilled artisan to the presently claimed range.
In response, Klaus’ teaching that the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups may be present in the same binder and/or in separate binders [P4 para.2] provides the motivation for one of ordinary skill in the art at the time of filing to make separate binders – one contains the free-radically polymerizable olefinic double bonds and one contains the hydrolysable alkoxysilane groups. Based on the teaching of 70 wt% of the binder containing both the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups, it would have been obvious to make two separate binders in 35% each, one binder containing the free-radically polymerizable olefinic double bonds, and the other containing the hydrolysable alkoxysilane groups.
Applicant argued that the present disclosure demonstrates unexpected advantages achieved by the claimed compositions. This deliberate separation of reaction mechanisms results in unexpected improvements in flexibility, durability, and crack resistance. The formation of interpenetrating but distinct organic and inorganic-organic networks provides a balanced combination of hardness and flexibility that cannot be achieved using the integrated hybrid binder approach of Klaus. As described in paragraphs [0120]-[0122] and Tables 13-15, compositions containing at least 80 wt% resin together with thermal initiators cure at 140 °C for 20 minutes to produce tack-free films exhibiting excellent hardness, crosslinking performance, and gel content while maintaining flexibility and resistance to cracking. Consistent with these results, the specification explains that the dual-reactive coating compositions provide a balanced performance of flexibility and hardness while suppressing brittleness and cracking of the coating (paragraph [0072]). These advantages directly address the known drawbacks of conventional silane systems, including post-curing, cracking, and phase separation (paragraph [0004]), which Klaus neither recognizes nor resolves.
In response, the issue of unexpected result is addressed in the response to Advisory Action above.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 25 recites “the total amount of components (a) and (b) is at least 80 % by weight, based on the total weight of the composition” which finds no support from the originally filed specification. Applicant pointed out that support can be found at least in Paragraphs [0071], [0075], [0078], and [0120]-[0122], and Table 13 of the published application (US 2023/0174790). However, the examiner does not see any disclosure of this limitation in these paragraphs.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 3, 5-7, 11 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus et al (WO 03106578 A1) in view of Piestert et al (US 20170152337 A1) and Paquet et al (US 20030170468 A1).
Regarding claims 1, 3, 5-7, 11 and 13, Klaus teaches a coating composition curable by means of high energy radiation and by means of moisture, comprising a binder system with free-radically polymerizable olefinic double bonds and with hydrolysable alkoxysilane groups [abstract]. The coating compositions cure by means of two different cross-linking mechanisms: by means of free-radical polymerization of olefinic double bonds and by means of the hydrolysis and subsequent condensation of alkoxysilane groups to form siloxane bridges [P4 para.3]. Therefore, it is a dual-reactive coating composition.
The free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups may be present in the same binder and/or in separate binders [P4 para.2].
Suitable compounds with alkoxysilane groups may comprise monoalkoxysilane, dialkoxysilane and/or trialkoxysilane groups [P5 last para.], obtained by copolymerizing alkoxysilane-functional (meth)acrylate monomers or by copolymerizing vinylalkoxysilanes [P6 para.2]. These are polymers with alkoxysilane groups.
Suitable binders with free-radically polymerizable olefinic double bonds are prepolymers, such as, polymers and oligomers [P4 para. 4]; Examples of prepolymers include polyester (meth)acrylates and unsaturated polyesters [P4 last para.].
It would have been obvious to one of ordinary skill in the art at the time of filing to select a polymer with alkoxysilane groups and a prepolymer with free-radically polymerizable olefinic double bonds in separate binders, as Klaus expressively disclosed as being suitable for this application.
The polymers with alkoxysilane groups read on the claimed (a) crosslinkable silane-functional polymer, as evidenced by the applicant [P4 line 3-5 and Line 19-24, spec.].
The polyester (meth)acrylates prepolymers and unsaturated polyesters with free-radically polymerizable olefinic double bonds read on the claimed (b) unsaturated polyester, as evidenced by the applicant [P9 line 28-30, spec.].
Klaus does not teach that the unsaturated polyesters are prepared from a condensation of at least one monounsaturated linear aliphatic dicarboxylic acid or its anhydride and at least one saturated aliphatic diol.
In the same field of endeavor, Piestert teaches an unsaturated polyester use for coating application [0001]. The double bonds in the unsaturated polyester serve for crosslinking (curing) of the coating [0034], which is the same reactive chemistry as Klaus’ unsaturated polyester. The unsaturated polyester is polycondensation products of unsaturated dicarboxylic acids, such as maleic and/or fumaric acid, with diols such as neopentyl glycol [0034, 0041, 0046].
It would have been obvious to one of ordinary skill in the art at the time of filing to select an unsaturated polyester which polycondensation products of unsaturated dicarboxylic acids, such as maleic and/or fumaric acid, with diols such as neopentyl glycol, in Klaus’ composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Klaus teaches a clear coat composition in Example 4 containing 70 wt% of alkoxysilane-functional urethane acrylate, 1.2 wt% of photoinitiator, and 2.0 wt% of p-toluenesulfonic acid based catalyst [P14 “Clear coat 1”]. The photoinitiator is a radical polymerization initiator [P7 para.5]; and the p-toluenesulfonic acid based catalyst is a catalyst for silane condensation, as evidenced by the applicant [P11L24 spec.].
In this example, the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups are present in the same binder. However, as stated above, the free-radically polymerizable olefinic double bonds and the hydrolysable alkoxysilane groups can be present in separate binders. It would have been obvious to one of ordinary skill in the art at the time of filing to make a coating composition according to Klaus, substituting the 70 wt% of alkoxysilane-functional urethane acrylate with 35 wt% of a polymer with alkoxysilane groups and 35 wt% of a polyurethane acrylate, based on Klaus’ suggestion of separate binders.
Klaus teaches that polyurethane acrylate and unsaturated polyesters are equivalents as prepolymers with free-radically polymerizable olefinic double bonds [P4 last para.].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Klaus recognized polyurethane acrylate and unsaturated polyesters are equivalent for the same purpose as prepolymers with free-radically polymerizable olefinic double bonds, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute the 35 wt% of a polyurethane acrylate with 35 wt% of a unsaturated polyesters are in Klaus’ composition.
The 35 wt% of a polymer with alkoxysilane groups meets the claimed a) from 24% to 90% by weight of crosslinkable silane-functional monomer and/or oligomer and/or polymer; the 35 wt% of a unsaturated polyesters meets the claimed b) from 9% to 75% by weight of unsaturated polyester; the 1.2 wt% of initiator meets the claimed c) from 0.5% to 10% by weight of one initiator; and the 2.0 wt% of catalyst meets the claimed d) from 0.5% to 10% by weight of one catalyst.
The recited “said crosslinkable silane-functional polymer is prepared by…” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is a polymer containing vinyl unit, (meth)acrylate unit, and alkoxysilane-functional groups.
Klaus teaches that binders bearing alkoxysilane groups may be produced by copolymerizing alkoxysilane-functional (meth)acrylate monomers or by copolymerizing vinylalkoxysilanes [P6 para.2].
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose" In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), MPEP 2144.06.I). Since Klaus recognized alkoxysilane-functional (meth)acrylate monomers and vinylalkoxysilanes as equivalents for the same purpose of forming binders bearing alkoxysilane groups, one of ordinary skill in the art at the time of filing would be able to combine these two monomers, forming a binder containing vinyl unit, (meth)acrylate unit, and alkoxysilane-functional groups. Thes component units are the same as in the claimed crosslinkable silane-functional polymer.
Klaus does not teach the percentage of these monomers or the percentage of the component units.
In the same field of endeavor, Paquet teaches acrylosilane polymers obtained by copolymerizing vinyl alkoxysilanes with acrylate monomers; and the polymers are used in automotive clear coat layers [Abstract] similar to Klaus. The copolymers may include 10-50 wt% of an ethylenically unsaturated vinyl alkoxysilane such as vinyl trimethoxysilane (VTMS), 50-90 wt% of an acrylate monomer such as methyl acrylate, and 0-40 wt% of a styrenic monomer such as styrene [0016]-[0020]. The acrylosilane polymer has a weight average molecular weight of about 1,000 to 30,000 [0023], and a hydroxyl value of from about 50 to 130 mg KOH/gram [0021].
It would have been obvious to one of ordinary skill in the art at the time of filing to select Paquet’s acrylosilane polymer as the binder polymer bearing alkoxysilane groups in Klaus’ composition, as it contains the same component units and is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The 10-50 wt% of an ethylenically unsaturated vinyl alkoxysilane such as vinyl trimethoxysilane (VTMS) overlaps the claimed 20-50 wt% of vinyl alkoxy silane represented by Formula I in claim 1 and vinyltrimethoxysilane in claim 5. The 50-90 wt% of an acrylate monomer such as n-butyl acrylate overlaps the claimed 50-80 wt% of (meth)acrylate monomer in claim 1 and n-butyl acrylate in claim 5. The 0-40 wt% of a styrenic monomer such as styrene overlaps the claimed 0-30 wt% of styrenic monomer in claim 1 and styrene in claim 5. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
The weight average molecular weight of about 1,000 to 30,000 meets the claimed weight average molecular weight of below 30,000 in claim 6.
The hydroxyl value of from about 50 to 130 meets the claimed hydroxyl value of 0-150 mg KOH/g in claim 7.
Regarding claim 14, the recited “said crosslinkable silane-functional polymer is prepared by a method comprising two steps…” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is a polymer containing vinyl unit, (meth)acrylate unit, and alkoxysilane-functional groups. The prior art teaches the same crosslinkable silane-functional polymer as stated above. Therefore, the recited process does not gain patentable weight.
Regarding claim 24, Klaus teaches that the composition comprises thermolabile initiator [P9, 1st para.] which reads on the claimed thermal initiator.
Paquet teaches thermal initiator t-butyl peroxy 2-ethylhexanoate in an amount of 185 parts in a composition of total 8500 parts [0070], which is 2.2 wt% as calculated by the examiner, falling within the claimed range of 0.5-10 wt%.
Regarding claim 25, Klaus’ coating composition comprises the binder system with free-radically polymerizable olefinic double bonds and with hydrolysable alkoxysilane groups and 0.1-7 wt% of initiator [P7 last para.], with other components such as solvent, catalyst, pigments etc. being optional [P7, 4th para. to P9, 1st para.]. Therefore, the binder content can be up to about 99.9 wt%, overlapping the claimed at least 80 wt%.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus in view of Piestert and Paquet as applied to claim 1 above, further in view of BASF (“Laromer PE 55 F”, 2015).
Klaus in view of Piestert and Paquet teaches the composition in claim 1.
Regarding claims 8-9, Klaus teaches polyester (meth)acrylates prepolymers with free-radically polymerizable olefinic double bonds, which read on the claimed (b) unsaturated polyester as stated above.
Klaus does not teach the claimed molecular weight or hydroxyl value.
In the same field of endeavor, BASF teaches a polyester acrylic Laromer® PE 55 F for the formulation of radiation-curable coatings [“Product Description”]. As evidenced by the applicant, Laromer® PE 55 F meets the claimed molecular weight, hydroxyl value, and acid value [P9 line 28-34, spec.].
It would have been obvious to one of ordinary skill in the art at the time of filing to select Laromer® PE 55 F as the polyester (meth)acrylates prepolymer in Klaus’ composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
In addition, Klaus teaches that the number average molar mass Mn of the prepolymers may be from 500 to 10000 g/mol [P5 para.1], falling within the claimed range of 200-20000. BASF teaches that the acid value of Laromer® PE 55 F is ≤ 5 mg KOH/g [“Properties”], falling within the claimed range of 0-150 mg KOH/g.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus in view of Piestert and Paquet as applied to claim 1 above, further in view of Li et al (CN 103627312 A, machine translation is referenced herein).
Klaus in view of Piestert and Paquet teaches the composition in claim 1.
Regarding claim 12, Klaus teaches a clear coat composition in Example 4 containing an initiator as stated above. Klaus teaches that the photoinitiator includes benzoin and derivatives, benzophenone and derivatives [P7 last para.].
Klaus does not teach the claimed dibenzoyl peroxide (BPO), ethyl-2-oxocyclopentanecarboxylate (EOC) and benzo pinacol (BP).
In the same field of endeavor, Li teaches a UV-curable coating composition comprising a photoinitiator selected from benzoin dimethyl ether, 4-phenyl-benzophenone, and dibenzoyl peroxide [claim 7].
It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Li recognized benzoin dimethyl ether, 4-phenyl-benzophenone, and dibenzoyl peroxide are equivalent for the same purpose as a photoinitiator, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute benzoin derivative or benzophenone derivative with dibenzoyl peroxide in Klaus’ composition.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus in view of Piestert and Paquet as applied to claim 1 above, further in view of Hasegawa (US 20100105798 A1).
Regarding claim 15, Klaus in view of Piestert and Paquet teaches the composition in claim 1. Klaus further teaches that the coating composition may contain further conventional coating additives such as rheological agents and thickeners [P9 para. 1]. Rheological agents and thickeners are art recognized as sagging control agent.
Klaus does not teach the claimed silane-functional sagging control agent.
In the same field of endeavor, Hasegawa teaches a curable coating composition comprising thixotropic agent (anti-sagging agent) 1,3,5-tris(trialkoxysilylalkyl)isocyanurate [0429-0430].
It would have been obvious to one of ordinary skill in the art at the time of filing to select 1,3,5-tris(trialkoxysilylalkyl)isocyanurate as the rheological agent in Klaus’ composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
1,3,5-Tris(trialkoxysilylalkyl)isocyanurate reads on the claimed silane-functional sagging control agent.
Conclusion
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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