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 .
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species i (crosslinkable silane-functional monomer) and species ii (crosslinkable silane-functional oligomer) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions and species, there being no allowable generic or linking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 11/21/2025 has been entered. Claim(s) 1, 3, 8-9, 13 and 20 is/are currently amended. Claim(s) 2 and 10 has/have been cancelled. Claim(s) 1, 3-9 and 11-23 is/are pending with claim(s) 16-23 withdrawn from consideration. Claim(s) 1, 3-9 and 11-15 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 11/21/2025, with respect to claim objection has been fully considered and is persuasive. The claim objection is withdrawn.
Applicant's argument filed on 11/21/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 11/21/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Piestert does not teach or suggest a crosslinkable silane-functional monomer and/or oligomer and/or polymer. Rather, the two-component system of Piestert includes (1) a polyester, and (2) an initiator (see claim 1). The only mention of silane-based groups is with respect to the unreactive filler (see Paragraph [0053]). Thus, Piestert is directed to a different reactive chemistry than Klaus.
In response, the Piestert reference is not cited for teaching a crosslinkable silane-functional monomer and/or oligomer and/or polymer. Klaus teaches this. Rather, Piestert reference is cited for its teaching of the specific unsaturated polyester. Klaus teaches a coating composition comprising unsaturated polyesters [P4 last para.], but 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.
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.
Claims 8-9 are 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.
Claims 8 and 9 recite “wherein said crosslinkable silane-functional monomer or oligomer or polymer has a weight average molecular weight of from 200 to 20000” and “wherein said crosslinkable silane-functional monomer or oligomer or polymer has a hydroxyl value from 0 to 350 mg KOH/g and an acid value from 0 to 150 mg KOH/g”. These are not supported by the originally filed specification. The specification actually states [P14-15 spec.]:
“The 6th embodiment is the dual-reactive coating composition according to any one of Embodiments 1 to 5, wherein said crosslinkable silane-functional oligomer or polymer has a weight average molecular weight below 30,000 and preferably below 20,000.”
“The 7th embodiment is the dual-reactive coating composition according to any one of Embodiments 1 to 6, wherein said crosslinkable silane-functional polymer has a hydroxyl value from 0 to 150 mg KOH/g and an acid value from 0 to 50 mg KOH/g.”
“The 8th embodiment is the dual-reactive coating composition according to any one of Embodiments 1 and 4 to 7, wherein said monomer or unsaturated oligomer or unsaturated polymer has a weight average molecular weight of from 200 to 20000.”
“The 9th embodiment is the dual-reactive coating composition according to any one of Embodiments 1 and 4 to 8, wherein said monomer or unsaturated oligomer or unsaturated polymer has a hydroxyl value from 0 to 350 mg KOH/g and an acid value from 0 to 150 mg KOH/g.”
Clearly, the claimed “weight average molecular weight of from 200 to 20000” and “hydroxyl value from 0 to 350 mg KOH/g and an acid value from 0 to 150 mg KOH/g” are not for the component a) crosslinkable silane-functional monomer or oligomer or polymer, but for the component b) monomer or unsaturated oligomer or unsaturated polymer listed in embodiment 1, and the component b) unsaturated polyester listed in embodiment 3.
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, 11 and 13 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).
Regarding claims 1, 3, 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 here in principle 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.
Claim(s) 4-7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus in view of Piestert as applied to claim 1 above, further in view of Paquet et al (US 20030170468 A1).
Klaus in view of Piestert teaches the composition in claim 1.
Regarding claims 4-7, 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 4 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 4 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 4 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. Klaus in view of Paquet teaches the same crosslinkable silane-functional polymer as stated above. Therefore, the recited process does not gain patentable weight.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klaus in view of Piestert as applied to claim 1 above, further in view of BASF (“Laromer PE 55 F”, 2015).
Klaus in view of Piestert 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 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 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 as applied to claim 1 above, further in view of Hasegawa (US 20100105798 A1).
Regarding claim 15, Klaus in view of Piestert 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762