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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments to claims 1-3, 5-7, 9, 12, 14-18, and 22 as well as the addition of claims 37-41 and the cancellation of claim 10. Claims 1-3, 5-7, 9, 12, 14-17, 22, 35, and 37-41 are pending with claim 35 being withdrawn.
Claim Rejections - 35 USC § 112
Claims 2-3, 5-7, 9, 12, 14-18, and 22 have been amended and claim 10 has been cancelled. As a result, the previous 112(b) rejection of these claims has been withdrawn. Similarly, claim 6 has been amended and as a result, the previous 112(b) rejection of this claim has been withdrawn.
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 1-3, 5-7, 9, 14-18, 37, and 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Pulman (US 20070001343).
Regarding Claims 1, 9, and 14,
Pulman teaches a composition that contains an unsaturated polyester resin (Paragraph 21) and that may further include an unsaturated polyester resin that is reacted with a diisocyanate and a hydroxyalkyl(meth)acrylate (Paragraph 24, Claim 3) that is used in marine gelcoat compositions (Paragraph 2). Pulman also teaches that reactive diluents may be used (Paragraph 26). Pulman further teaches that the unsaturated polyester resin may constitute 25 to 94% by weight of the total composition, meeting the requirement of constituting 50% or more of the curable components as stated in the instant claim. While Pulman does not specify the amounts of the acrylate functionalized polyester when used in conjunction with the unfunctionalized ester, because Pulman teaches that the polyester may be functionalized further into a polyurethane (Paragraphs 24 and 25) and that it is used in a mixture with the unfunctionalized ester (Claim 3), it would logically follow that its usage amount would be lower than the unfunctionalized ester. Because Pulman discloses the use of both the functionalized and unfunctionalized unsaturated polyesters, it would have been obvious prior to the effective filing date of the instant application to have used both the acrylate-functionalized and unfunctionalized unsaturated polyesters in any ratio.
Regarding Claims 2-3 and 5,
Pulman teaches that the unsaturated polyester can be generated using unsaturated acids such as maleic or fumaric acid (Paragraph 21) and from diols such as 1,2-propylene glycol (Paragraph 22), meeting the requirements of the instant claims.
Regarding Claim 6,
Pulman teaches the use of polyester diols to form the unsaturated polyester polyurethane acrylate that have a molecular weight that may be between 300 and 4,000 (Paragraph 24) and further teaches that the oligoester that is reacted with the diisocyanate and hydroxyalkyl(meth)acrylate has a weight of 200-4000 (Paragraph 24). Using maleic acid and propylene glycol as the reactants, a unit of one acid and two glycols would have a molecular weight of 232, which would meet this requirement. Additionally, Pulman discloses the use of reactive diluents (Paragraph 26), which are commonly used for a similar purpose, indicating that the viscosity is important to control. Finally, as terminal alcohols are required in order to introduce the terminal acrylate groups and because Pulman speaks to the presence of plural acrylate groups on the polymer (Paragraph 24), it would have been obvious prior to the effective filing date of the instant application to have used polyester diols in the ratio of the instant claim because increasing the molecular weight of the polyester would also increase the viscosity of a composition containing the polyester and as such, adjusting the molecular weight in order to balance the needs of strength in the final cured composition. (paragraph 36)
Regarding Claim 7,
Pulman teaches polyester polyurethanes that are a reaction product of the unsaturated polyester and a diisocyanate (Paragraph 24) and further teaches the use of isophorone diisocyanate (Example A, Paragraph 44), meeting the requirements of the instant claim.
Regarding Claim 15,
Pulman teaches the use of reactive diluents such as methyl methacrylate and styrene (Paragraph 26) as well as the use of a mixture of unfunctionalized unsaturated polyester and acrylate-functionalized unsaturated polyester (Paragraph 24) and further that the composition can be mixed in any convenient order (Paragraph 26)
Regarding Claims 16-17,
Pulman teaches the use of pigment solids that can be contained in carrier resins such as unsaturated polyester resins (Paragraph 30). For compatibility reasons, the ordinarily skilled artisan would be motivated to use a resin as the carrier that was identical to that used in the composition. It would therefore have been obvious prior to the effective filing date of the instant application to have used the functionalized polyester as the carrier polymer. Regarding the limitation that the prepolymer remain around the decorative particle, Pulman teaches that the resin and pigment can be mixed in a grinder (Paragraph 30), which would imply that the dispersion is a solid. As such, if the dispersion were a solid and mixed into a liquid carrier in which the dispersion has little solubility, it would logically follow that this polymer would stay around the pigment. As such, it would have been obvious prior to the effective filing date of the instant application to have a pigment dispersed within a polymer that does not dissolve when mixed into the composition, resulting in this polymer remaining with the pigment.
Regarding Claim 18,
Pulman teaches the use of unsaturated polyester resins (Paragraph 23) and includes constituent parts of these resins such as isophthalic acid (Paragraph 21) and alcohols such as neopentyl glycol (Paragraph 22), which together are required to generate an Iso-NPG based resin. Because Pulman teaches the use of the required components, it would have been obvious prior to the effective filing date of the instant application to have used an unsaturated resin such as Iso-NPG.
Regarding Claims 37 and 40-41,
Pulman teaches the use of pigments, which reads on decorative particles as discussed previously in regard to claim 17. Further, Pulman teaches that a variety of resins may be used with these particles, including urethane diacrylates, acrylic silicones and unsaturated polyesters (Paragraph 30), all of which meet the requirement of a multifunctional monomer of the instant claims. Additionally, Pulman teaches that the pigments are used in amounts sufficient to be opaque (Paragraph 30), which Pulman teaches is typically 1 to 30% by weight (Paragraph 30), which overlaps with the range of the instant claims. One of ordinary skill in the art would recognize that Pulman teaches the use of any amount to achieve the desired look for the coating and would therefore use an amount of pigment that achieved this outcome. As such, it would have been obvious to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Claims 12 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Pulman (US 20070001343) as applied to claims 1-3, 5, 10, and 14-18 above, and further in view of Garner (US 20060167208, US Patent Application #3 from IDS dated 10/14/2024).
Regarding Claim 12,
While Pulman teaches an unsaturated polyester polyurethane, Pulman does not explicitly teach the ratio of diisocyanate to polyester diol. Garner teaches that a ratio of diisocyanate (b) to polyester (a) of between 1.7 and 2 (Paragraph 40), which is contained within the range of the instant claim. One of ordinary skill in the art would recognize that the polyester urethanes of Pulman and Garner are structurally similar and are both used in the generation of gelcoat compositions and further that the ratio of these two components would affect whether the diol is reacted on both sides with the diisocyanate or only on one side and would adjust this ratio in order to obtain the desired level of reaction. As such, it would have been obvious prior to the effective filing date of the instant application to have combined the ratio of diisocyanate to polyester disclosed by Garner with the polyester urethane of Pulman to obtain the predictable result of a polyester polyurethane with a reasonable expectation of success.
Regarding Claim 22,
Pulman teaches polyester polyurethanes that are end-capped with hydroxyalkyl(meth)acrylates (Paragraph 24) in which the polyurethane can be generated from maleic acid (Paragraph 21) and 1,2-propylene glycol (Paragraph 22) which would result in R’ being methyl, meeting the requirements of Formula 3-2 of the instant claim and teaches the use of diisocyanates and hydroxyalkyl(meth)acrylates (Paragraph 24), but does not explicitly teach specific options for both. Garner teaches similar polyester urethanes that are generated from 4,4’-dicylcohexylmethane diisocyanate (Paragraph 33) and where the hydroxyalkyl(meth)acrylate alkyl group can be from 1 to 6 carbons (Paragraph 38). One of ordinary skill in the art would recognize that the structures for the polyurethane urethane acrylate of Garner and Pulman are structurally similar and both are used in gelcoat compositions. As such, the ordinarily skilled artisan would be motivated to use the disclosure of specific compounds of Garner to provide guidance on component selection for the compounds taught by Pulman. Therefore, it would have been obvious to have combined the teachings of Garner with those of Pulman to obtain the predictable result of a polyester urethane acrylate with a reasonable expectation of success.
Finally, regarding the number of repeat units, Pulman teaches a molar ratio of diol:diacid:diisocyanate of 1.02:0.62:1.94 (Example A, Paragraph 44). This ratio has two units of diisocyanate for every unit of polyester diol, which would correspond to a value for n of 1, meeting the requirements of the instant claim.
Claims 38 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Pulman (US 20070001343) as applied to claims 1-3, 5-7, 9, 14-18, 37, and 40-41 above as evidenced by Magny (International Conference on Radiation Curing, August 1999, Pages 353-360).
Regarding Claims 38 and 39,
Pulman teaches that a variety of carrier resins may be used with the pigments used in the composition, including urethane diacrylates and “other carriers that are familiar to those skilled in the art” (Paragraph 30). Pulman therefore teaches the use of acrylates in the carrier resin. While this resin taught by Pulman does not teach that the resin is a propoxylated (meth)acrylate, such resins are known in the art to be suitable for pigment dispersions in compositions as evidenced by Magny, which teaches that propoxylated neopentyl glycol diacrylate is a suitable carrier due to its ability to wet the pigment surface (Page 356, Section 4, Paragraph 4). As such, propoxylated acylate carrier resins are demonstrated to be known in the art and would thus be included in the teachings of Pulman. Due to their improved ability to wet the surface of pigments, the ordinarily skilled artisan would be motivated to use such resins to improve the uniformity of the pigment distribution in the composition and it would therefore have been obvious prior to the effective filing date of the instant application to have used them as the carrier resin for the pigment.
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 8 and 9, the applicant states that Pulman does not teach a composition that includes an unsaturated polyester base resin and a polyester-polyurethane prepolymer together. The examiner disagrees. Pulman teaches the use of unsaturated polyester resins (Paragraphs 21-23), unsaturated polyester resins that have been further functionalized into polyurethane prepolymers (Paragraph 24) and further discloses that the urethane acrylate resins may be used in mixtures with other unsaturated polyester resins (Paragraph 24). While Pulman does not teach a specific range for each of the components, Pulman does teach the overall incorporation amount required by the instant claims and because both components are disclosed for use in gelcoat applications, it would have been obvious to have used them in combination. See MPEP 2144.06.I. Furthermore, Pulman teaches that the disclosed polymers are used to produce blush-resistant gelcoats that do not require extra time beyond the standard gelcoat to apply (Paragraph 6). With this in mind, the ordinarily skilled artisan would combine the components in ratios sufficient to address this issue. Finally, Pulman describes blushing to be development of uneven coloring (Paragraph 5), which would indicate to the ordinarily skilled artisan that compositions as described would possess resistance to discoloration, which appears to be the focus of the instant invention.
On page 10, the applicant states that incorporation of up to 15% by weight of the prepolymer affords unexpected results pertaining to resistance to bleaching. The examiner points out that this limitation does not appear in the claims. Additionally, the examiner also notes that unexpected results must be commensurate in scope with the claim limitations.
On pages 10 and 11, the applicant applies the same arguments to claims 14 and 17, which have been addressed above.
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 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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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