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
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on October 16, 2025 is acknowledged.
Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 16, 2025.
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 2, 4, and 6-9 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.
Regarding claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “in the range of 2-10 wt%,” and the claim also recites “more preferably in the range of 3-5 wt%,” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is of the at least one polyether modified polysiloxane being present in an amount in the range of 2-10 wt%.
Regarding claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “the at least one fatty acid-derived polyol has a solid content of 90 wt% or higher,” and the claim also recites “preferably has a solid content of 95 wt% or higher, more preferably has a solid content of 100 wt%,” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is wherein the at least one fatty acid-derived polyol has a solid content of 90 wt% or higher.
Regarding claim 6, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “wherein the at least one polyether modified polysiloxane has an effective silicon content of 30 wt% or higher,” and the claim also recites “preferably of 60 wt% or higher,” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is wherein the at least one polyether modified polysiloxane has an effective silicon content of 30 wt% or higher.
Regarding claim 7, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “wherein R1 is independently selected from the group consisting of C1-C6 alkyl at each occurrence,” and the claim also recites “preferably from methyl,” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is wherein R1 is independently selected from the group consisting of C1-C6 alkyl at each occurrence.
Regarding claim 8, claim 8 recites the limitation "the at least one organic solvent" in line 6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “at least one organic solvent.”
Claim 8 recites the limitation "the at least one aqueous dispersion of hydroxy acrylic polymer" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “at least one aqueous dispersion of hydroxy acrylic polymer.”
Regarding claim 9, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “wherein the weight ratio of the at least one primary agent to the at least one aqueous isocyanate curing agent is in the range of 1:2 to 2:1,” and the claim also recites “preferably 1:1,” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is wherein the weight ratio of the at least one primary agent to the at least one aqueous isocyanate curing agent is in the range of 1:2 to 2:1.
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.
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 1-7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiyama et al. (JP 2017-193705) in view of Dilley et al. (US 2006/0062923). For convenience, the citations below for Ishiyama et al. are taken from an English language machine translation included herewith.
Regarding claims 1-3 and 7, Ishiyama et al. teaches a two-component coating material comprising a main agent containing a polyol and a curing agent comprising a polyisocyanate compound (¶155). The polyol can be Sovermol 750 or Sovermol 760, for example (¶49). These polyols are fatty acid derived polyols obtained from at least one unsaturated fatty acid and/or at least one esterification product of at least one unsaturated fatty acid with at least one polyhydric alcohol via modification by introducing at least one hydroxyl group (process A-4) (¶38). The coating material may be an aqueous coating material (¶149) and may contain a silicone-based defoaming agent (¶141).
Ishiyama et al. does not teach that the main agent comprises from 2 to 10% by weight of at least one polyether modified polysiloxane. However, Dilley et al. teaches a coating composition (¶16) comprising acrylate esters of polyols (¶17), an isocyanate as a crosslinking agent (curing agent) (¶62), and from 0.001 to 3% by weight (¶57) of a wetting agent that is a polyalkylene oxide polysiloxane of formula (IV)
R9(CH3)2SiO‒[(CH3)2SiO]a‒[(CH3)(R9)SiO]b‒Si(CH3)2R9
wherein a+b is about 1 to about 50, each R9 is the same or different and is a methyl or a poly(ethyleneoxide/propyleneoxide) copolymer group having the general formula (V)
‒(CH2)nO(C2H4O)c(C3H6O)dR10
wherein at least one R9 is a poly(ethyleneoxy/propyleneoxy) copolymer group, and wherein n is 3 or 4; c (for all polyalkyleneoxy side groups) has a value of 1 to about 100, c+d has a value of about 5 to about 150; and each R10 is the same or different and is hydrogen, a C1-C4 alkyl, or an acetyl group. Each polyalkylene oxide polysiloxane has at least one R9 group being a poly(ethyleneoxide/propyleneoxide) copolymer group (¶52). When the end R9 groups are methyl groups, this formula corresponds to claimed Formula I wherein R1 is methyl, R is a polyether residue (formula V), and if m (corresponds to claimed a) is 28 and n (corresponds to claimed b) is 12, the sum of m+n = 40 and the ratio of m to n is 7:3, which falls within the claimed range.
Ishiyama et al. and Dilley et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of coating compositions comprising polyol and isocyanate components. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.001 to 3% by weight of polyalkylene oxide polysiloxane (polyether modified polysiloxane), as taught by Dilley et al., to the composition, as taught by Ishiyama et al., and would have been motivated to do so to aid in the ability of the aqueous coating to spread and “wet” the surface (¶50).
Regarding claims 4 and 5, Sovermol 750 and Sovermol 760 are commercially available examples of instant component (A-4) (¶51 of instant PG-PUB). Therefore, they should possess the claimed solid content and viscosity.
Regarding claim 6, the polyether modified polysiloxane meets the structure limitations as set forth in claims 1 and 7. Therefore, the compound should possess the claimed effective silicon content.
Regarding claim 9, Ishiyama et al. teaches that the molar ratio of the isocyanate group of the polyisocyanate compound to the hydroxyl group of the polyol is from 0.5:1 to 1.5:1 (¶91). Flipping this ratio to be polyol to polyisocyanate (which is how the weight ratio is claimed) provides a molar ratio range of 1:0.5 to 1:1.5, which becomes 0.67 to 2 (calculated by Examiner). This molar ratio overlaps with the claimed weight ratio of primary agent (polyol) to the isocyanate curing agent which is 0.5 to 2.
Regarding claim 10, Ishiyama et al. does not explicitly teach that the two-component aqueous coating composition has an application solid content of 70 to 90 wt % when reaching an application viscosity of 120 s or less at 25° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. an application solid content of 70 to 90 wt % when reaching an application viscosity of 120 s or less at 25° C, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 11, Ishiyama et al. does not explicitly teach that the two-component aqueous coating composition has a volatile organic compound (VOC) content of 300 g/L or less as measured using GBT23986-2009 when reaching an application viscosity of 120 s or less at 25° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. a volatile organic compound (VOC) content of 300 g/L or less as measured using GBT23986-2009 when reaching an application viscosity of 120 s or less at 25° C, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ishiyama et al. (JP 2017-193705) in view of Dilley et al. (US 2006/0062923) as applied to claim 1 above, and further in view of Yu et al. (US 2005/0277732).
Regarding claim 8, Ishiyama et al. and Dilley et al. teach the coating composition of claim 1 as set forth above. Ishiyama et al. teaches using 100 parts by weight of the polyol component in the coating composition as a whole (¶20). If 100 parts by weight of the polyol and the maximum amount of the preferred range for each of the additive components (C) through (G) were added, the weight percentage of the polyol would be 63% (calculated by Examiner; 100 pts polyol A + 2 pts C1 + 3 pts C2 + 3 pts D + 20 pts E + 25 pts F + 5 pts G (¶94, 100, 104, 124, 125, 140, 147). The amount of the polyol could easily be more than 63% by weight since not every additive would be used together and the amounts could also be less. Also, as stated above in the rejection of claim 1, Dilley et al. teaches using from 0.001 to 3% by weight of polyalkylene oxide polysiloxane (polyether modified polysiloxane).
Ishiyama et al. does not teach that the polyol component (primary agent) of the two-component coating composition comprises from 0.1 to 10% by weight of at least one organic solvent. However, Yu et al. teaches a two-component coating composition that includes (A) a first component containing an acid functional aliphatic polyester polyol and (B) a second component containing one or more polyisocyanates (¶27). Yu et al. also teaches that one or both of component (A) and component (B) further include a non-aqueous (organic) solvent in an amount of 0.1 to 40% by weight (¶52). Ishiyama et al. and Yu et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of two-component coating composition comprising a polyol and polyisocyanate component. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.1 to 40% by weight of a non-aqueous solvent, as taught by Yu et al., to the polyol component of the coating composition, as taught by Ishiyama et al., and would have been motivated to do so to help control the viscosity of the coating composition.
The at least one aqueous dispersion of hydroxy acrylic polymer is not required as the amount can be zero.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767