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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/30/2026 has been entered.
Response to Amendment
The amendment filed on 6/30/2026 has been entered. Claim(s) 1, 5-6, 12 and 18 is/are currently amended. Claim(s) 16 and 20-21 has/have been cancelled. Claim 22-23 are new. Claim(s) 1-15 and 17-19 and 22-23 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 6/30/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Laas describes 2-component systems comprising a component a), comprising at least one hydrophilic polyaspartic ester or at least one solution or dispersion of the hydrophilic polyaspartic esters, and a component b), comprising at least one NCO-functional crosslinking agent. Laas at [0065]. The hydrophilic polyaspartic esters described by Laas are obtainable by reaction of at least one polyamine component A) with at least one polyisocyanate component B), in which the polyisocyanate component B) contains at least one chemically bonded, non-ionic, hydrophilic group. Laas at [0004]-[0008]. The purpose of the hydrophilic group on the polyisocyanate is to achieve improved solubility in polar solvents, such as water. Laas at [0003], [0010], [0012]. Thus, in direct contrast to the invention presently claimed, Laas describes production of polyisocyanates that contain at least one hydrophilic group to improve water solubility, rather than hydrophobic polyether-modified polyisocyanates that are incapable of dissolving as well as dispersing in water.
In response, Laas’ polyisocyanate component B) containing at least one chemically bonded, non-ionic, hydrophilic group is used to make component a) comprising at least one hydrophilic polyaspartic ester or at least one solution or dispersion of the hydrophilic polyaspartic esters, which reads on the claimed A-component. The polyisocyanate component B) is not in the component b) comprising at least one NCO-functional crosslinking agent. The 103 rejection clearly indicates that it is Laas’ component b) comprising at least one NCO-functional crosslinking agent that reads on the claimed B-component. The instant claim requires B-component to be hydrophobic, not the A-component.
Applicant argued that Laas simply discloses that NCO-functional crosslinking agents employed may be any desired hydrophobic and/or hydrophilically modified polyisocyanates. Laas at [0049]. Laas, however, clearly teaches that "[e]xamples of suitable hydrophilically modified polyisocyanates are the aforementioned polyisocyanates containing at least one chemically bonded, non-ionic, hydrophilic group." Laas at [0051] (emphasis added). Thus, Laas confirms that the polyisocyanates described therein, which are relied upon in the Final Office Action for disclosure of the specific subject matter presently claimed, are hydrophilically modified polyisocyanates, not hydrophobic polyether-modified polyisocyanates.
In response, Laas also teaches that [o]ther suitable polyisocyanates may also be the polyisocyanate mixtures obtainable by the processes of EP-A 0 959 087 and EP-A 1 276 787, through reaction of polyisocyanates of low monomer content that consist of at least two diisocyanate molecules with monofunctional polyethylene oxide polyether alcohols, a reaction which involves allophanatization” [0051]. These polyisocyanates are the same as in the instant application, as stated in the 103 rejection. If applicant believes that these polyisocyanates are hydrophilic, then applicant’s own B-component containing a polyether-modified polyisocyanate is hydrophilic, not hydrophobic. If applicant’s polyether-modified polyisocyanate is hydrophobic, then Laas’ polyisocyanates are also hydrophobic. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the Laas teaches the same polyether modified polyisocyanates as the current invention, the recited hydrophobic property is expected to be present.
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) 1-15 and 17-19 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laas et al (US 20160060380 A1) in view of Morikawa et al (US 20030055197 A1).
Regarding claim 1, Laas teaches a 2-component coating comprising a component a) comprising at least one hydrophilic polyaspartic ester, and a component b) comprising at least one NCO-functional crosslinking agent [0065].
The NCO-functional crosslinking agent can be modified polyisocyanates [0049] obtained through reaction of polyisocyanates of low monomer content that consist of at least two diisocyanate molecules with monofunctional polyalkylene oxide polyether alcohols [0051]. The diisocyanate includes 1,6-diisocyanatohexane (HDI) [0015] and can be isocyanurate [0050] (i.e., diisocyanate trimer). The HDI has an NCO functionality of 2.0. The equivalents ratio of amino groups to isocyanate groups is 2:1 to 0.5:1 [0058] (thus, the molar ratio of isocyanate groups to amino groups is 0.5:1 to 2:1).
The examiner submits that the hydrophilic polyaspartic ester reads on the claimed A-component.
The modified polyisocyanate reads on the claimed B-component, with the HDI corresponding to the claimed a). The NCO functionality of 2.0 meets the claimed range of 2-4.5. The molar ratio of isocyanate groups to amino groups of 0.5:1 to 2:1 overlaps the claimed range of 0.8:1 to 4:1. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
The monofunctional polyalkylene oxide polyether alcohol corresponding to the claimed b).
Since Laas teaches the same polyether modified polyisocyanate, the polyisocyanate is expected to be hydrophobic as the applicant claims to be.
Laas does not teach that the diisocyanate HDI contains at least 35 wt.% of hexamethylene diisocyanate trimer.
In the same field of endeavor, Morikawa teaches a two-component adhesive [0046] comprising an isocyanate group-terminated prepolymer (A) obtained by reacting an organic polyisocyanate containing at least an aliphatic polyisocyanate and/or an alicyclic polyisocyanate, with a block polyether monool [0027]. The aliphatic polyisocyanate and/or an alicyclic polyisocyanate is preferably hexamethylene diisocyanate (HDI) or an isocyanurate bond-containing polyisocyanate obtained from hexamethylene diisocyanate [0036].
The examiner submits that Morikawa isocyanate group-terminated prepolymer (A) is essentially the same as Laas’ modified polyisocyanate. HDI isocyanurate reads on the claimed diisocyanate trimer. Morikawa’s teaching suggest that the aliphatic polyisocyanate and/or an alicyclic polyisocyanate can comprise either 100% HDI or 100% HDI isocyanurate.
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 Morikaw recognized HDI and HDI isocyanurate are equivalent for the same purpose in reacting with polyether monool to form a modified polyisocyanate prepolymer, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute HDI with HDI isocyanurate in Laas’ composition. In other words, it would have been obvious to one of ordinary skill in the art at the time of filing to use 100% HDI trimer as the polyisocyanates to react with the monofunctional polyalkylene oxide polyether alcohol to form the modified polyisocyanate.
Laas teaches a monofunctional ethylene oxide/propylene oxide polyether having number-average molecular weight of 1400 g/mol and an ethylene oxide content of 52% [0086]. The molecular weight falls within the claimed range of 900-2000 g/mol. An ethylene oxide content of 52% in the monofunctional ethylene oxide/propylene oxide polyether suggests that the propylene oxide content is 48%, falling within the claimed 45-100%.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a modified polyisocyanate according to Laas including a monofunctional ethylene oxide/propylene oxide polyether having number-average molecular weight of 1400 g/mol and an propylene oxide content of 48%, as Laas demonstrates this molecular weight and ethylene oxide content to be suitable for similar modified polyisocyantes. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Laas teaches an NCO/OH equivalents ratio of 5:1 to 50:1 [0035], meeting the claimed ratio of 5:1 to 110:1.
Laas teaches the polyisocyanate has an average isocyanate functionality of 1.0 to 3.0 (overlapping the claimed range of 1.8-4.1), an isocyanate group content of 3 to 25 wt % (overlapping the claimed range of 8-20%), and contain from 5 to 80 wt % of ethylene oxide units bonded within polyalkylene oxide polyether units (overlapping the claimed range of 10-50%) [0019].
Regarding claim 2, Laas teaches a molar ratio of isocyanate groups to amino groups of 0.5:1 to 2:1 as stated above, overlapping the claimed range of 0.8:1 to 2.65:1. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
Regarding claim 3, Laas teaches that the coating composition is prepared only using water as solvent, since such aqueous coating compositions have particularly advantageous environmental properties [0063], which is solvent-free.
Regarding claim 4, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above, overlapping the claimed range of 10-45%).
Regarding claim 5, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above. Since the polyisocyanate is made from HDI and polyethylene oxide, the HDI unit is 20-95 wt% in the polyisocyanate. Thus, the amount of the ethylene oxide units is 5.3 wt% and higher relative to the total amount of HDI, overlapping the claimed 10-50 wt%.
Regarding claims 6-8, Laas teaches that the polyisocyanate may contain uretdione HDI (NCO functionality of 2) [0033], which is different from the aforementioned polyether modified HDI.
Regarding claim 9, Laas teaches that the polyalkylene oxide polyether unit consists ≧40 mol % of ethylene oxide units [0012]. Thus, in a monofunctional ethylene oxide/propylene oxide polyether containing ≧40 mol % of ethylene oxide units, propylene oxide unit is 60 mol% or less, or 66.4 wt% or less as calculated by the examiner, overlapping the claimed lower limit of 50% oxyprpylene group content. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 10, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above, overlapping the claimed range of 10-50%).
Regarding claim 11, Laas teaches a monofunctional ethylene oxide/propylene oxide polyether having number-average molecular weight of 1400 g/mol as stated above, falling within the claimed range of 920-1800 g/mol.
Regarding claim 12, Laas’ polyether-modified polyisocyanate Polyisocyanate Component B3 contains no isophorone diisocyanate [0086].
Regarding claims 13-15, Laas teaches that the hydrophilic polyaspartic ester has the structure of formula (I):
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in which X is a saturated or unsaturated, linear or branched, aliphatic or cycloaliphatic or aromatic organic radical which is substituted or unsubstituted and/or has heteroatoms in the chain, [0006] Y is a secondary amino group bonded to two carbon atoms, R1 and R2 independently of one another are saturated or unsaturated, linear or branched, aliphatic or cycloaliphatic or aromatic organic radicals having 1 to 18 carbon atoms, and are substituted or unsubstituted and/or have heteroatoms in the chain, and n is a natural number from 1 to 4 [0004-0008].
Laas further teaches that the hydrophilic polyaspartic ester is made from X-(NH2)n and R1OOC-CH=CH-COOR2 [0029].
The examiner submits that the above formula (I) reads on the claimed formula I, with X being the claimed X, Y being NH, R1 being the claimed R2, R2 being the claimed R1, and n being the claimed n.
Laas teaches a molar ratio of isocyanate groups to amino groups of 0.5:1 to 2:1 as stated above, overlapping the claimed range of 1:1 to 2:1. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
Regarding claim 17, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above, overlapping the claimed range of 20-37%).
Regarding claim 18, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above. Since the polyisocyanate is made from HDI and polyethylene oxide, the HDI unit is 20-95 wt% in the polyisocyanate. Thus, the amount of the ethylene oxide units is 5.3 wt% and higher relative to the total amount of HDI, overlapping the claimed 24-37 wt%.
Regarding claim 19, Laas teaches the polyisocyanate contain from 5 to 80 wt % of ethylene oxide units as stated above, overlapping the claimed 24-37 wt%.
Regarding claims 22-23, Laas teaches that the polyalkylene oxide polyether can be a monofunctional propylene oxide polyether obtained from methanol and propylene oxide [0011]. Such monofunctional propylene oxide polyether reads on the claimed polypropylene glycol monomethyleter.
Laas example teaches a monofunctional ethylene oxide/propylene oxide polyether having number-average molecular weight of 1400 g/mol [0086]. One of ordinary skill in the art at the time of filing would expect similar molecular weight for a monofunctional propylene oxide polyether, because a monofunctional propylene oxide polyether and a monofunctional ethylene oxide/propylene oxide polyether are considered equally suitable for the polyalkylene oxide polyether [0011]. 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.
A monofunctional propylene oxide polyether having number-average molecular weight of about 1400 g/mol has about 24 propylene oxide units, falling within the claimed ranges of 16-32 and 17-25 propylene oxide units, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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