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 1-7 in the reply filed on 02/11/2026 is acknowledged.
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 3, requires the alkoxysilyl group content of 50 to 200 mmol/g. When the specification examples as provided in Table 1 are utilized to calculate the alkoxysilyl group content, for instant example A-1, which incorporates 15 g of γ-methacryloxypropyltrimethoxysilane with mol wt. of ~248 g/mol, it results in 60 mmol alkoxysilyl group content per 100g of the acrylic polymer (derived from 15 parts of γ -methacryloxypropyltrimethoxysilane, 32.5 parts of 2-hydroxyethyl methacrylate, 10 parts of styrene, 10 parts of 2-ethylhexyl acrylate, 32.5 parts of isobutyl methacrylate, where the monomer total amounts are 15+32.5+10+10+32.5 =100g). Thus, it is understood that the alkoxysilyl group content of 60mmol is based on 100g of the acrylic polymer and not per 1 g of the acrylic polymer. Similarly, the values of instant examples A2 or A-3 are determined based on 100 g of the acrylic polymer. It is unclear if the applicant wanted to claim the true values of the inventive examples alkoxysilyl group content of 50 to 200 mmol/100 g or as currently claimed values of 50 to 200 mmol/g. Appropriate clarification (or correction) is required.
Claim Interpretation
For claim 3, the prior art alkoxysilyl group content is calculated based on 100g of the acrylic resin and not per 1 g of the polymer.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshizawa US 2020/0010715 A1 (provided on IDS).
Yoshizawa teaches Example 1, Resin Layer A1 (paras [0165]-[0175]) which comprises an acrylic resin, a polyester resin and a polyisocyanate compound. Yoshizawa discloses that the acrylic resin is derived from monomers which include hydroxyethyl methacrylate and trimethoxysilyl propyl (meth)acrylate, which meets applicant’s acrylic resin (A). The polyester is a polycaprolactone triol with a molecular weight of 850 and a hydroxyl value of 190 mgKOH/g to 200 mgKOH/g, and would inherently have an acid value of less than 10mg-KOH/g, and meets applicant’s polyester resin (B). Yoshikzawa further teaches a polyisocyanate compound derived from hexamethylene diisocyanate, which corresponds to the required component (C).
Yoshizawa’s resin layer forming solution is derived from 7.7 parts of A1 solution (which comprises 4 parts of acrylic resin at 50 mass%; 3.5 parts of polycaprolactone triol and 0.2 part of silicone resin) and 4.3 parts of B1 isocyanate (para [0173]). The acrylic resin is contained in the resin layer forming solution at 2/(2+3.5+0.2 +4.3) x 100 = 20 parts by mass per 100 parts by mass of total resinous solid components. The solid content of the total resin layer forming solution (A1+B1) is (2+3.5+0.2 +4.3)/(7.7+4.3) x 100 = 83.3 mass%, which meets the required solid content of the coating composition.
The coating composition as claimed is fully anticipated by Yoshizawa as disclosing each limitation of the rejected claims as per discussion above.
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshizawa US 2020/0010715 A1, as applied to claim 1 above.
Yoshizawa teaches (para [0067]) that the acrylic resin has a Si atom (atomic wt. of 28 g/mol) in the range of 0.01 to 1 mass%, when the monomer trimethoxysilyl propyl methacrylate (para [0165], with a mol wt. of 248 g/mol) is utilized as a comonomer this results in the range of (.01 x 248)/28) = 88 mmol to 8800 mmol of alkoxysilyl monomer content, which overlaps the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lewin et al. US 5,684,084.
Regarding claim 1, Lewin teaches (reference claims 1-5) a coating composition with 40-70 mass% of solid content of a film forming binder, where the binder comprises an acrylosilane polymer, a polyester resin and an organic polyisocyanate (applicant’s component (C)). Lewin’s acrylosilane polymer (col 6, Example 1, Acrylosilane polymer A) consists of polymerized (meth)acrylate monomers, hydroxy alkyl acrylate and a silane monomer, which can be gamma-methacryloxy propyl trimethoxysilane, which corresponds to applicant’s acrylic resin (A) and which is present at 5-30 wt% in the film forming binder, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Lewin discloses incorporation of a polyester resin in the coating composition, which is derived from adipic acid, hexahydrophthalic anhydride and a combination of dihydric alchohol hexanediol, and cyclohexane dimethanol and trihydric alcohol trimethylol propane. Lewin provides one polyester composition (Polyester C, Col 7, lines 20-26) with the monomers adipic acid/trimethylol propane/ 1,6-hexane diol/hexahydrophthalic anhydride/1,4-cyclohexane dimethanol in the weight ratio of 21.5/6.2/20.7/26.3/25.3, with a number average molecular weight of 1500, where the dihydric alcohol and a tri-hydric alcohol in terms of (dihydric alcohol)/(trihydric alcohol) ratio is included in the proportion of (20.7+25.3)/ (6.2) ≈ 88/12, which corresponds to applicant’s resin (B) (instant claims 5 and 6). Lewin is silent on the acid value and the hydroxyl value of the polyester resin, however since Lewin’s polyester is derived from the same polybasic acids, dihydric and trihydric alcohols, and with the required ratio of the dihydric alcohol and a tri-hydric alcohol as provided in the instant specification (paras [0067],[0068] and [0071] and Table 1), it would be expected to contain a hydroxyl group and satisfy the acid and the hydroxyl value requirements.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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).
Additionally, Lewin discloses that the inventive coating compositions are useful for exterior clearcoats finishes for automotives which are resistant to etch and mar resistance (Lewin, Col 1, lines 63-67; Col 2, lines 1-2), which is the same end use application as that of the instant specification (para [0120]). Since the prior art compositions are being utilized for similar end products, such as exterior automotive coatings, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have varied the polyester to achieve desired level of acid and hydroxyl values to manage the viscosity and curability of the overall composition.
Regarding claim 2, as discussed when addressing claim 1, Lewin discloses acrylosilane polymer corresponding to the required acrylic resin (A) which is present at 5-30 wt% with respect to the total resinous solid content, which is slightly shy of the required range. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 3 (please see claim interpretation), Lewin teaches an acrylosilane polymer A (col 6, lines 35-55) which utilizes 240.5 parts by weight of Gamma - methacryloxypropyl trimethoxysilane monomer (TPM), which has a molecular weight of 248 g/mol, which would result in 0.97 moles of silane monomer present in 1817.3 g of the total polymer derived from styrene, methyl methacrylate, isobornyl methyacrylate, butyl acrylate, ethylhexyl acrylate, hydroxy propyl acrylate and TPM. This results in ~53 mmol of the alkoxysilyl group containing monomer, meeting the claimed requirement.
Regarding claim 4, Lewin teaches (reference claim 4) the polyester resin range of 1-20% by weight, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 7, Lewin discloses (col 6, line 22) a melamine resin as a crosslinking agent, thus rendering the claimed requirement obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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