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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 20, 2026 has been entered.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 and 9-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ebe (WO2021193950; reference made to US20230135772 and WO2021193950 foreign priority document JP2020-057712 with an English machine translation is provided).
Examiner notes that the US publication includes Table 6 which is a misprint and repeat of Table 5. WO2021193950 has the correct Table 6.
Ebe teaches water soluble polycarbodiimide compositions as curing agent comprising a water soluble polycarbodiimide (A) and a water insoluble polycarbodiimide (B). (Abstract)
Exemplified combinations are in Table 11 which include 50/50 combinations of A-13 through A-21 polycarbodiimide (A) and B-2 polycarbodiimide (B).
Polycarbodiimide (A) in is a monomethyl polyethylene glycol (MPEG) with MW of 550 terminated toluene diisocyanate (TDI) or dicyclohexylmethane-4,4’-diisocyanate (hMDI). Any exemplified formulation with a – for Compound 2 indicates that MPEG550 is present on both ends of the resulting polycarbodimide (for both (A) and (B) polycarbodiimides).
MPEG550 anticipates the hydrophilic end of polycarbodiiimide (A) of Claim 1 and the formula of Claim 2 and Claim 3 when R2 = H, R1= methyl and n = about 12.5 as 550 / 44 (the MW of the ethylene oxide unit) is 12.5.
From the Japanese Table 6, B-2 is hMDI (see ¶[0222] of the US PGPUB) reacted with cyclohexyl isocyanate (See also ¶[0222]). While hMDI has two cyclohexyl rings in ¶[0107] Ebe prefers the isocyanate for the polycarbodiimide (B) to be TMXDI and IPDI (isophorone diisocyanate) is particularly preferred. Therefore, one of ordinary skill in the art can at once envisage the polycarbodiimide B, such as B-2, as an isocyanate that is TMXDI or IPDI with cyclohexyl isocyanate because Ebe specifically states these are preferred or particularly preferred isocyanates as above. This anticipates a one cyclohexane ring or one benzene ring isocyanate. Cyclohexyl isocyanate is a one functional group endcapping compound with a MW of 125. This anticipates the B polycarbodiimide of Claim 1, Claim 4, Claim 5 (monoisocyanate), and Claim 6 (primary isocyanate).
(This language is found in ¶[0060] of the English translation of JP2020-057712)
The 50/50 amount anticipates the range of Claim 1 as this is 50 parts of polycarbodiimide (A) in 100 parts of the two polycardoiimides as claimed.
Both polycarbodiimides are made (Step 1A) via a decarboxylation reaction and since the above isocyanates are diisocyanates, both polycarbodiimide (A) and (B) of Ebe are a product of a decarboxylation reaction comprising diisocyanates. (Polycarbodiimide (A) ¶[0068] and Polycarbodiimide (B) ¶[0118]/¶[0126]) There is no exclusion to further modification thereof from the claimed scope.
The carbodiimides are for aqueous curing agent (¶[0141]) which anticipates the curing agent of Claim 1. The curing agent may also contain water (¶[0137]-¶[0140]) which anticipates Claim 7.
Ebe exemplifies sodium dodecylbenzenesulfonate (DBS) as a surfactant for the formulations ¶[0225] and teaches anionic surfactant in the formulations generally ¶[0144] This renders Ebe sufficiently specific to anticipate Claim 9, Claim 10 and Claim 11.
Ebe teaches the curing agents can be used for curing polyester resins (a paint) with a carboxyl group which anticipates Claim 12, Claim 13, Claim 14, Claim 15 and the cured film of Claim 17 and Claim 18 as a cured paint is a cured film on a substate. Additionally, as the curing agents are aqueous and aqueous resins are exemplified (See ¶[0195]), this renders Ebe sufficiently specific to anticipate waterborne or aqueous resin systems of polyester with a carboxyl group, for instance. The wet-on- wet coating of Claim 16 is considered a future intended use of the curing agent and there is nothing of record to indicate these polycarbodiimide curing agents and polyester resins cannot be used in wet-on-wet coating applications.
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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ebe (WO2021193950; reference made to US20230135772 and WO2021193950 foreign priority document JP2020-057712 with an English machine translation is provided) in view of Tsukamoto (U.S. 20180371237)
Ebe is applied as above under §102.
Ebe only suggest water as the medium for the aqueous curing agent. (¶[0141] and ¶[0142]) Ebe, however, is not limited to only water in the aqueous medium especially in light of using the term aqueous.
Tsukamoto, working in the field of polycarbodiimide aqueous curing agents similar to Ebe and Applicant, teaches the use of multiple types of additional solvents to be used for the aqueous medium (or solvent + water medium) of the polycarbodiimide curing agents. ¶[0111] These include those that are compatible with water which reasonably suggests hydrophilic solvents and lists methanol, n-butyl alcohol and isopropyl alcohol as solvents, for examples. (See ¶[0112]). Water alone may also be used (¶[0117]) similar to Ebe’s specific embodiment.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Ebe such that a mixture of water and solvent compatible with water is used as the aqueous medium in Ebe because Tsukamoto teaches this a functionally equivalent, as in serving the same function in the invention, aqueous solvent system to simply water in Ebe. This represents the simple substitution of known prior art elements, aqueous solvents in polycarbodiimide curing agent formulations, to yield the predictable results of an aqueous polycarbodiimide curing agent.
One of ordinary skill in the art would have been motivated to choose any of the above alcohols as the additional solvent to be used with water because Tsukamoto teaches them specifically for this purpose. All of these are hydrophilic. This reads over Claim 8.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art is Ebe (WO2021193950; reference made to US20230135772). Ebe teaches polycarbodiimides mixture which modification of end groups that otherwise read on the claimed invention but for the number of carbodiimide repeats of the polycarbodiimide (A) of Ebe (polycarbodiimide (A) of the claims). Ebe specifically teaches in ¶[0065] - ¶[0066] the number of carbodiimide groups are preferably 4 to 0 and outside this range various disadvantages to storage stability and phase separation of the polycarbodiimide (A) occurs. Additionally, Comparative example 1 (wherein the polycarbodiimide is 6.8 and in the range of Claim 19) demonstrates these various disadvantages. Therefore, Ebe teaches away from the claimed range of Claim 19 and arriving at the claimed range would require hindsight.
Response to Arguments
Applicant’s response filed March 20, 2026 on RCE have been fully considered but are not persuasive. Applicant presents no claim amendments in the response filed October 7, 2025. Rejections over Ebe have been updated to reflect the newly added claim limitation of Claim 1. Additionally, for clarity of the record, the rejections are made over §102(a)(2) rather than the previously indicated §102(a)(1) in the rejection line (while the statute cited has always been the same).
Applicant argues the modified polycarbodiimide of Ebe does not anticipate the claimed polycarbodiimides due to the use of the phrase “modified” and the recited decarboxylation. This argument is not persuasive. As stated in the rejection of record, Ebe teaches the polycarbodiimides are made through decarboxylation reaction. This is also how Applicant makes their polycarbodiimides. Applicant then goes on to modify the resulting polycarbodiimide ends with the recited low molecular weight compounds. This is similar to Ebes steps (2A-3A and steps 2A and additional modification steps of Ebe). In other words, the polycarbodiimides of Ebes are products of a decarboxylation reaction with diisocynates which are further modified just as Applicant’s polycarbodiimides are products of decarboxylation of diisocyanates which are further modified. For this reason, Applicant’s arguments to “modification” or Ebe teaching “modified” polycarbodiimides while the instant application is to unmodified polycarbodiimides are not persuasive.
Therefore, for the above reasons, Applicant remarks are not persuasive and the rejection of record are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766