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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 7, 2026 has been entered.
Claim Rejections - 35 USC § 102
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 1-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsukamoto (US 2018/0371237 A1).
Regarding claim 1, Tsukamoto teaches an aqueous resin crosslinking agent comprising a polycarbodiimide (A) and a polycarbodiimide (B) (Abstract), wherein the polycarbodiimide (A) has a hydrophilic organic compounds substituted at its ends, and wherein said organic compounds have molecular weights of 340 or more (Abstract). Polycarbodiimide (B) has substituents derived from organic compounds having molecular weights of 300 or less at both terminals, and the amount of polycarbodiimide (A) with respect to both polycarbodiimides ranges from 5 to 80 parts (Abstract), which anticipates the claimed range of “5 to 90 parts by mass per 100 parts by mass in total.” Tsukamoto further teaches that the polycarbodiimide (B) is formed from an isocyanate-terminated polycarbodiimide with the organic compound having a molecular weight of 300 or less ([0071]), and teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]).
Tsukamoto teaches that a diisocyanate compound within Polycarbodiimide (A) may be, inter alia, 2,6-tolylene diisocyanate ([0060]), which is a diisocyanate compound having an aromatic ring.
Regarding claim 2, Tsukamoto teaches that the hydrophilic organic compound having a molecular weight of 340 or more is a polyalklyene oxide which is end-capped with an alkoxy group or a phenoxy group ([0019]). Tsukamoto teaches the same chemical structure as claimed, wherein the groups R1 and R2, as well as the repeat unit variable m has overlapping/identical (and therefore anticipatory) scopes compared to those as claimed.
Regarding claim 3, Tsukamoto teaches the use of a hydrophilic organic compound (as described above), wherein R1 is a methyl group and R2 is a hydrogen atom ([0020]).
Regarding claim 4, Tsukamoto teaches that the organic compound having a molecular weight of 300 or less has an active hydrogen which is reactive with an isocyanate group ([0072]).
Regarding claim 5, Tsukamoto teaches that the organic compound having a molecular weight of 300 or less includes monoamines, monoisocyanates, monoalcohols, and monocarboxylic acids ([0072]), all of which read on the claimed list.
Regarding claim 6, Tsukamoto teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]). The isocyanates present in this molecule (and the alternatives taught by Tsukamoto at [0059]-[0060]) are primary isocyanates.
Regarding claim 7, Tsukamoto teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]). The isocyanates present in this molecule (and some of the alternatives taught by Tsukamoto at [0059]-[0060]) are bonded to the terminals of a chain hydrocarbon.
Regarding claim 8, Tsukamoto teaches the inventive crosslinking agent within an aqueous medium ([0001]).
Regarding claim 9, Tsukamoto teaches the incorporation of a hydrophilic solvent into the aqueous medium ([0064]), and teaches the incorporation of such solvents as, inter alia, tetrahydrofuran and methanol ([0107]), both of which read on the claimed “hydrophilic solvent” because the instant Specification states that they are suitable hydrophilic solvents (c.f. instant Specification at [0072]).
Regarding claim 10, Tsukamoto further teaches the incorporation of a surfactant ([0121]).
Regarding claim 11, Tsukamoto teaches that the surfactant may be an anionic surfactant ([0122]).
Regarding claim 12, Tsukamoto teaches the use of alkylbenzenesulfonates and alkylsulfates such as sodium dodecylbenzenesulfonate and sodium dodecylsulfate ([0123]), which read on the claimed list.
Regarding claim 13, Tsukamoto teaches an aqueous resin composition containing the inventive crosslinking agents and an aqueous resin ([0125]).
Regarding claim 14, Tsukamoto teaches that the aqueous resin may specifically contain a polyester resin with a carboxyl group ([0127]), which reads on the claimed list.
Regarding claim 15, Tsukamoto teaches that the aqueous resin may be a polyester resin, a urethane resin, or an acrylic resin ([0127]), all of which read on the claimed list.
Regarding claim 16, Tsukamoto teaches that the composition may be used as an adhesive, a fiber treating agent, a coating agent, and in paints and inks ([0184]), all of which read on the claimed list.
Regarding claim 17, the claim is drawn to an intended use of the claimed waterborne resin composition. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Tsukamoto as applied to claim 13, above, also reads on claim 17.
Regarding claim 18, Tsukamoto teaches a film formed from the inventive composition ([0131]).
Regarding claim 19, Tsukamoto teaches the crosslinking of the aqueous formulation (maintained crosslink-ability after a long shelf-life of the formulation is the inventive goal of Tsukamoto [0016]), and teaches the formation of a film on a substrate using the inventive composition ([0131]), which reads on the claimed “cured film” on a “base material.”
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed April 7, 2026 with respect to the double patenting rejection of claims 1-5, 8, 10, and 13 have been fully considered and are persuasive. The double patenting rejection of claims 1-5, 8, 10, and 13 has been withdrawn.
Applicant's remaining have been fully considered but they are not persuasive.
Applicant contends that Tuskamoto fails to disclose the claimed composition because it fails to teach a specific exemplary composition having each feature as claimed. However, as described, Tsukamoto teaches every limitation of the claimed composition within the inventive disclosure. While the claimed combination may not be an exemplary formulation present within the inventive examples, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant contends that Tsukamoto fails to appreciate the improved flexibility of the composition as contemplated by the applicant; however, the discovery of a new property of a previously disclosed composition does not confer patentability (see MPEP 2112.I).
Applicant points to an example of Tsukamoto which the Applicant believes to correspond closely with the comparative examples of the instant disclosure; however, the presence of compositions within Tsukamoto which do not fall within the claimed composition do not rebut the existence of the broader disclosure of Tsukamoto which does contain the claimed composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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