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 .
Claim Rejections - 35 USC § 103
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ishiyama (JP 2017193705 A, hereinafter referring to the ESPACENET translation) in view of Konishi (US 2009/0001331 A1). BASF (Tinuvin 123 Technical Datasheet) is cited as an evidentiary reference.
Regarding claim 1, Ishiyama teaches a coating composition ([0001]) containing a polyol, a polyisocyanate component, and a curing catalyst ([0005]). Ishiyama teaches multiple components within the polyol, including component (A-2) which are formed from the copolymerization of unsaturated fatty acids via unsaturated bonds ([0032]). The components A-2 can be trimers or tetramers ([0032]), and thus optionally comprise materials containing 3 or 4 hydroxyl groups. Therefore, the A-2 polyol of Ishiyama reads on the claimed limitation requiring an average number of hydroxy groups of 3 or more. Ishiyama further teaches that the polyol A-2 has a hydroxyl value of 200-720 mgKOH/g ([0033]), which overlaps the claimed range requiring “a hydroxyl value of the polyol is 300 mg KOH/g or more and 1000 mg KOH/g or less,” establishing a prima facie case of obviousness.
With regard to the isocyanate component, Ishiyama teaches the optional use of isocyanurate derivatives of polyisocyanates ([0080] and [0084]), which are trimers of isocyanates, and teaches the preferred usage of an isocyanurate of hexamethylene diisocyanate ([0089]). The isocyanate compound of Ishiyama therefore reads on the claimed “curing agent” wherein the curing agent comprises an “isocyanurate compound.”
With regard to the curing catalyst, Ishiyama teaches the preferred incorporation of a Bismuth catalyst (C-1, [0009]), in an amount ranging from 0.005 to 4 parts per 100 parts of the polyol ([0012]), which overlaps the claimed range of “0.25 parts by mass or more and 10 parts by mass or less,” establishing a prima facie case of obviousness.
Ishiyama teaches that the inventive composition may be based on aqueous or organic solvents ([0149]), and teaches that, when the formulation is aqueous, the water content is between 10 and 190 w/w% ([0150], which overlaps the claimed range of “30% by mass or less,” establishing a prima facie case of obviousness.
Ishiyama teaches that the composition is preferably a two-component (i.e., “two-pack”) system comprising the polyol and curing agent containing the polyisocyanate as the two parts ([0155]). The remaining components of the formulation may be added to either of the two aforementioned components ([0155]), and therefore the formulation of Ishiyama reads on the claimed imitation requiring a “two-pack composition comprising a main resin and a curing agent.”
Ishiyama teaches the optional incorporation of a hindered amine light stabilizer ([0148]), but differs from claim 1 because it is silent with regard to the claimed pKb thereof.
In the same field of endeavor, Konishi teaches a paint composition containing a light stabilizer with a pKb value of at least 9 (Abstract), and teaches that this is important for preventing storage stability reduction ([0053]). Ishiyama is directed towards paint compositions with improved life and stability ([0002]), therefore it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the pKb range taught by Konishi into the light stabilizer within the formulation of Ishiyama for the purpose of preventing storage stability reduction. The pKb value of at least 9 taught by Konishi overlaps the claimed range of “7.0 or more and 11.4 or less,” establishing a prima facie case of obviousness.
Regarding claim 2, Konishi exemplifies the use of Tinuvin 123 ([0054]) as a hindered amine light stabilizer having a pKb of at least 9 ([0053]), which as a molecular weight of 737 g/mol (c.f. BASF p. 1), which falls within the claimed range of “400 or more or 800 or less,” establishing a prima facie case of obviousness.
Regarding claim 3, as described above, Ishiyama teaches the preferred usage of an isocyanurate of hexamethylene diisocyanate ([0089]).
Regarding claim 4, Ishiyama further teaches the incorporation of ultraviolet absorbers ([0148]).
Regarding claim 5, Ishiyama teaches that the polyols may optionally comprise polyester polyols ([0075]), polyether polyols ([0075]), and polycarbonate polyols ([0011]).
Regarding claim 6, Ishiyama teaches that the NCO/OH ratio of the composition may range from 0.5/1 to 1.5/1 ([0091]), which falls within the claimed range of “0.5/1 or more and 2/1 or less,” establishing a prima facie case of obviousness.
Regarding claim 7, Ishiyama teaches that curing catalysts for polyol/polyisocyanate resin systems may be organometallic catalysts ([0004]), and teaches the specific use of bismuth compounds ([0093]), which reads on “Bi” from the claimed list.
Regarding claim 8, the claim is drawn to an intended use of the “two-pack coating composition” of claim 1. 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, Ishiyama as modified and applied to claim 1, above, also reads on claim 8.
Regarding claim 9, as described above, Ishiyama teaches that the polyol A-2 has a hydroxyl value of 200-720 mgKOH/g ([0033]), which overlaps the claimed range requiring “a hydroxyl value of the polyol is 400 mg KOH/g or more and 800 mg KOH/g or less,” establishing a prima facie case of obviousness.
Regarding claim 10, as described above, with regard to the curing catalyst, Ishiyama teaches the preferred incorporation of a Bismuth catalyst (C-1, [0009]), in an amount ranging from 0.005 to 4 parts per 100 parts of the polyol ([0012]), which overlaps the claimed range of “0.5 parts by mass or more and 10 parts by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 11, as described above, Ishiyama teaches that the inventive composition may be based on aqueous or organic solvents ([0149]), and teaches that, when the formulation is aqueous, the water content is between 10 and 190 w/w% ([0150], which overlaps the claimed range of “10% by mass or less,” establishing a prima facie case of obviousness.
Regarding claim 12, as described above, Ishiyama teaches that the NCO/OH ratio of the composition may range from 0.5/1 to 1.5/1 ([0091]), which encompasses the claimed range of “0.9/1.0 or more and 1.2/1.0 or less,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that the experimental and comparative examples within the instant Specification provide evidence of unexpected results which rebut the prima facie cases of obviousness described above and in the previous office action.
Applicant has amended claim 1 to a narrowed range of pKb values (7.0 or more and 11.4 or less), and asserts that said pKb range unexpectedly results in the following effects: (i) inhibited adhesion loss of the coating film, (ii) no deterioration in water resistance, and (iii) excellent weatherability (see Applicant’s Remarks, p. 5, final paragraph). Applicant points to Examples 1-19, Comparative Examples 1-11, and Tables 1-3 in the instant Specification in support of said assertions.
However, the results provided do not support the assertion of unexpected results. Firstly, the compositions of comparative examples 4 and 5 meet all of the limitations of claim 1 (they contain 100 parts of polyol SANNIX GP-250, having a hydroxyl value of 670 and 3 hydroxyl groups; they contain 3phr of curing catalyst; they contain HALS HOSTAVIN 3058, having a pKb of 11.4; and they contain 0% solvent). Meanwhile, their weatherability performance is classified as “poor.” It is therefore clear from the data provided that compositions meeting the claimed limitations may still perform in a “Poor” manner; likewise, the data does not support the conclusion that the claimed pKb range leads to unexpectedly improved results in Weatherability.
Furthermore, while none of Examples 1-19 possess “poor” evaluation results, it is unclear from the data provided what the significance of a “fair” evaluation is, relative to a “poor” evaluation. A “fair” result may, for instance, be very similar a “poor” result or may be very similar to a “good” result; however, no clarification is made within the dataset to appraise the actual quantitative significance of said results. For example, Experimental Examples 18 and 19 possess “Fair” Weatherability results, but said result may differ from either a “Poor” or “Good” result by a single percentage point. It is therefore unclear if the “Fair” result is actually quite similar to a “Poor” result, but which has been merely separated therefrom by an arbitrary value threshold.
Against assertions of unexpected Water Resistance performance, many of the comparative examples possess “Good” Water Resistance characteristics, despite not meeting the claimed composition (and likewise not meeting the claimed pKb range). Indeed, Comparative Example 6, which Applicant admits is entirely free of a HALS, possesses a “Good” Water Resistance. The claimed range therefore cannot be responsible for Water Resistance performance.
Finally, adhesion loss and water resistance appear to refer to the same characteristic (c.f. instant Specification at [0086], wherein water resistance is tested via cross-hatched CELLOTAPE adhesion testing; adhesion is mentioned elsewhere in the Specification, however no mention is made of other adhesion testing). It is therefore reasoned that the arguments relating to water resistance, above, likewise apply to the purported “inhibited adhesion loss of the coating film.”
The experimental data provided is insufficient to rebut a prima facie determination of obviousness.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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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