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.
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(s) 1-9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over R1 (JP2019512026).
Regarding claims 1-2 and 6-7, R1 teaches the formation of a moisture curable coating that can be applied as separate layers wherein a first layer is first cured before the application of a second wherein the composition may comprise a silane containing polymer, a liquid epoxy resin and dipropylene glycol methyl ether (polyether PE), wherein the ratio of silane polymer to liquid epoxy is 70/30 to 40/60. R1 is silent as to the specific amount of dipropylene glycol methyl ether employed. However, R1 also teaches that aromatic diluents are employed at 1-30% by weight. Given the dipropylene glycol methyl ether is also listed as a diluent, it would be reasonable if employing it as a diluent to use it in a similar amount. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the diluent amount of R1 employed for one type of diluent for another in the same invention because R1 in general teaches that is an suitable amount of diluent for the intended purposes.
Regarding claim 3, R1 further teaches wherein it is preferable that the polyether contain both urethane and polyurea groups.
Regarding claim 4, the cure time listed for the coating of R1 is stated as “days to weeks” thereby reading upon the claimed curing time range.
Regarding claim 5, R1 further teaches the use fillers in the invention wherein fillers are also considered to be diluents such that in the same manner as described above as relates to the use of aromatic diluents, so too would it be obvious to use filler diluents in the same weight percentages.
Regarding claim 8, there is no requirement that the composition of R1 comprise aromatic or aliphatic alkylalkoxysilanes.
Regarding claim 9, R1 further teaches wherein curing takes place in the presence of preferably 0.1% to 5% aminosilane, which may be a primary aminosilane and a metal complex.
Regarding claim 11, R1 further teaches the use of stabilizers as additional diluents.
Regarding claim 12, R1 further teaches application of the coating material to a roof.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over R1 (JP2019512026) as applied to claim 1-9 and 11-12 above and further in view of Kametani et al. (JP2015-108083).
Regarding claim 10, the teachings of R1 are as shown above. R1 is silent as to the amount of metal complex used in the catalyst. However, Kametani teaches that metal containing catalysts are employed in a weight ratio of 0.1-1 wt% compared to the reacted components, which would be less than 100 percent of the composition of R1, effectively reducing the range of Kametani to substantially overlap the range of catalyst claimed. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to the catalyst to reactive component ratio of Kametani for similar catalysts in the invention of R1 because Kametani shows that his catalyst ratio is suitable for the use of similar catalyst in the curing of polymers using said catalysts.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
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