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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07 May 2026 has been entered.
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.
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.
Claims 1-4, 6-7, 9, 11, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al. (US 2010/0183883 A1, “Schaefer”) in view of Li (CN 110054722 A). The disclosure of Li is based off a machine translation of the reference included with the action mailed 29 July 2025.
With respect to claims 1-3, 9, 11, and 16, Schaefer discloses water-dispersible polyisocyanates ([0001], [0015]) used for coating wood ([0164]) and is a primer ([0167]) and sealant ([0168-0169]) (i.e., is a sealing primer for woodware). The dispersions have a solids content of 10-85% ([0153]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a solids content, including values presently claimed, in order to provide a coating having desired solids content. The isocyanates include hexamethylene diisocyanate (HDI), 1,4-diisocyanatocyclohexane (i.e., cyclohexane-1,4-diisocyanate), isophorone diisocyanate (IPDI) ([0025]), and dicyclohexylmethane-4,4’-diisocyanate ([0029]). The polyisocyanate further includes hydroxyalkyl (meth)acrylates ([0051]). Because the coating is water dispersed, the hydroxyalkyl (meth)acrylates would inherently be water soluble, absent evidence to the contrary. Schaefer does not disclose the use of a film-forming resin, and thus the sealing primer is substantially free of film-forming resins.
However, while Schaefer discloses the use of a water-based wood sealing primer containing hydroxyalkyl (meth)acrylates as set forth above, Schaefer does not disclose wherein the at least one hydroxyalkyl (meth)acrylate is selected from one or more of hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate.
Li teaches an aqueous dispersion ([0009]) having an aqueous hydroxylated acrylic dispersion ([0010]) and a water dispersible polyisocyanate ([0043]). The aqueous hydroxylated dispersion includes hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate ([0016]). The dispersion has excellent heat resistance, chemical resistance, and aging resistance ([0009]). Li further teaches the construction solid content is 47.5 wt% ([0103]) in order to provide for improved appearance and coating efficiency ([0009]).
Schaefer and Li are analogous inventions in the field of aqueous dispersions of polyisocyanates and hydroxyalkyl (meth)acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydroxyalkyl (meth)acrylates of Schaefer to be hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, and to modify the coating to have a construction solid content of 47.5 wt% as taught by Li in order to provide a coating dispersion having excellent heat resistance, chemical resistance, and aging resistance, as well as improved appearance and coating efficiency (Li, [0009]).
The examiner notes Applicant’s use of the transitional phrase “consisting essentially of” in line 1 of claim 1. While it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specific materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on Applicant to show that the additional ingredients in the prior art would in fact be excluded from the claims and that such ingredients would materially change the characteristics of Applicant’s invention. See MPEP 2111.03.
With respect to claim 4, Schaefer discloses sulfonate groups are incorporated into the polyisocyanate ([0109]) (i.e., the at least one water-dispersible isocyanate contains a sulfonate group).
With respect to claims 6-7, Schaefer discloses the use of solvent ([0129]), where the solvents include esters including ethyl acetate and n-butyl acetate ([0130-0131]).
With respect to claim 14, Schaefer discloses the water-dispersible polyisocyanates ([0001], [0015]) is used for coating wood ([0164]) (corresponding to the claimed wood substrate having at least one main surface); the coating is a primer ([0167]) and sealant ([0168-0169]) and therefore corresponds to the claimed sealing primer layer at least partially coated on the main surface.
With respect to claim 15, while there may be no disclosure in Schaefer regarding the sealing primer having a coating amount ranging from 30-100 g/m2, given that Schaefer discloses its use as a coating, adhesive, and sealant ([0168-0169]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a coating amount, including values presently claimed, in order to provide a coating having sufficient adhesive or sealant properties.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al. (US 2010/0183883 A1, “Schaefer”) in view of Li (CN 110054722 A) as applied to claim 1 above, and further in view of Kanetani (JP H08-048738 A). The disclosures of Li and Kanetani are based off machine translations of the references included with the action mailed 29 July 2025.
With respect to claim 10, while Schaefer in view of Li discloses the use of a polyisocyanate (corresponding to the claimed component A) and a hydroxyalkyl (meth)acrylate (corresponding to the claimed component B) as set forth in the above rejection of claim 1, Schaefer in view of Li does not disclose wherein the weight ratio of component A to component B is in the range of 1.5:1 to 3:1.
Kanetani teaches a water dispersible polyisocyanate and an ethylenically unsaturated monomer ([0001], [0005]). The ethylenically unsaturated monomer includes vinyl monomers ([0008]) including 2-hydroxyethyl methacrylate, which is blended in an amount of 20-200 parts by weight per 100 parts by weight polyisocyanate in order to provide a dispersion having a sufficient NCO content ([0012]). Thus, the weight ratio of polyisocyanate to hydroxyalkyl (meth)acrylate is 0.5:1 (100/200 = 0.5/1) to 5:1 (100/20 = 5/1), which overlaps the presently claimed range.
Schaefer in view of Li and Kanetani are analogous inventions in the field of aqueous dispersions of polyisocyanates and hydroxyalkyl (meth)acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of hydroxyalkyl (meth)acrylate in Schaefer in view of Li to be amounts taught by Kanetani, resulting in a ratio of isocyanate:hydroxyalkyl (meth)acrylate of 0.5:1 to 5:1, in order to provide a dispersion having sufficient NCO content (Kanetani, [0012]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al. (US 2010/0183883 A1, “Schaefer”) in view of Li (CN 110054722 A) as applied to claim 14 above, and further in view of Kirimoto (US 6,261,695 B1). The disclosure of Li is based off a machine translation of the reference included with the action mailed 29 July 2025.
With respect to claim 15, Schaefer in view of Li does not disclose wherein the sealing primer has a coating amount ranging from 30-100 g/m2.
Kirimoto teaches applying a coating composition to a substrate in an amount of 0.001-100 g/m2 in order to not unnecessarily waste the coating material (Col. 6, lines 60-67). The coating is made from a polyisocyanate and is an aqueous dispersion (Col. 1, lines 12-20).
Schaefer in view of Li and Kirimoto are analogous inventions in the field of coatings made from aqueous dispersions of polyisocyanates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating of Schaefer in view of Li to have a coating amount of 0.001-100 g/m2 (including values presently claimed) as taught by Kirimoto in order to not unnecessarily waste the coating material (Kirimoto, Col. 6, lines 60-67).
Claims 1-7, 9, 11, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nennemann et al. (US 2012/0041142 A1, “Nennemann”) in view of Li (CN 110054722 A). The disclosure of Li is based off a machine translation of the reference included with the action mailed 29 July 2025.
With respect to claims 1-3, 9, 11, and 16, Nennemann discloses water-dispersible compositions made from hydrophilic polyisocyanates modified with nanoparticles ([0001], [0007]). The solids content of the polyisocyanates (PIC’s) is 20-100 wt% ([0095]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a solids content, including values presently claimed, in order to provide a coating having desired solids content. The polyisocyanates include 1,4-diisocyanatobutane (i.e., 1,4-butane diisocyanate), 1,6-diisocyanatohexane (HDI), 1,10-diisocyanatodecane (i.e., 1,10-decane diisocyanate), 1,3-diisocyanatocyclohexane (i.e., cyclohexane-1,3-diisocyanate), 1,4-diisocyanatocyclohexane (i.e., cyclohexane-1,4-diisocyanate), and isophorone diisocyanate (IPDI) ([0030]). The polyisocyanates form a coating ([0104]) and are primers ([0098]); the coating is applied to substrates including wood ([0111]). The polyisocyanates are used with lacquer binders dispersed in water, including hydroxyl-group-containing polyacrylates ([0106], [0108]) (i.e., hydroxyalkyl (meth)acrylates). Because they are dispersed in water, they are inherently water soluble. Because Nennemann does not disclose the use of a film forming resin with the polyisocyanates, then the sealing primer is substantially free of film-forming resins.
However, while Nennemann discloses the use of hydroxyl-group-containing polyacrylates as set forth above, Nennemann does not disclose wherein the at least one hydroxyalkyl (meth)acrylate is selected from one or more of hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate.
Li teaches an aqueous dispersion ([0009]) having an aqueous hydroxylated acrylic dispersion ([0010]) and a water dispersible polyisocyanate ([0043]). The aqueous hydroxylated dispersion includes hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate ([0016]). The dispersion has excellent heat resistance, chemical resistance, and aging resistance ([0009]). Li further teaches the construction solid content is 47.5 wt% ([0103]) in order to provide for improved appearance and coating efficiency ([0009]).
Nennemann and Li are analogous inventions in the field of aqueous dispersions of polyisocyanates and hydroxyalkyl (meth)acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydroxyalkyl (meth)acrylates of Nennemann to be hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, and to modify the coating to have a construction solid content of 47.5 wt% as taught by Li in order to provide a coating dispersion having excellent heat resistance, chemical resistance, and aging resistance, as well as improved appearance and coating efficiency (Li, [0009]).
The examiner notes Applicant’s use of the transitional phrase “consisting essentially of” in line 1 of claim 1. While it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specific materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on Applicant to show that the additional ingredients in the prior art would in fact be excluded from the claims and that such ingredients would materially change the characteristics of Applicant’s invention. See MPEP 2111.03.
With respect to claim 4, Nennemann discloses the polyisocyanates have a structure including at least one polyether of formula (II) shown below, where R represent H or a C1-C10 alkyl radical, p is an integer from 1-1000, and q represents an integer from 1-3 or sulfonate groups ([0050-0055]). Thus, the isocyanate contains a sulfonate group.
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Formula (II)
With respect to claim 5, Nennemann discloses the polyisocyanates A) are reacted with alkoxysilanes B) ([0007-0023], claim 15) and thus the at least one water-dispersible isocyanate contains an alkoxysilane group.
With respect to claims 6-7, Nennemann discloses the use of solvents including ethyl acetate, butyl acetate, xylylene, toluene, N-methylpyrrolidone, and acetone ([0058]).
With respect to claim 14, Nennemann discloses the polyisocyanates form a coating ([0104]) and are primers ([0098]), and that the coating is applied to substrates including wood ([0111]). Thus, the coating is at least partially coated on a main surface of the wood.
With respect to claim 15, while there may be no disclosure from Nennemann regarding the sealing primer having a coating amount ranging from 30-100 g/m2, given that Nennemann discloses its use as an adhesive ([0115]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a coating amount, including values presently claimed, in order to provide a coating having sufficient adhesive properties.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nennemann et al. (US 2012/0041142 A1, “Nennemann”) in view of Li (CN 110054722 A) as applied to claim 1 above, and further in view of Kanetani (JP H08-048738 A). The disclosures of Li and Kanetani are based off machine translations of the references included with the action mailed 29 July 2025.
With respect to claim 10, while Nennemann in view of Li discloses the use of hydroxy-group-containing polyacrylates (i.e., hydroxyalkyl (meth)acrylates, corresponding to the claimed component B) along with the polyisocyanates (corresponding to the claimed component A) as set forth in the above rejection of claim 1, Nennemann in view of Li does not disclose wherein the weight ratio of component A to component B is in the range of 1.5:1 to 3:1.
Kanetani teaches a water dispersible polyisocyanate and an ethylenically unsaturated monomer ([0001], [0005]). The ethylenically unsaturated monomer includes vinyl monomers ([0008]) including 2-hydroxyethyl methacrylate, which is blended in an amount of 20-200 parts by weight per 100 parts by weight polyisocyanate in order to provide a dispersion having a sufficient NCO content ([0012]). Thus, the weight ratio of polyisocyanate to hydroxyalkyl (meth)acrylate is 0.5:1 (100/200 = 0.5/1) to 5:1 (100/20 = 5/1), which overlaps the presently claimed range.
Nennemann in view of Li and Kanetani are analogous inventions in the field of aqueous dispersions of polyisocyanates and hydroxyalkyl (meth)acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of hydroxyalkyl (meth)acrylate in Nennemann in view of Li to be amounts taught by Kanetani, resulting in a ratio of isocyanate:hydroxyalkyl (meth)acrylate of 0.5:1 to 5:1, in order to provide a dispersion having sufficient NCO content (Kanetani, [0012]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nennemann et al. (US 2012/0041142 A1, “Nennemann”) in view of Li (CN 110054722 A) as applied to claim 14 above, and further in view of Kirimoto (US 6,261,695 B1). The disclosure of Li is based off a machine translation of the reference included with the action mailed 29 July 2025.
With respect to claim 15, Nennemann in view of Li does not disclose wherein the sealing primer has a coating amount ranging from 30-100 g/m2.
Kirimoto teaches applying a coating composition to a substrate in an amount of 0.001-100 g/m2 in order to not unnecessarily waste the coating material (Col. 6, lines 60-67). The coating is made from a polyisocyanate and is an aqueous dispersion (Col. 1, lines 12-20).
Nennemann in view of Li and Kirimoto are analogous inventions in the field of coatings made from aqueous dispersions of polyisocyanates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating of Nennemann in view of Li to have a coating amount of 0.001-100 g/m2 (including values presently claimed) as taught by Kirimoto in order to not unnecessarily waste the coating material (Kirimoto, Col. 6, lines 60-67).
Response to Arguments
Due to the amendment to claim 1, the objection to claim 1 is withdrawn.
Applicant’s arguments filed 07 May 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the motivation cited by the examiner from Li are only for the final cured paint film formed by the complete composition containing the film forming assistant. Specifically, Applicant argues the transitional phrase “consisting essentially of” excludes certain components required by or emphasized in the cited references, such as monofunctional polyalkylene glycols, film-forming resins, and related additives. Applicant argues Li requires the use of 20-40% by weight of film-forming aids, which Applicant argues is excluded by the transitional phrase “consisting essentially of”. Applicant further argues the monofunctional polyalkylene glycols of Schaefer and Nennemann are excluded by the transitional phrase “consisting essentially of”, and argues the components are not optional features in the cited references, but materially include the properties and performance of the disclosed compositions. Applicant additionally argues the film-forming aids are essential to Li’s composition, and that removing them would defeat Li’s purpose of forming a continuous film; Applicant argues this would change the principle of the compositions such that one of ordinary skill in the art lacks motivation to combine Li with either Schaefer or Nennemann. Applicant further argues there is no motivation provided by the examiner for one of ordinary skill in the art to have selected the claimed hydroxylated acrylic monomers from Li and incorporate them into the systems of Schaefer or Nennemann as such modification would be inconsistent with the core formulation principles of Schaefer or Nennemann and require undue experimentation and redesign instead of routine optimization. Applicant additionally argues the examiner’s rationale from Li is for the final cured paint film. Applicant further argues the cited references are drawn to different compositions and intended use, and that the cited references fail to provide any teaching, suggestion, or motivation that would lead one of ordinary skill in the art to modify the references to arrive at the claimed wood primer system. Applicant lastly argues that combining Schaefer or Nennemann with Li would require significant modification of the disclosed systems and selective omission of essential components and the incorporation of features from disparate references, such that the examiner’s conclusion of obviousness is based off impermissible hindsight reasoning, and that the prior art does not provide a reasonable expectation of success. The examiner disagrees.
In response to Applicant’s arguments that the transitional phrase “consisting essentially of” excludes the film forming aids of Li, and that Li’s motivation comes from the final cured paint film, these arguments are not persuasive. Li is a secondary reference. Li is not being used to teach in the film forming aids into either Schaefer or Nennemann. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, Li is only being used to teach an aqueous dispersion ([0009]) having an aqueous hydroxylated acrylic dispersion ([0010]) and a water dispersible polyisocyanate ([0043]), where the aqueous hydroxylated dispersion includes hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl methacrylate ([0016]). The “hydroxylated acrylic dispersion resin, which has excellent heat resistance, chemical resistance, ands aging resistance” ([0009]). Li further teaches the construction solid content is 47.5 wt% ([0103]) in order to provide for improved appearance and coating efficiency ([0009]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydroxyalkyl (meth)acrylates of either Schaefer or Nennemann to be hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, and to modify the coating to have a construction solid content of 47.5 wt% as taught by Li in order to provide a coating dispersion having excellent heat resistance, chemical resistance, and aging resistance, as well as improved appearance and coating efficiency (Li, [0009]). It is irrelevant that Li requires the use of film-forming aids because Li is being used as a secondary, teaching reference, and not a primary reference.
In response to Applicant’s argument that there is no motivation to choose the specifically claimed hydroxylated acrylic monomers based on Li’s disclosure, this is not found persuasive. Given that the hydroxyl monomer disclosed by Li includes hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any hydroxyl monomer in Li including the claimed hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, absent some evidence to the contrary. One of ordinary skill in the art would consider all the hydroxyl monomers disclosed by Li to be equivalent and interchangeable and equally suitable, absent a showing of criticality by Applicant of the claimed hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Li discloses a finite number of hydroxyl monomers and given that the references discloses all the hydroxyl monomers being equally applicable, there would be a reasonable expectation of success when using the hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate as set forth by the examiner. It is further noted that the fact that “the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious…”. See, e.g., Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Further, it is noted that Schaefer and Nennemann disclose the use of generic hydroxyalkyl (meth)acrylates (Schaefer, [0051]; Nennemann, [0106], [0108]) and that Li teaches the use of specific hydroxyalkyl (meth)acrylates ([0016]). Given that both primary references Schaefer and Nennemann already disclose the use of hydroxyalkyl (meth)acrylates and Li teaches the use of specific hydroxyalkyl (meth)acrylates, it is the examiner’s position that there would be no undue experimentation or redesign since Li is using specific compounds contemplated by the primary references more broadly.
In response to Applicant’s argument that the transitional phrase “consisting essentially of” excludes the monofunctional polyalkylene glycols of Schaefer or Nennemann, this is not persuasive. While it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specific materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on Applicant to show that the additional ingredients in the prior art (i.e., the polyalkylene glycols of Schaefer or Nennemann) would in fact be excluded from the claimed and that such ingredients would materially change the characteristics of Applicant’s invention. See MPEP 2111.03. While Applicant states they would affect the basic and novel characteristics of the invention, Applicant has provided no data regarding what those affect would be and how they would materially change the characteristics of Applicant’s invention. It is noted that “the arguments of counsel cannot take the place of evidence in the record”. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by Applicant regarding the inclusion of polyalkylene glycols of Schaefer or Nennemann in the claimed invention would materially change the characteristics of Applicant’s invention must be supported by a declaration or affidavit.
In response to Applicant’s argument that the cited references have different intended uses, this is not persuasive. Schaefer discloses water-dispersible polyisocyanates ([0001], [0015]) used for wood coating ([0164]) and is a primer ([0167]) and sealant ([0168-0169]). Thus, Schaefer is drawn to a sealing primer for woodware as presently claimed. While the examples of Schaefer may not use wood, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others”. In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The examples are not the only disclosure of a substrate in Schaefer; the reference contemplates and explicitly recites the use of its composition for wood coatings. Schaefer in combination with Li discloses the claimed two-component composition as set forth above.
In response to Applicant’s argument that there is no motivation to combine the cited references, this is not found persuasive. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, there is motivation to combine the references provided by Li. Li teaches an aqueous dispersion ([0009]) having an aqueous hydroxylated acrylic dispersion ([0010]) and a water dispersible polyisocyanate ([0043]), where the aqueous hydroxylated dispersion includes hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate ([0016]). The “hydroxylated acrylic dispersion resin, which has excellent heat resistance, chemical resistance, ands aging resistance” ([0009]). Li further teaches the construction solid content is 47.5 wt% ([0103]) in order to provide for improved appearance and coating efficiency ([0009]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydroxyalkyl (meth)acrylates of either Schaefer or Nennemann to be hydroxyethyl methacrylate, hydroxypropyl methacrylate, hydroxyethyl acrylate, and hydroxypropyl acrylate, and to modify the coating to have a construction solid content of 47.5 wt% as taught by Li in order to provide a coating dispersion having excellent heat resistance, chemical resistance, and aging resistance, as well as improved appearance and coating efficiency (Li, [0009]).
In response to Applicant’s argument that the references are non-analogous art, this is not found persuasive. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Schaefer is analogous art because it is drawn to a dispersion used for coating wood and is a primer and sealant ([0001], [0015], [0164], [0167-0169]), and is therefore in the same field of endeavor as Applicant’s invention. Similarly, Li is drawn to an aqueous dispersion having an aqueous hydroxylated acrylic dispersion and a water dispersible polyisocyanate ([0010], [0043]) and is therefore also in the same field of endeavor as Applicant’s invention of water-dispersible isocyanate and hydroxyalkyl (meth)acrylates and the same field of endeavor as Schaefer. Lastly, Nennemann is also drawn to water-dispersible compositions made from polyisocyanates ([0001], [0007]) and is therefore in the same field of endeavor as Applicant’s invention and the same field of endeavor as Li.
In response to Applicant’s argument that the examiner’s conclusion of obviousness is based off impermissible hindsight reasoning, this is not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, the motivation to combine the references come from the references themselves and not from Applicant’s disclosure, and thus there is no impermissible hindsight used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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