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 .
Information Disclosure Statement
The information disclosure statement filed 01/14/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the references cited do not relate the claimed invention. Further, the information disclosure statement filed 03/12/2026 includes WO-20190001652 that also does not relate to the claimed invention. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The IDS references can also be applied to the current claim set based on the same reaction conditions and formulas already presented by Haveman and Leutfeld.
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 1-4, 11, 18-22, 25-29, 31, and 40 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by U.S. Patent No. 10,882,944 to Haveman et al.
As to claims 1-4, 11, 18-22, 25-28, and 31, it should be noted that the compound of formula (II) is still optional. Haveman discloses a thixotropic composition comprising a compound represented by the following formula and an aprotic solvent:
Wherein the compound comprises the reaction product of toluene diisocyanate and monohydroxyl compounds preferably polyethylene glycol monobutyl ether (hydrophilic) at a molar ratio of 1:1.05 to about 1:6 (5:1-18) to prepare a monoisocyanate reaction product that is reacted with xylylene diamine in the presence of solvent and surfactant (Examples, 11:1-36, Table 1). Haveman discloses wherein the composition contains small amounts (0.1 to about 1 wt%, 3:36-37), but preferably, no lithium salts from the viewpoint of improving the manufacturing process due to the corrosiveness associated with lithium (2:20-29). Haveman discloses a surfactant amount of 0.1 mols of surfactant calculated on the amine equivalent ofdiamine used (10:51-55).
As to claim 29, Haveman discloses a residual free isocyanate content of 0.1% (See
Examples).
As to claim 40, Haveman discloses a binder (paint, lacquer, or coating composition) comprising the urea urethane composition (10:58-67).
Claims 1-4, 6, 8, 11, 18-22, 25-29, 31-32, 36, and 40 are rejected under 35 U.S.C. 103 as
being unpatentable over U.S. Patent No. 10,377,906 to Leutfeld et al. in view U.S. Patent No. 10,882,944 to Haveman et al.
As to claims 1-4, 6, 8, 11-12, 15, 18-22, 25-28, 31, and 40, Leutfeld discloses a composition comprising 15 to 95% by weight of an amide compound, 5 to 75% by weight of a urea compound, 0 to 50% by weight of an ionogenic compound, preferably a lithium salt, and 0 to 35 wt% of a aprotic solvent (Abstract) wherein the urea compound comprises the reaction product of toluene diisocyanate and a monohydroxyl compounds, preferably polyethylene glycol monobutyl ether (hydrophilic) at a molar ratio of 1:1.05 to about 1:6 (See EP-1188779) to prepare a monoisocyanate reaction product that is reacted with xylylene diamine in the presence of solvent (Composition K6, Col. 21, II. 51-67). The formula of the urea would be the same as taught in Havemen. Haveman discloses a thixotropic composition comprising a compound represented by the following formula and an aprotic solvent:
Wherein the compound comprises the reaction product of toluene diisocyanate a monohydroxyl compounds at a molar ratio of 1:1.05 to about 1:6 (5:1-18) to prepare a monoisocyanate reaction product that is reacted with xylylene diamine in the presence of solvent and surfactant (Examples, 11:1-36, Table 1). As taught by applicants, the presence of compounds of formula (II) are a direct result of the molar ratio of monohydroxy compounds to diisocyanates. The molar ratio of is taught by Leutfeld. Accordingly, the compounds represented by formula (II) would be present including within amounts that are currently claimed.
Haveman discloses wherein the composition contains small amounts (0.1 to about 1 wt%, 3:36-37), but preferably, no lithium salts from the viewpoint of improving the manufacturing process due to the corrosiveness associated with lithium (2:20-29).
With regards to the content of lithium component, Leutfeld discloses a range of 0 to 50% by weight. It is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. It would therefore have been obvious that in this particular instance to less lithium salt that falls within the claimed range based on prior art presented that disclosed wherein reducing the content of lithium salt improves the manufacturing process due to the corrosiveness associated with lithium (Haveman, 2:20-29).
As to claims 12, 15, 32, and 36, Leutfeld refers to EP-1188779 (HAUBENNESTEL) that discloses the use of at least two or three different types of monohydroxyl alcohols when preparing the monoisocyanate adducts (See Abstract of cited reference). At the time of filing it would have been obvious to use different monohydroxyl alcohols within the composition of Leutfeld as taught in Haubennestel to prepare a composition having a defined structure, high storage stability and have a broad compatibility in binders typically not associated with urea urethanes prepared with only one type of monohydroxy component. As to claim 29, Leutfeld in view of Haveman disclose a residual free isocyanate content of 0.1% (See Examples).
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
The applicants argue that the presence of formula (II) within claim 1 overcomes the prior art of record. However, the presence of formula (II) is in the alternative by use of the language or and does not need to be present in the current claim set. Further, as alleged by applicants, the presence of compounds of formula (II) are a direct result of the molar ratio of monohydroxy compounds to diisocyanates. The claimed molar ratio of is taught by Leutfeld. Accordingly, the compounds represented by formula (II) would be present including within amounts that are currently claimed. Unless the applicant can prove otherwise.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 05/26/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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