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 .
The amendment dated 12/04/2025 has been considered and entered. The response has been considered and found to be persuasive over Wood et al. (CN 110461962 A) alone for failing to particularly recite the presence of chain extenders when making the polyurethane. Therefore, the previous rejections are withdrawn and new rejections are made below as necessitated by the amendment. The amendment also necessitates new grounds of rejections based on indefinite language.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3 – 5, 7 – 10, 12 – 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 3 – 5, 7 – 10, 12 – 17 ae contains the trademark/trade name H12MDI. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe H12MDI and, accordingly, the identification/description is indefinite.
For the sake of examination, H12MDI is taken as any aliphatic isocyanate as supported by paragraph 0048 of applicant’s specification.
Claim Rejections - 35 USC § 103
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.
Claims 1 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wood et al. (CN 110461962 A) in view of Share P et al. (CN 110352223 A)
In regards to claim 1, Wood teaches coating composition for providing a hard coating on products comprising UV absorbers b), hindered amine light stabilizers d) etc. [title, abstract, 0016]. The absorbers b) comprises benzotriazole [0018, 0019]. The benzotriazole absorber is present at from 0.1 to 25% in the composition according to UVA1 of the claim [0126]. The absorber may also include a triazine present at 0.05 to 3% in the composition according to UVA2 of the claim [0127, 0128].
The ratio of the benzotriazole to the triazine is from 15:1 to 1:15 or 1:1 [0129]. The composition can comprise polymers or oligomers such as polyurethane, polyurethane (meth)acrylate etc., a) according to thermoplastic polyurethane of the claim [0146]. The composition can comprise hindered amine at amounts of from 0.5 to 20% [0243]. The coating has a transmittance of ≤ 0.1% at from 290 nm – 360 nm and a transmittance of ≤ 0.5% at 400 nm according to the transmittance limitations of the claim [0188]. The coating film is transparent [0190]. Wood teaches the polyurethane which is prepared from the reaction of an aliphatic isocyanate (i.e., alkylene diisocyanate) with C2-C100 diol such as ethylene glycol etc., but does not particularly recite preparing the polyurethane with chain extenders [0166].
Share is added to teach similar polyurethane based hard coating compositions wherein the polyurethane is prepared from two or more isocyanate and two or more diols, wherein the isocyanates can be aliphatic isocyanates (i.e., hexamethylene diisocyanate, methylene-bis-cyclohexyl diisocyanate etc.) and the diols such as ethylene glycol etc. [0027, 0028]. Thus, the presence of 2 or more diols such as ethylene glycol provides both the diol and chain extender as claimed. According to applicant’s specification, low molecular weight glycols such as ethylene glycol provide chain extenders as claimed [See 0029 of applicant’s specification].
Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have prepared the polyurethane of Wood using two or more isocyanates with two ore more diols as discussed by Share, as Share teaches similar polyurethane similarly useful as coating composition and the process of making them.
In regards to claim 2, Wood teaches the composition having the transmittance of the claims. The means of measuring the transmittance does not carry patentable weight as the claims are drawn to the composition having the claimed transmittance.
In regards to claim 3, Wood teaches the composition which comprises hindered amines comprising at least one compound including oxanilide compounds which provides the limitation according to the UVA3 of the claim [0247].
In regard to claim 4, Wood teaches the composition having the 3 ingredients in amounts overlapping the claimed ratios.
In regards to claim 5, Wood teaches the composition having the coating (i.e., film) with the transmittance of the claims as previously discussed.
In regards to claim 6, Wood teaches the composition having the polyurethane. Polyurethanes are generally prepared from diisocyanate and diol [1060]. In one embodiment, a polyurethane acrylate is prepared by reacting diisocyanates and glycols such as C2 to C100 diol (i.e., ethylene glycol etc.) to prepare a polyurethane intermediate before further reaction [0166]. One or more of the diols also provides the limitation of chain extenders as discussed in the instant specification [see 0026 and 0029 of the instant specification]. For instance, ethylene glycol can provide both limitations of the diol and chain extender.
In regards to claim 7, Wood teaches the composition which is used to provide a hard coating and thus provide for the application of the coating on a substrate (i.e., products).
In regards to claim 8, Wood teaches the composition and coating and thus provides at least one or more layers of the coating composition.
In regards to claim 9, Wood teaches the coating which is a clear (i.e., transparent) coating and having the same transmittance properties as claimed.
In regards to claims 10 – 17, Wood teaches the coating composition and coatings having the claimed limitations and comprising a polyurethane prepared generally by reacting the claimed ingredients and which are further combined with a stabilizer, benzotriazole, triazine and oxanilide as previously discussed. By mixing the claimed ingredients, the method of making the polyurethane resin composition is intrinsically provided. The triazine comprises hydroxyphenyl-triazine as claimed [0062].
Polyurethanes are generally prepared from diisocyanate and diol [1060]. In one embodiment, a polyurethane acrylate is prepared by reacting a diisocyanate with a diol such as C2 to C100 diol (i.e., ethylene glycol etc.) to prepare a polyurethane intermediate before further reaction [0166].
Since Wood in view of Share teaches the composition and ingredients as claimed, similar properties to the claimed composition would be expected.
Response to Arguments
Applicant’s arguments 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
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771