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 Objections
Claim 24 is objected to because of the following informalities:
Claim 24, lines 1, 2, and 4-5, each instance of “multi-component coating composition” should read “coating composition”.
Appropriate correction is required.
Applicant is advised that should Claim 19 be found allowable, Claim 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1 and 4 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hu (CN 104,263,234) in view of Yorisue et al. (US 2018/0373147 A1).
Regarding Claims 1 and 4, Hu discloses a coating comprising polyurethane acrylate, cosolvent, corrosion inhibitor, and water (para 0007). The corrosion inhibitor includes benzotriazole (para 0013).
While Hu discloses benzotriazole corrosion inhibitor, Hu does not disclose a fused aza-heterocyclic compound or aromatic-substituted aza-heterocyclic compound comprising an aza-heterocyclic ring fused or chemically bonded with at least one aza-benzene ring as claimed.
Yorisue discloses a resin composition comprising polymer having acrylic groups (paras 0122-0123) or urethane groups (para 0270). Yorisue further discloses that purine and benzotriazole may be used interchangeably as additives that reduce discoloration of copper substrates (para 167, 0334) (i.e. inhibit corrosion).
In view of the interchangeability and equivalency of purine and benzotriazole disclosed by Yorisue, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to produce the composition of Hu using purine as the corrosion inhibitor instead of benzotriazole. Purine comprises a five-membered aza-heterocyclic ring fused to an aza-benzene ring.
Hu further discloses the coating comprising 70-80 parts polyurethane acrylate, 5-13 parts of silicone acrylate, 5-20 parts of reactive diluent, 1-6 parts of photoinitiator, 5-20 parts of modified nano silicon dioxide, 2-5 parts of nano titanium dioxide, 3-5 parts of cosolvent, 2-6 parts of corrosion inhibitor, 6-8 parts of auxiliary agent, and 30-50 parts of water (para 0007).
Therefore, the coating of Hu in view of Yorisue has 0.9-4.5% corrosion inhibitor (i.e. purine) (2/219 – 6/133).
Claims 1, 4, 6-15, and 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimae et al. (US 2013/0188270 A1) in view of the Evidence of Chemical Book (“Uses of polymerization products of isobutyl vinyl ether“).
Regarding Claims 1, 4, 6-11, 13, 15, 17-19, and 24-25, Nishimae discloses a composition comprising (b) a photoinitiator compound according to Formula (I) (para 0156). Formula (I) may be the following fused aza-heterocyclic compound:
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wherein at least one pair of R1 and R2, R2 and R3, R3 and R4, R5 and R6, R6 and R7, or R7 and R8 is:
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wherein R9, R10, R11, and R12 independently of each other are halogen, CN, OR17, SR18, SOR18, SO2R18 or NR19R20, wherein the substituents OR17, SR18 or NR19R20 optionally form 5- or 6-membered rings via the radicals R17, R18, R19 and/or R20 with one of the carbon atoms of the naphthyl ring (para 0005, lines 1-3, 19-21, and 29-33); including compounds where R19 and R20 together with the N-atom to which they are attached form a 6-membered unsaturated ring which is interrupted by NR17, such as pyridine, 1,3-diazine, or 1,2-diazine (para 0056); and/or including compounds where R19 and R20 together with the N-atom to which they are attached form a heteroaromatic ring system, said ring system is meant to comprise more than one ring, as well as one or more than one heteroatoms including N, such as purine or carboline ring systems (para 0059).
Therefore, the (b) photoinitiator compound according to Formula (I) may correspond to the additive as claimed, which is a fused aza-heterocyclic compound substituted with at least one aromatic group, having at least one ring containing at least one -NH- bond, and comprising at least one aza-heterocyclic ring fused or chemically bonded with at least one aza-benzene ring. The photoinitiator compound (b) comprises 0.05-25 wt% relative to the total weight of the composition (claim 9).
The composition further comprises component (a) (para 0156), which may be an emulsion or dispersion of at least one ethylenically unsaturated photopolymerizable compound in water (para 0178), wherein the concentration of water is 5-80% by weight of the component (a) (para 0179). The at least one ethylenically unsaturated photopolymerizable compound may comprise isobutyl vinyl ether (para 0159) which according to the evidence of Chemical Book is considered a reactive diluent (i.e. cosolvent).
The composition may further comprise one or more compounds (d) including adhesion promoters such as glycidyl-functional silanes (i.e. epoxy functional crosslinking agent) (para 0192). While a specific amount is not disclosed, the additives (d) are customary in the art and added in amounts that are usual for their respective application (para 0207). Therefore it would have been obvious to a person having ordinary skill in the art to choose an amount of glycidyl-functional silanes, including within the amount claimed, to optimize the effect of the additive (d).
The composition may further comprise 2-98% binder (e) relative to the total solids content (para 0208). The binder (e) may comprise acrylic copolymers including units of (meth)acrylamide diacetone acrylamide and/or methyl isopropenyl ketone (para 0209) (i.e. film forming resins having ketone carbonyl group).
In light of the overlap between the claimed composition and that disclosed by Nishimae, it would have been obvious to one of ordinary skill in the art to produce a resin composition that is both disclosed by Nishimae and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
E.g. a composition comprising 65% binder (e) (i.e. film forming resin), 10 wt% isobutyl vinyl ether (i.e. cosolvent), 20 wt% water, 1 wt% compound (b) (i.e. claimed additive), and 4% compound (d) (i.e. crosslinker) as claimed, would have a compound (a) comprising 66.6% (20/30) water and 33.3% (10/30) isobutyl vinyl ether and an amount of binder (e) relative to the total solid content of 93% (65/(65+1+4)) as disclosed by Nishimae.
Regarding Claims 12 and 21-23, Nishimae discloses all the limitations of the present invention according to Claims 1, 15, and 18 above. Nishimae further discloses the photopolymerizable (i.e. curable) composition is used as a coating material for wood (para 0214).
Regarding Claims 14 and 20, Nishimae discloses all the limitations of the present invention according to Claims 1 and 18 above. Since compound (b) corresponds to the aza-heterocyclic compound substituted with at least one aromatic group as claimed, and binder (e) corresponds to the film forming resin as claimed, including functionalities of both as claimed, the compound (b) would necessarily be configured to react with the binder (e) as claimed.
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
Applicant argues against the combination of Hu in view of Yorisue, arguing that the interchangeability of purine and benzotriazole taught by Yorisue is not relevant to Hu because Hu does not disclose a copper substrate
However, While Hu does not disclose the type of substrate on which the composition of Hu is applied, since Hu includes benzotriazole as a corrosion inhibitor, it would be obvious that the composition of Hu is used in applications susceptible to corrosion (i.e. on corrodible substrates). Yorisue discloses a composition that may be applied to a variety of substrates, including resins (which are not corrodible) and copper (which is corrodible) (para 0355); when the composition of Yu is applied to the copper substrate, Yu discloses benzotriazole and purine as equivalent and interchangeable additives that reduce discoloration (para 167, 0334) (i.e. inhibit corrosion). Therefore, it would have been obvious to a person having ordinary skill in the art that benzotriazole and purine would be equivalent and interchangeable as corrosion inhibitors in the composition of Hu.
Applicant argues against the rejection over Hu, arguing that the amount of inhibitor is calculated using the minimum amount of inhibitor and the maximum amounts of everything else, which would not be an obvious embodiment to try. Applicant further argues that the claimed amount is critical to achieve desired hardness and durability.
However, the fact remains that the amounts of each component are specifically disclosed in Hu, and the calculated percentage of inhibitor does overlap the amount claimed. Further, while Hu may disclose preferred amounts, it is noted that “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). Further, applicant has presented no evidence to establish the criticality of the claimed amount. Therefore, the rejection is maintained.
Regarding Nishimae, applicant argues that the NPL reference Chemical Book should not be used because it was not published before the priority date.
However, Chemical Book is only used as an evidentiary reference to show that isobutyl vinyl ether, which is disclosed in Nimishae, is a reactive diluent (i.e. cosolvent as claimed). As set forth in MPEP 2124, references cited to show a universal fact need not be available as prior art before applicant’s filing date, In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962).
Applicant argues that paragraph 0184 of Nishimae discloses photoinitiator amount based on solids of the composition, not total weight as calculated in the rejection.
However, the rejection of record does not rely on Paragraph 0184 of Nimishae, but on Claim 9 of Nishimae which recites the amount of photoinitiator “based on a total weight of the photopolymerizable composition”.
Applicant also argues that the overlap between the amount of photoinitiator (b) disclosed by Nishimae and the amount claimed is so small that it should not be considered relevant, in light of the criticality of the claimed amount to achieve desired hardness and durability.
However, the fact remains that Nishimae specifically discloses the photoinitiator compound (b) comprises 0.05-25 wt% relative to the total weight of the composition (claim 9), which does overlap the amount claimed. Further, applicant has presented no evidence to establish the criticality of the claimed amount. Therefore, the rejection is maintained.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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