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 .
Status of the Claims
Claims 1-4, 6-21 are currently pending.
Claim 5 has been canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/03/2026 has been entered.
Response to Amendments
Applicant’s amendments filed 04/03/2026 have been entered.
Claim 15 has been amended. Claim 21 has been newly added. Claim 5 has been canceled.
Upon further review, the previous rejections have been withdrawn.
However, a new Section 103 rejection has been implemented upon further search and consideration of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6-10, 13-14, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sasaki et al. (US 2019/0270837 A1).
Regarding claims 1, 4, 6, 8, and 21,
Sasaki teaches a modified polycarbodiimide compound, comprising a polymer backbone containing at least one -N=C=N- structural unit (formula (1)) used to make a polycarbodiimide copolymer and at least one -NH-C(aza-heterocyclic ring)=N- structural unit (an aromatic heterocyclic amine) that is attached to the polycarbodiimide polymer backbone to form a modified polycarbodiimide (Sasaki: abstract; par. 0015 and 0050). The aza-heterocyclic ring may be aromatic substituted for a aza-heterocyclic ring that is chemically bonded to a benzene ring such as 2-phenylimidazole or 2-phenyl-4-methylimidazole (options in claim 8) which would satisfy the claimed resulting structure of the modified polycarbodiimide compound being formed by reacting at least one polycarbodiimide compound with at least one chemically bonded aza-heterocyclic compound (that is a five-membered aza-heterocyclic ring chemically bonded to a benzene ring in which the heterocyclic ring is attached to the polymer backbone through a chemical bond on the nitrogen atom of the aza-heterocyclic ring) (Sasaki: par. 0053-0059).
Regarding claim 7,
Sasaki teaches the modified polycarbodiimide compound required by claim 4. Takahashi teaches the aza-heterocyclic ring is chemically bonded benzene ring, with claim 4 requiring fused “or” chemically bonded. Thus, claim 7 is optional in the scenario a chemically bonded ring is utilized and is only required in the case a fused ring is utilized.
Regarding claims 9 and 14,
Sasaki teaches the modified polycarbodiimide required by claim 1. Takahashi further teaches a composition that may be cured into a film and placed onto a substrate, such as PET (a plastic) and thus may be considered “a coating composition” as it structurally is a composition that can be processed into a layer on a substrate (Sasaki: par. 0089-0091). The composition comprising: component A) a resin (a film forming resin), at least one additive; and at least one solvent (a co-solvent) (Sasaki: abstract; par. 0063); component B) a curing agent (a crosslinking agent) that comprises the modified polycarbodiimide (Sasaki: par. 0058).
Regarding claim 10,
Sasaki teaches the coating composition required by claim 9. Sasaki further teaches the film-forming resin comprises a resin that crosslinks such as a polyurethane, an acrylic resin, an epoxy resin, an isocyanate resin and combinations (a self-crosslinking resin) (Sasaki: par. 0046 and 0063).
Regarding claim 13,
Sasaki teaches the coating composition required by claim 9. Sasaki further teaches Examples in which the modified polycarbodiimide production results in the IR absorption peaks for the unmodified starting product of polycarbodiimide “almost disappeared” which means some amount of polycarbodiimide remains in the mixture and would satisfy the crosslinking agent further comprising one polycarbodiimide compound other than the modified polycarbodiimide compound (Sasaki par. 0084).
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.
Claims 3 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki.
Regarding claim 3,
Sasaki teaches the modified polycarbodiimide required by claim 1. Sasaki further teaches the polycarbodiimide may have a number average molecular weight between 250 and 50,000, which overlaps with the claimed range of from 1500 to 5000 g/mol (Sasaki: par. 0034).
Regarding claims 11 and 12,
Sasaki teaches the coating composition required by claim 9. Sasaki does not explicitly teach the claimed proportions modified polycarbodiimide compound and the amounts in component A).
However, Sasaki does teach one or more solvents (solvents and cosolvents) may be added to the coating composition in addition to additives such as a leveling agent in the necessary proportions to appropriately compound the coating composition depending on the intended use and the like (Sasaki: par. 0065). Therefore, it would be obvious to one of ordinary skill in the art, lacking criticality, to adjust and arrive at the claimed proportions required in claims 11 and 12 to provide a coating composition that is suitable for the intended purposes as taught by Sasaki.
Claim(s) 2 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki in view of Fujiwara et al. (JP H1036469 A; machine translation).
Regarding claim 2,
Sasaki teaches the modified polycarbodiimide required by claim 1. Sasaki is silent towards the molar ratio of the -N=C=N- structural unit compared to the -NH-C(aza-heterocyclic ring)=N- structural unit being in a range of 100:80 to 100:10.
Fujiwara teaches forming a polycarbodiimide resin compound in which a -N=C=N- structural unit is reacted by grafting at least one amine compound in a molar ratio of 1:0.02 to 1:0.8 (converts to 100:2 to 100:80) which overlaps with the claimed molar ratio (Fujiwara: abstract; par. 0005-0014).
Sasaki and Fujiwara are in the corresponding fields of modified polycarbodiimide compositions with overlapping copolymer components. Therefore, it would be obvious to one of ordinary skill in the art provide the aza-heterocyclic compound to be in the molar ratio to provide improved optimized curing to improve storage stability as taught by Fujiwara.
Regarding claims 7 and 15-20,
Sasaki teaches a modified polycarbodiimide compound, comprising a polymer backbone containing at least one -N=C=N- structural unit (formula (1)) used to make a polycarbodiimide copolymer and at least one -NH-C(aza-heterocyclic ring)=N- structural unit (an aromatic heterocyclic amine) that is attached to the polycarbodiimide polymer backbone to form a modified polycarbodiimide (Sasaki: abstract; par. 0015 and 0050). The aza-heterocyclic ring may be aromatic substituted for a aza-heterocyclic ring that is chemically bonded to a benzene ring such as 2-phenylimidazole or 2-phenyl-4-methylimidazole (options in claim 8) which would satisfy the claimed resulting structure of the modified polycarbodiimide compound being formed by reacting at least one polycarbodiimide compound with at least one chemically bonded aza-heterocyclic compound (that is a five-membered aza-heterocyclic ring chemically bonded to a benzene ring in which the heterocyclic ring is attached to the polymer backbone through a chemical bond on the nitrogen atom of the aza-heterocyclic ring) (Sasaki: par. 0053-0059).
Sasaki does not explicitly teach wherein the aza-heterocyclic ring is fused with the benzene ring that may be a substituted benzene ring.
Fujiwara teaches forming a polycarbodiimide resin compound in which a -N=C=N- structural unit is reacted by grafting at least one amine compound in which an aza-heterocyclic ring is attached to the polymer backbone through a chemical bond on the nitrogen atom (Fujiwara: abstract; par. 0005-0016). The reactive compound that is grafted may comprise overlapping compounds with that of Sasaki such as imidazole but also includes compounds such as benzimidazole which would include a fused benzene ring and is one of the options listed in claim 7 to provide improved storage stability (Fujiwara: par. 0012-0014).
Sasaki and Fujiwara are in the corresponding fields of modified polycarbodiimide compositions with overlapping copolymer components. Therefore, it would be obvious to one of ordinary skill in the art provide the aza-heterocyclic compound to be fused with a benzene ring and/or chemically bonded to a benzene ring with examples of substituted cyclic rings that may be used in combination in the polycarbodiimide of Sasaki to provide the improved or desired storage stability as taught by Fujiwara.
Response to Arguments
Applicant’s arguments filed 04/03/2026 are moot as they do not pertain to the new prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-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, Maria Veronica D. Ewald can be reached at 571-272-8519. 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.
/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
Prosecution Insights