DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 06/01/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-12 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the NBR-U polymer binder is the reaction product of a primary amine-terminated nitrile butadiene rubber and hexamethylene diisocyanate (HDI)”. While there is support in the present specification for a specific primary amine terminated nitrile butadiene rubber (Hypro 1300 x 42, Huntsman with 18% Acrylonitrile) (see page 16, lines 24-27), there is no support for any primary amine-terminated nitrile butadiene rubber as presently claimed. This rejection affects all the dependent claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Eibon et al. (US 2012/0107584 A1 cited in IDS) in view of Harris et al. (US 2004/0180213 A1 cited in IDS), Pasatta (EP 3786206 A1 cited in IDS) and SpecialChem (Hypro 1300 x 42 ATBN, 2020), taken in view of evidence by Huntsman (Hypro 1300 x 42 ATBN, 2026).
Regarding claims 1-8, 11 and 12, Eibon et al. disclose a coating system (bilayer coating) comprising a first coating layer (top layer) and a second coating layer (bottom layer) deposited beneath the first coating layer (see paragraph 0008). The first coating layer is dark in appearance but substantially transparent to infrared radiation and the second coating reflects infrared radiation but exhibits a darkness appearance similar to the first coating layer (see paragraph 0001). The coatings can comprise any thermosetting composition known in the art (see paragraph 0030). The thermosetting composition includes a thermosetting film-forming resin and a crosslinking agent (see paragraphs 0029-0031). The thermosetting film-forming resin has a functional group that are reactive with the crosslinking agent, wherein the functional group can include epoxide groups (see paragraph 0032). The coating composition can be automotive coating composition (see paragraph 0028).
The first coating layer (top layer) comprises a visibly absorbing infrared transparent pigment (pigment) such as iron oxide brown pigment, iron oxide red pigment, etc. (see paragraphs 0034, 0035). The amount of the pigment is 0.5 to 20 wt% based on the total solids weight of the composition (see paragraph 0039). The first coating layer comprises the thermosetting composition comprising a thermosetting film-forming resin having epoxide groups and a crosslinking agent as noted above.
The second coating layer (bottom layer) comprises thin flake metal infrared reflective pigments such as aluminum flakes (aluminum microflakes) (see paragraph 0043). The thin flake metal pigment has a thickness of 0.05 to 10 microns and a maximum width (lateral dimension) of 10 to 150 microns (see paragraph 0046). The amount of the thin flake metal pigment is 1 to 50 wt% based on the total solids weight of the coating composition (see paragraph 0049). The second coating layer comprises the thermosetting composition comprising a thermosetting film-forming resin having epoxide groups and a crosslinking agent as noted above.
While Eibon et al. disclose the first coating layer (top layer) comprising pigments such as iron oxide brown pigment or iron oxide red pigment, Eibon et al. do not disclose pigments are nanoparticle pigments. Eibon et al. do not disclose the first coating layer (top layer) and the second coating layer (bottom layer) comprises a Nitrile Butadiene Rubber-co-Urea (NBR-U) polymeric binder.
Harris et al. disclose a coating composition comprising a carrier having film-forming characteristics and a nanoparticle pigment of a UV light absorber (see Abstract and paragraphs 0032, 0035). The nanoparticle pigment can be red iron oxide (see paragraph 0030). The diameter of nanoparticle pigment is 5 to 100 nm (see paragraph 0119). The coating composition provides protection from exposure to ultraviolet (UV) light and visible light having wavelengths from less than 200 nm and upto 500 or 550 nm (see paragraph 0001). The red iron oxide nanoparticle pigment is identical to that utilized in the present invention (see page 8, line 10-14 of the present specification).
In light of motivation for using red iron oxide nanoparticle pigment having diameter of 5 to 100 nm disclosed by Harris et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use red iron oxide nanoparticle pigment having diameter of 5 to 100 nm as iron oxide red pigment in the first coating layer (top layer) of Eibon et al. in order to provide protection from exposure to ultraviolet (UV) light and visible light having wavelengths from less than 200 nm and upto 500 or 550 nm, and thereby arrive at the claimed invention.
Eibon et al. in view of Harris et al. do not disclose the first coating layer (top layer) and the second coating layer (bottom layer) comprises a Nitrile Butadiene Rubber-co-Urea (NBR-U) polymeric binder.
Pasatta disclose an epoxy formulation (thermosetting composition) comprising an epoxy resin, a curing agent and a toughener comprising a urea-terminated polybutadiene acrylonitrile copolymer (NBR-U polymer binder) (see page 13, claim 9). The curing agent is present in an amount of 2 to 8 parts by mass per 100 parts by mass of epoxy resin (see paragraph 0038). The urea-terminated polybutadiene acrylonitrile copolymer is present in an amount of 5 to 18 parts by mass per 100 parts of epoxy resin (see paragraph 0040). Accordingly, the amount of urea-terminated polybutadiene acrylonitrile copolymer in the epoxy formulation (thermosetting composition) is 4.7 to 14.3 wt% (4.7 = 5/107 x 100 and 14.3 = 18/126 x 100). The urea-terminated polybutadiene acrylonitrile copolymer is useful as both accelerator and toughener in the epoxy formulations (see paragraph 0009). The urea-terminated polybutadiene acrylonitrile copolymer increases the toughness of the epoxy formulation which can be evaluated by, for example, increase in T-peel strength, fracture toughness as well as notched and unnotched impact strength (see paragraph 0044). The epoxy formulations are useful in automotive industry (see paragraph 0043).
The urea-terminated polybutadiene acrylonitrile copolymer has urea at the terminal ends of the polymer or copolymer and do not include multiple urea linkages throughout the backbone of the polymer chain (see paragraph 0024). The urea-terminated polybutadiene acrylonitrile copolymer (NBR-U) is prepared by reaction of amine terminated polybutadiene acrylonitrile copolymer (ATBN) with diisocyanate such as hexamethylene diisocyanate, i.e. aliphatic diisocyanate (see paragraphs 0027-0028).
In light of motivation for using an epoxy formulation (thermosetting composition) disclosed by Pasatta as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use epoxy formulation (thermosetting composition) of Pasatta as the thermosetting composition in both the first coating layer (top layer) and the second coating layer (bottom layer) of Eibon et al. in view of Harris et al. in order to provide an increase in T-peel strength, fracture toughness as well as notched and unnotched impact strength of the first coating layer and the second coating layer, and thereby arrive at the claimed invention.
While Pasatta et al. disclose the urea-terminated polybutadiene acrylonitrile copolymer (NBR-U) prepared by reaction of an amine terminated nitrile butadiene rubber with hexamethylene diisocyanate, Eibon et al. in view of Harris et al. and Pasatta et al. do not disclose the amine terminated nitrile butadiene rubber is a primary amine-terminated nitrile butadiene rubber.
SpecialChem discloses Hypro 1300 x 42 ATBN, an amine-terminated nitrile butadiene rubber, that provides toughness, flexibility, adhesion and impact resistance of thermoset resin systems including epoxies (see page 1, paragraph 1). As evidenced by Huntsman, Hypro 1300 x 42 ATBN is based on methylpentamethylenediamine, i.e. aliphatic primary amine (see page 1, paragraph 1). Therefore, Hypro 1300 x 42 ATBN is a primary amine-terminated nitrile butadiene rubber. Further, as evidenced by the present specification, Hypro 1300 x 42 ATBN is a primary amine-terminated nitrile butadiene rubber (see page 16, lines 24-27).
In light of motivation for using Hypro 1300 x 42 ATBN disclosed by SpecialChem as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use Hypro 1300 x 42 ATBN as the amine terminated nitrile butadiene rubber in Eibon et al. in view of Harris et al. and Pasatta et al. in order to provide toughness, flexibility, adhesion and impact resistance, and thereby arrive at the claimed invention.
Accordingly, Eibon et al. in view of Harris et al., Pasatta et al. and SpecialChem disclose the NBR-U polymer binder is the reaction product of a primary amine-terminated nitrile butadiene rubber (Hypro 1300 x 42 ATBN) and hexamethylene diisocyanate (HDI). Given that a primary amine is aliphatic amine and hexamethylene diisocyanate is aliphatic diisocyanate, the NBR-U polymer binder necessarily has an aliphatic alkyl/vinyl polymer backbone. Further, given that NBRU-polymer binder is prepared by reaction of Hypro 1300 x 42 ATBN and hexamethylene diisocyanate identical to the present invention (see page 16, lines 24-27), the NBR-U polymer binder has an aliphatic/vinyl polymer backbone. Therefore, the NBR-U polymer binder of Eibon et al. in view of Harris et al., Pasatta et al. and SpecialChem is identical to that presently claimed.
Accordingly, Eibon et al. in view of Harris et al., Passatta and SpecialChem disclose the first coating layer (top layer) comprises thermosetting composition comprising epoxy resin, curing agent, 4.7 to 14.3 wt% of NBR-U and 0.5 to 20 wt% of nanoparticle pigments. Therefore, the ratio of nanoparticle pigments to NBR-U is 0.04 to 4.26 (0.04 = 0.5/14.3 and 4.26 = 20/4.7). The mass ratio overlaps with that presently claimed. Given that the first coating layer (top layer) comprises nanoparticle pigments and NBR-U polymer binder identical to that presently claimed including mean diameter of nanoparticle pigments, amounts of nanoparticle pigments and NBR-U polymer binder, and mass ratio of nanoparticle pigments and NBR-U polymer binder that overlap with that presently claimed, within the overlapping ranges, it is clear that the first coating layer (top layer) necessarily inherently has a transmittance as presently claimed.
Accordingly, Eibon et al. in view of Harris et al., Pasatta and SpecialChem disclose the second coating layer (bottom layer) comprises thermosetting composition comprising epoxy resin, curing agent, 4.7 to 14.3 wt% of NBR-U and 1 to 50 wt% of aluminum flakes. Therefore, the ratio of aluminum flakes to NBR-U is 0.07 to 10.6 (0.07 = 1/14.3 and 10.6 = 50/4.7). The mass ratio overlaps with that presently claimed. Given that the second coating layer (bottom layer) comprises aluminum microflakes and NBR-U polymer binder identical to that presently claimed including lateral size and thickness of aluminum microflakes, amounts of aluminum microflakes and NBR-U polymer binder, and mass ratio of aluminum microflakes and NBR-U polymer binder that overlap with that presently claimed, within the overlapping ranges, it is clear that the second coating layer (bottom layer) necessarily inherently has an emissivity and a reflectance as presently claimed.
Eibon et al. in view of Harris et al., Pasatta and SpecialChem do not disclose a bilayer coating for thermal management.
However, the recitation in the claims that the bilayer coating is “for thermal management” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Eibon et al. in view of Harris et al., Pasatta and SpecialChem disclose the bilayer coating as presently claimed, it is clear that the bilayer coating of Eibon et al. in view of Harris et al., Pasatta and SpecialChem would be capable of performing the intended use, i.e. for thermal management, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 9, Eibon et al. in view of Harris et al., Pasatta and SpecialChem disclose the bilayer coating as set forth above. Further, Eibon et al. disclose due to presence of thin flake metal pigment in the second coating layer (bottom layer), the second coating layer has the requisite hiding at low dry film thickness such as no more than 2 mils, i.e. 50.8 microns (see paragraph 0058). That is, the second coating layer can have thickness of no more than 2 mils, i.e. no more than 50.8 microns.
Regarding claim 10, Eibon et al. in view of Harris et al., Pasatta and SpecialChem disclose the bilayer coating as set forth above. Further, Harris et al. disclose a coating composition comprising a carrier having film-forming characteristics and a nanoparticle pigment such as red iron oxide as noted above. The thickness of coating is no more than 100 microns (see paragraph 0041). Further, the thickness of coating is related to level of protection required (see paragraph 0043).
In light of motivation for using coating comprising nanoparticle pigment that has thickness of no more than 100 microns disclosed by Harris et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the first coating layer (top layer) comprising nanoparticle pigment that has thickness of no more than 100 microns in Eibon et al. in view of Harris et al., Pasatta and SpecialChem in order to provide required level of protection, and thereby arrive at the claimed invention. Alternatively, it would have been obvious to one of the ordinary skill in the art to use thickness of the first coating layer (top coat layer) including that presently claimed depending on required level of protection in Eibon et al. in view of Harris et al., Pasatta and SpecialChem, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 06/01/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Claim 1, as amended, requires that the NBR-U polymer binder is the reaction product of a primary amine-terminated nitrile butadiene rubber and hexamethylene diisocyanate (HDI) forming an aliphatic alkyl/vinyl polymer backbone. As stated in the specification, this specific backbone is the reason the binder does not strongly absorb MIR radiation. This HDI (an aliphatic diisocyanate) and the resulting alkyl/vinyl backbone structurally distinguishes the claimed NBR-U polymer binder from Pasatta's NBR-U polymers that utilize 2,4-toluene diisocyanate (TDI), which is an aromatic isocyanate. Aromatic rings introduce specific C-H and C=C stretching/bending vibrations that absorb infrared radiation. Thus, Pasatta's specific NBR-U polymers do not read on the alkyl/vinyl backbone NBR-U polymers recited in claim 1, as amended.
While Pasatta disclose 2,4-toluene diisocyanate (TDI) is used preferably to prepare NBR-U polymer binder, Pasatta also disclose other diisocyanate such as hexamethylene diisocyanate can be used (see paragraph 0028). That is, an aliphatic isocyanate can be used. Given that hexamethylene diisocyanate is aliphatic diisocyanate, which is identical to that utilized in the present invention, NBR-U polymer binder prepared from hexamethylene diisocyanate necessarily reads on the alkyl/vinyl backbone NBR-U polymer binder. Accordingly, NBR-U polymer binder does not strongly absorb MIR radiation.
Further, “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).
Applicants argue that Pasatta uses his materially distinct type of NBR-U as a toughening agent and accelerator specifically for epoxy formulations. There is no teaching in Pasatta regarding the use of his NBR-U as a primary film-forming binder for optical transparency (i.e., transmittance greater than 0.7). Because Pasatta does not discuss MIR transparency, and Pasatta's NBR-U binder does not have the transparency properties required by claim 1, as amended, a person of ordinary skill would have no reason to select Pasatta's NBR-U polymers to achieve these optical properties.
As set forth above, Pasatta and SpecialChem disclose NBR-U polymer identical to that presently claimed, wherein NBR-U polymer is prepared by reaction of aliphatic diisocyanate such as hexamethylene diisocyanate with primary aliphatic amine-terminated nitrile butadiene rubber. Given that NBR-U polymer is identical to that presently claimed, NBR-U will have transparent properties required by claim 1, absent evidence to the contrary. Further, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue that Eibon is focused on solar (NIR) reflectance (700 to 2500 nm), and Harris is focused on UV/Visible protection. Neither reference provides any teaching regarding the 7 to 14 µm MIR window. The optical properties in mid-IR are key properties of the claimed coating. Pasatta's NBR-U, if synthesized with his preferred aromatic TDI, would fail to produce a coating with the recited transmittance (> 0.7) requirements. Therefore, these properties are not inherent to the broad class of NBR-U polymers disclosed in Pasatta.
While Pasatta disclose 2,4-toluene diisocyanate (TDI) is used preferably to prepare NBR-U polymer binder, Pasatta also disclose other diisocyanate such as hexamethylene diisocyanate can be used (see paragraph 0028). That is, an aliphatic isocyanate can be used. Further, “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, Eibon and Harris alone are not used to meet presently claimed NBR-U binder. As set forth above, Eibon et al. in view of Harris et al., Pasatta and SpecialChem disclose NBR-U binder identical to that presently claimed, wherein NBR-U binder is prepared by reaction of aliphatic diisocyanate such as hexamethylene diisocyanate with primary aliphatic amine-terminated nitrile butadiene rubber. Therefore, there is no aromatic ring in the NBR-U binder. Accordingly, NBR-U binder disclosed by Eibon et al. in view of Harris et al., Pasatta and SpecialChem would produce a coating with properties identical to that presently claimed, absent evidence to the contrary.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejections are withdrawn.
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.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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