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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-15 in the reply filed on 26 May 2026 is acknowledged.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 May 2026.
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.
Claim 10-12 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 10-12 recite the limitation "said multifunctional crosslinking agent" in lines1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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 –
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 8, 10, 11, and 13 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allard et al. (US Patent No. 6949591).
Regarding claims 8 and 13; Allard et al. teaches, in a preferred embodiment, a primer coating composition comprising a urethane (meth)acrylate free from hydroxyl groups (Ebecryl® 5129; acrylated urethane oligomer), a polyesterpolyol (Desmophen®; polyester resin), Irgacure® 819 (photoinitiator), oligomeric acrylate containing free isocyanate groups and acrylate groups (Roskydal® 2545; crosslinking agent), microtalc as filler, and an organic solvent (mixture of butyl acetate, n-butanol, and Ektpro®) [col15, Ex1]. .
Allard et al. does not explicitly teach the composition has an uncured viscosity between 100 and 800 centipoise. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. viscosity, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
The Examiner makes note that “a surface coating primer” composition is an intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding claims 10 and 11; although Allard et al. teaches Roskydal® 2545 in a preferred embodiment, it is substituted by Ebecryl® 284 (difunctional diacrylate multifunctional crosslinking agent) [col6, line16-19].
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.
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.
Claim(s) 8, 9, 12-14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Allard et al. (US Patent No. 6949591).
Regarding claims 8, 9, and 13; Allard et al. teaches, in a preferred embodiment, a primer coating composition comprising a urethane (meth)acrylate free from hydroxyl groups (Ebecryl® 5129; acrylated urethane oligomer), a polyesterpolyol (Desmophen®; polyester resin), Irgacure® 819 (photoinitiator), oligomeric acrylate containing free isocyanate groups and acrylate groups (Roskydal® 2545; aliphatic urethane acrylate resin), microtalc as filler, and an organic solvent (mixture of butyl acetate, n-butanol, and Ektpro®) [col15, Ex1]. Allard et al. teaches the composition may further comprise reactive diluents, such as difunctional acrylate monomers (crosslinker) [col8, lines10-56].
Allard et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Allard et al. does not specifically disclose an embodiment containing a polyester resin, acrylated urethane oligomer, crosslinking agent, solvent, photoinitiator, particulate filler, and an aliphatic urethane acrylate resin. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing acrylated urethane oligomer, crosslinking agent, solvent, photoinitiator, particulate filler, and an aliphatic urethane acrylate resin based on the invention of Allard et al., and would have been motivated to do so since Allard et al. suggests that the composition can contain acrylated urethane oligomer, crosslinking agent, solvent, photoinitiator, particulate filler, and an aliphatic urethane acrylate resin. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Allard et al. does not explicitly teach the composition has an uncured viscosity between 100 and 800 centipoise. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. viscosity, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
The Examiner makes note that “a surface coating primer” composition is an intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding claim 12; Allard et al. teaches the reactive diluent (i.e. crosslinker) is employed in an amount of preferably from 2 to 70% by weight [col8, line 57-60]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the reactive diluent in an amount as low as 2% by weight, and would have been motivated to do so since Allard et al. teaches that amount suitable in order to achieve the particulars of the present invention.
Regarding claims 14-15; Allard et al. teaches the composition may further comprises additives such as pigments, employed in an amount of less than 20% by weight [col8, line62-col9, line36]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the pigment additive in an amount less than 20% by weight (e.g. 10% by weight), and would have been motivated to do so since Allard et al. teaches that amount suitable in order to achieve the particulars of the present invention.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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