Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
2. 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.
3. Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 2016/0200858 A1) in view of EP 3118234 A1 and WO 01/44341 A1.
Fukuda et al. disclose a blocked isocyanate composition and its use in the production of water resistant coatings, considered to include the instantly claimed water repellant compositions; adhesives; and fiber treatment material (instant claims 8-11), wherein the blocked isocyanate comprises the reaction product of aromatic or aralkyl polyisocyanates (instant claim 7) with a first blocking agent, wherein the preferred blocking agent constitutes a tetramethyl guanidine, corresponding to applicants’ Chemical Formula (1) of instant claims 1 and 2, and a second blocking agent having a lower catalytic activity that activates an isocyanate group, relative to the first blocking agent (instant claim 3). See abstract and paragraphs [0035], [0058], [0060], [0065], [0247], and [0250]-[0254]. Furthermore the reference discloses the mol% quantities of the first and second blocking agents such that the claimed (instant claim 4) mol% range of the first blocking agent is met. See paragraphs [0118] and [0185]. Fukuda et al. additionally disclose within paragraph [0122] that the blocked polyisocyanate composition can be modified to be water dispersible.
4. Though the primary reference discloses within paragraph [0122] that the blocked polyisocyanate can be made water dispersible, the reference fails to disclose applicants’ claimed means of accomplishing this by neutralizing the blocking agents with an acid. Still, the position taken that the claimed means would have been obvious in view of the combined teachings of the primary and secondary references. As aforementioned, the primary reference discloses that the blocked polyisocyanate composition can be rendered water dispersible. EP 3118234 A1 discloses that a tertiary amine containing polyurethane can be rendered water dispersible by neutralizing the tertiary amine-containing polyurethane with an acid, wherein acetic acid is exemplified (instant claims 5 and 6). See paragraphs [0041], [0062], and [0063] within EP 3118234 A1. Given the structure of the disclosed polyurethane, the skilled artisan would immediately understand that it is the tertiary nitrogen atoms that are being neutralized and rendered hydrophilic. Furthermore, within page 3, lines 9-16 of WO 01//44341 A1, it is disclosed that in the case of producing water dispersible blocked polyisocyanates, it is advantageous to preserve crosslinking potential by incorporating hydrophilicity into the blocking agent. The skilled artisan would understand that this disclosure pertains to preserving the isocyanate functionality of the deblocked polyisocyanates. Accordingly, the position is taken that one seeking water dispersible blocked polyisocyanates would have been motivated to produce the water dispersible blocked polyisocyanates of the primary reference by incorporating hydrophilic neutralized groups into the amine containing blocking agent via neutralization with an acid, thereby preserving isocyanate functionality once the blocked polyisocyanate is deblocked. Furthermore, the skilled artisan, being familiar with isocyanate-based chemistry, would have appreciated that it is the neutralized amine groups that provide the hydrophilicity, regardless of whether the dispersed structure is polyurethane- or polyisocyanate-containing. Regarding the equivalent ratio of acid relevant to the first blocking agent limitation of claims 1 and 12, though the references fail to disclose the claimed equivalent ratio, the position is taken that one seeking to promote water dispersibility would have been motivated to use an equivalent ratio as claimed to generate sufficient neutralized, water dispersible groups.
5. The examiner has considered applicants’ response and 37 CFR 1.132 declaration, filed 08 June 2026; however, they are insufficient to overcome the prior art rejection. Applicants have argued that if the skilled artisan had focused on hydrophilicity, the skilled artisan would not have arrived at the idea of adjusting the equivalent ratio of the acid to 0.8 or more, based on the argued examples within Tables 1-3 of the response and declaration, while it is argued that these examples within Tables 1-3 establish that when the equivalence ratio of the acid is 0.8 or more, then rubbing fastness is improved. In response and in agreement with the tenets established with respect to In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978), applicants’ arguments and showings are deficient, because the showings are not commensurate in scope with the claims. While the argued examples employ a first blocking agent and a second blocking agent in specific relative amounts, applicants’ claims are not so limited. Claims 1, 2, and 5-12 are silent with respect to the second blocking agent, and the exemplified blocking agent species and amounts of the examples are far more limited that what has been set forth within claims 3 and 4. Accordingly, applicants have failed to establish that the argued showings hold for the full scope of the claims. Furthermore, while applicants argue the criticalness of the equivalent ratio of the acid being 0.8 or more, it is noted, aside from the aforementioned deficiency, that the examples do not establish criticalness, with respect to rubbing fastness, associated with the value range endpoint of 0.8, because none of the argued examples employ a 0.8 equivalence ratio. Lastly, applicants’ argument, within the second full paragraph of page 5 of the response, with respect to the presence of anionic groups within the cloth-like fiber products used for the evaluations of rubbing fastness is not considered to be relevant, since the presence of such groups or limitations, associated with such groups, are outside the scope of the clams. Accordingly, in view of these deficiencies, the prior art rejection has been maintained for the reasons of record.
Conclusion
6. THIS ACTION IS MADE FINAL. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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