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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 February 2026 has been entered.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. 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 dispersibilty would have been motivated to use an equivalent ratio as claimed to generate sufficient neutralized, water dispersible groups.
6. The examiner has considered applicants’ response; however, it is insufficient to overcome the prior art rejection. Firstly, applicants have argued that the examples of the invention display excellent rubbing fastness; applicants’ argue that Examples 2, 4, and 5, having the claimed equivalent ratio, have relatively high ratings of rubbing fastness compared to Example 6, having an equivalent ratio of 0.5. However, applicants have failed to establish that the argued results hold for the full scope of the claims. It is noted that Examples 7-12, 15-17, 19, 22, 28, and 29 are within the scope of the claims in terms of the claimed equivalent ratio; however, these examples fail to display the argued improved rubbing fastness. Secondly, though applicants’ response argues why each of the references is deficient, applicants’ response fails to address/appreciate what the combined teachings of the relied upon references would have suggested to the skilled artisan. The examiner has presented rationale, based on what the combined teachings would have suggested to the skilled artisan, explaining why it would have been obvious to produce the water-dispersible blocked isocyanate, as claimed, and applicants’ response fails to convincingly rebut this rationale. Applicants’ attention is directed to MPEP 2145(IV).
Conclusion
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