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
While the current claims present distinct inventions (claims 1-13 are directed to a coating composition while claims 14-18 are a method of preparing and using the composition and claims 19-21are directed to a clearcoat; additionally, claim 2 claims three different species), the examination of these various inventions does not currently present an undue burden. Should a future amendment distinguish these inventions in a manner which does present an undue burden in their joint examination, a restriction may be appropriate at that time.
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)(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.
Claims 1-2, 6, 9-12, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saliya et al. (US 2010/0004365).
Claims 1, 2, 9, 10 and 16: Saliya teaches a coating composition obtained by mixing (Abst.; ¶ 0108) a blocked isocyanate hardener or a resin (¶¶ 0075; 0030-0034), a sagging control agent (¶¶ 0030-0034), such as a toluene diisocyanate (i.e. claimed carbon double bond based SCA) (¶ 0055); a catalyst (¶ 0064); a leveling agent (¶ 0028); a reactive diluent (¶ 0074); and a co-solvent (¶ 0075).
Claim 6: As discussed above Saliya teaches that the SCA is a carbon double bond SCA. Claim 6 is directed to an SCA obtained by a method and, as such, is a product-by-process claim. Product-by-process claims are defined by the product itself and not the method used to produce the product. MPEP § 2113. In this case, Saliya is considered to teach the claimed product even if it does not teach the same process steps.
Claim 11: Saliya teaches that the solid content is no less than 60% by weight (¶ 0065).
Claims 12 and 13: While Saliya does not discuss the ratio of shear viscosity or the VOC content, Saliya teaches the same composition as one which applicant discloses to have these features. Therefore, these features are considered inherent in Saliya.
Claims 18-19: Saliya teaches curing the composition to form a clearcoat (¶¶ 0002, 0035).
Claims 20 and 21: While Saliya does not discuss the double rub value or gloss of the clearcoat, Saliya teaches forming the clearcoat using the same materials in the same process as those which applicant discloses to yield the claimed properties. Thus, these properties are considered inherent in Saliya.
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Saliya in light of Barancyk et al. (US 6,111,001).
Claim 5: Saliya teaches a broad range of SCA compounds which are suitable, but fails to expressly discuss one having hydroxyl groups. Barancyk teaches rheology modifier (i.e. a sag control agent) used for clearcoats and explains that the rheology modifier can be a hydroxyl group based modifier (6:65-7:44). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a hydroxyl group based SCA in Saliya with the predictable expectation of success.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Saliya in light of Curatolo (US 2017/0009010).
Claims 7 and 8: Saliya teaches that a variety of resins can be selected as the resin, including polyacrylates (¶ 0036-0038, e.g.), but fails to teach that the resin is a vinyl silane containing polyacrylate. Curatolo teaches a clearcoat and explains that a suitable resin is a vinyl silane containing polyacrylate (¶ 0032). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a vinyl silane polyacrylate as the polyacrylate in Saliya with the predictable expectation of success.
With respect to how the resin is formed, product-by-process claims are defined by the product itself and not the method used to produce the product. MPEP § 2113.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Saliya.
Claims 15 and 17: Saliya does not expressly teach the claimed order of mixing. However, Saliya teaches that the composition is a 2K composition (i.e. one wherein components are mixed in two separate packs and then mixed together) (¶ 0075). The selection of any order of mixing ingredients is prima facie obvious. MPEP § 2144.04(IV)(C). Thus, it would have been obvious to one of ordinary skill at the time of filing to have mixed the resin, SCA and co-solvent in a first pack and then the hardener, catalyst and leveling agent in a second pack in Saliya with the predictable expectation of success.
Allowable Subject Matter
Claims 3 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
None of the prior art on record fairly teaches or suggests that the SCA is a silane based SCA which is equivalent to one formed by the steps recited in claim 3.
Conclusion
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712