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 .
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 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.
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.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laas et al. (PCT/CN2018/096488, hereafter, “Laas,” for which the English language equivalent application US 2021/0130530 will be used as the citation copy) in view of Laas et al. (US 2009/0156738, “Laas ‘738”).
Regarding claims 1, Laas teaches a water dispersible polyisocyanate ([0011], [0015]) comprising an isocyanate group and a sulfone group ([0014]), comprising a reaction product of a polyisocyanate and a hydrophilic active hydrogen component ([0014], [0013], [0018]), wherein the polyisocyanate comprises a first polyisocyanate containing pentamethylene diisocyanate ([0020]) and a second polyisocyanate having 6 or more carbon atoms ([0075], [0076]). Laas additionally teaches the composition may comprise sulfone-containing groups ([0017] – [0019], [0022], [0026]). Laas additionally teaches the first isocyanate may be included in an amount of greater than 40% by mass relative to the total amount of the first and second polyisocyanate compounds ([0084]). The Examiner notes that it would have been obvious to the ordinarily skilled artisan to have adjusted the components and amounts of the components that are taught by Laas as it would have been obvious to have tried these components with one another in a way that would have predictably provided a polyisocyanate compound consistent with the claimed invention (e.g., [0020],. [0055] – [0061], and please see MPEP 2143). Laas fails to teach that the polyisocyanate corresponding to the claimed second polyisocyanate is either an aliphatic or an alicyclic polyisocyanate (Laas teaches that the polyisocyanate B is araliphatic, [0075]). But the combination of aliphatic and alicyclic polyisocyanates is well known in the art. For example, Laas ‘738 teaches that aliphatic polyisocyanates for used in coating applications can provide good resistance to chemical and mechanical exposure (Laas ‘738, [0004]) and that cycloaliphatic diisocyanates, such as isophorone diisocyanate help to provide coatings having a suitably high hardness ([0006]; see also present specification at [0081], p. 15 describing IPID as a suitable cycloaliphatic diisocyanate). Therefore, in order to improve either the chemical and mechanical or hardness properties of a film made using a polyisocyanate composition, the ordinarily skilled artisan at the time of filing would have found it obvious to have substituted or otherwise to have included aliphatic or an alicyclic polyisocyanates in the composition (see Laas ‘738, [0004] – [0006]).
Regarding claim 2, Laas additionally teaches that the first polyisocyanate may comprise an isocyanurate derivative of pentamethylene diisocyanate ([0020], and wherein the entirety of the diisocyanate component for component A is pentamethylene diisocyanate and is thus greater than 60% by mass).
Regarding claim 3, Laas additionally teaches that the isocyanurate derivative of pentamethylene diisocyanate may comprise a reaction product of PDI monomer and an alcohol (see, e.g., [0020], [0055] – [0061] describing the reaction of isocyanurate component C with alcohol component E).
Regarding claim 4, Laas additionally teaches that the alcohol may comprise a monool (e.g., [0060], [0061]).
Regarding claim 5, Laas additionally teaches that the second polyisocyanate may comprise a isocyanurate derivative of polyisocyanate having 6 or more carbon atoms (e.g., [0075], [0076], various isocyanates having greater than 6 carbon atoms) and may be contained in combinations of varying amounts ([0076]). Please also see Laas ‘738 [0004] – [0006], describing the inclusion of isophorone diisocyanate to help to provide coatings having a suitably high hardness. Laas teaches that the diisocyanates may be included in mixtures of at least two diisocyanates and thus their inclusion at an amount of 50% would have been obvious to the ordinarily skilled artisan at the time of filing ([0076]).
Regarding claim 6, Laas additionally teaches that the sulfone group may be contained on the amount of from 1 to 1.6% by mass, thus reading on the claimed range ([0082]). The Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). Please see MPEP 2144.05.
Regarding claim 7, Laas additionally teaches that the isocyanate group may be blocked with a blocking agent (see e.g., [0099]).
Regarding claim 8, Laas additionally teaches a polyurethan resin composition that includes the composition as described above and includes various active hydrogen group-containing compounds (see, e.g., [0095], describing inclusion of various urethane compounds reactive because of their active hydrogen atoms).
Regarding claim 9, Laas additionally teaches an article comprising a polyurethane layer coating of the composition as described above (e.g., [0001] – [0003], [0013], [0015], [0092], [0095]).
Response to Arguments
Applicant’s arguments filed 12/15/25 are considered moot in light of the new grounds of rejection, which were necessitated by Applicant’s amendments.
Therefore, claims 1-9 are rejected as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782