DETAILED ACTION
The following Office action concerns Patent Application Number 18/247,935. Claims 1-4, 6, 15, 16, 23, 26-28, 33, 37, 40, 45, 51, 53 are pending in the application.
Claims 15, 23, 26-28, 33, 37, 40, 45, 51, 53 are withdrawn from consideration as being drawn to non-elected inventions.
Election/Restrictions
A restriction requirement was sent to the Applicant on January 15, 2026. The Applicant was required to elect among several groups of inventions. The Applicant responded to the restriction requirement on March 13, 2026 and elected Group 2, claims 1-4, 6 and 16, including linking claims, without traverse. The applicant also elected a resin species having an hydroxyl-functional group and co-reactive species having an isocyanate functional group.
Accordingly, claims 15, 23, 26-28, 33, 37, 40, 45, 51, 53 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected inventions.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(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.
Claims 1-4, 6 and 16 are rejected under 35 U.S.C. § 112(b) because the term “high transfer efficiency” is a relative term which renders the claim indefinite. The term “high transfer efficiency” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. § MPEP 2173.05(b).
Claim 2 is rejected under 35 U.S.C. § 112(b) because the term “the uncured coating” lacks antecedent basis. MPEP § 2173.05(e).
Claim 2 is rejected under 35 U.S.C. § 112(b) because the terms “volatiles” and “the volatiles content” lack antecedent basis. MPEP § 2173.05(e).
Claims 4 and 6 are rejected under 35 U.S.C. § 112(b) because the term “BYK CAP 2000+ Viscometer” is a trademark or trade name. A trademark or trade name may not be used to identify a product in a claim limitation. MPEP § 2173.05(u).
Claim 4 is rejected under 35 U.S.C. § 112(b) because the combination of carboxyl functional material and carbodiimide is stated both as being optional and being required. Therefore, it is unclear if the combination of carboxyl functional material and carbodiimide is optional or required. For the purpose of examination, the combination is considered to be optional.
Claim Rejections - 35 USC §§ 102 and 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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.
Claims 1-4 and 6 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by, or, alternatively, under 35 U.S.C. § 103 as being obvious over Moore et al (US 2021/0170444).
Moore et al teaches a method of forming a coating on a substrate comprising applying a coating composition to a substrate by expelling the composition through a high transfer efficiency applicator (par. 63, 76). The coating composition comprises water (aqueous carrier) and film-forming polymer (resin) (par. 158-159). The polymer includes a cross-linking functional group including hydroxyl (par. 160). The composition further comprises a cross-linking agent having an isocyanate group (co-reactive material) (par. 179). The method includes curing the coating composition (par. 177). The coating layer has a solvent resistance of at least 20 MEK double rubs as measured according to ASTM D4752 (par. 80).
Moore et al does not teach the solvent resistance as measured according to ASTM D5402. However, the method of Moore et al includes all of the steps and materials of the claimed method. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed 100 MEK double rubs (solvent resistance) to naturally arise.
In the event that the above disclosure is not sufficiently specific to anticipate the above listed claims, the examiner submits that the selection of the instantly claimed components and resultant properties would have been obvious to a method of forming a coating including all of the claimed steps and components.
Regarding claim 2, Moore et al is silent regarding loss of volatiles upon baking the composition. However, Moore et al teaches the claimed coating composition including the aqueous solvent. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed loss of volatiles to naturally arise.
Regarding claim 3, the coating composition comprises water, which is a one-component composition.
Regarding claim 4, Moore et al is silent regarding the viscosity ratio of the first component and the second component. However, Moore et al teaches the claimed coating composition including the claimed film-forming resin and claimed co-reactive material. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed viscosity ratio to naturally arise.
Regarding claim 6, Moore et al is silent regarding the ratio of viscosity at 0.1 s-1 shear rate to 1000 s-1 shear rate. However, Moore et al teaches the claimed coating composition including all of the components. Therefore, it is reasonable that a person of ordinary skill in the art would expect the claimed ratio of viscosity to naturally arise.
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over Moore et al in view of Diaddario et al (US 2009/0032145).
Moore et al teaches a method of forming a coating as described above. Moore et al does not teach any of the specific additives of claim 16.
However, Diaddario et al teaches a coating composition comprising rheology modifier including polyvinyl pyrrolidone (par. 55).
Moore et al teaches that the composition includes a rheology modifier, but does not teach specific examples. Diaddario et al teaches that polyvinyl pyrrolidone is a suitable rheology modifier (par. 55). It would have been obvious to a person of ordinary skill in the art to combine the rheology modifier of Diaddario et al with the method of Moore et al in order to obtain a suitable rheology modifier.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 April 15, 2026
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