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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/MY2021/050088 filed 10/13/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. MY PI2020005484 and MY PI2020005777 filed 10/19/2020 and 11/4/2020 respectively, which papers have been placed of record in the file.
Claims 1-4, 8, 11-12, 14-16, 18-23, 25-26, 28, 30 are pending.
Election/Restrictions
Applicant’s election of Group I Claims 1-4, 8, 11-12, 14-16, 18-19 in the reply filed on 6/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites preferably in line 8, which appears to be inadvertent.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-2, 8, 11-12, 14-16, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Souza et al. (Progress in Organic Coatings 139 (2020) 105424) in view of Jeyoung et al. (KR 20190051284).
Regarding claim 1: Souza is directed to a coating comprising a compound of
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Which is equivalent to formula (I) wherein R1 is alkylene bridge wherein one carbon atom is replaced by O, R2 is alkene, R3 is aryl, and R4 is alkene. The coating is cured with PTMP and DODT.
Souza doesn’t mention an elastomer.
Jeyoung is directed to a borate ester coating composition comprising an elastomer and a boronic ester polymer. The coating composition comprises a polyurethane and the self-healing boronic ester compound. One skilled in the art would have been motivated to use the boronic ester in a coating comprising a polyurethane and the self-healing boronic ester of Souza to provide an anti-scratch, anti-chip or anti-stone protective coatings applied to automotive, military, and IT applications. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have use the boronic ester in a coating comprising a polyurethane and the self-healing boronic ester to arrive at claim 1 of the present invention.
` Regarding claim 2: The elastomer of Jeyong is a polyurethane.
Regarding claim 8: Example 1 of Jeyong comprises the reaction of polytetramethylene ether glycol and isophorone diisocyanate (equivalent to formula (IIA) wherein R6, R7 are substituted carbocyclic groups, m1 is 3, and m2 is greater than 1 or formula IIB wherein m1 is 3, m2 is greater than 1.
Regarding claim 11: R3 is a an aryl group.
Regarding claim 12: R1 is an alkylene bridge substituted by O and R2 is alkylene.
Regarding claim 14: R1-R2 is -CH2pOCH2q(CH=CH2) wherein p and q are 1.
Regarding claim 15: -R3-R4 is phenyl-alkene.
Regarding claim 16: Souza discloses the compound
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Regarding claim 18: The moles of boronic ester to moles of the polyol + moles of boronic ester in the polyurethane is 0.25-0.75 by Relation 2. It can be determined the mole ratio of boronic ester to moles of polyurethane is within 4:1 to 1:4, e.g. a 1:1 molar ratio results in a value of 0.5 by Relation 2 and is squarely within the claimed range.
Regarding claim 19: Both Souza and Jeyong disclose the coatings are self-healing.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Souza and Jeyoung as applied to claim 1 above, and further in view of Ho et al. (US 5,798,409).
Regarding claim 3: The polyurethane of Jeyoung can comprise a reaction product of:
i. a cyclic aliphatic diisocyanate, e.g. cyclohexylene diisocyanate, 4,4'-dicyclohexylmethane diisocyanate
ii. a polyol
However, a chain extender.
Ho is directed to a self-healing coating comprising a polyurethane, wherein the polyurethane comprises a diisocyanate, a polyol, and a chain extender. One skilled in the art would have been motivated to have included a chain extender in the polyurethane of Jeyong to adjust the hardness/softness of the resulting coating as well as solubility (col. 11 ll. 25-40; col. 12 ll. 37-67 Ho). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a chain extender in the polyurethane of Jeyong.
Regarding claim 4: The polyurethane of Jeyoung can comprise a reaction product of:
i. a cyclic aliphatic diisocyanate, e.g. cyclohexylene diisocyanate, 4,4'-dicyclohexylmethane diisocyanate
ii. a polyol including polyether, although specific polyethers are not mentioned.
Ho teaches the polyurethane comprises a polyol of a polyether, wherein polyether polyols include polyethylene glycol, polypropylene glycol (col. 11 l. 65- col. 12 l. 4). One skilled in the art would have been motivated to have motivated to have selected the polyethers polyols of Ho as the polyether polyols of choice in Jeyong since Jeyong mentions polyether polyols, wherein Ho teaches specific polyether polyols used in polyurethane self-healing coating compositions. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have motivated to have selected the polyethers polyols of Ho as the polyether polyols of choice in Jeyong.
The chain extenders of Ho include propanediol, butanediol, pentanediol (col. 12 ll. 38-45 Ho).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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