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 .
The preliminary amendment filed 6/5/2023 has been entered. Claim 13 has been canceled. Claims 1-12 and 14-15 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 includes parenthetic expressions on lines 10 and 11, however, it is unclear whether the limitation in parentheses is meant to be a part of the claimed invention or merely a suggested basis (“e.g. weight”) for the claimed “parts” or “part”. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement. (Note: If the claims are meant to be limited to part(s) by weight, then it is suggested to delete the parentheses and recite “weight part” or similar.)
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 6 recites the limitation "the compound" in line 2. There is insufficient antecedent basis for this limitation in the claim, particularly given that the composition may comprise one or more amino functional resin that comprises one or more polyaspartic ester, and the claimed formula encompasses many compounds.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 14 recites the limitation "the outer surface" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 15 recites the limitation "the outer surface" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Similarly, it is noted that when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 4-10, and 14 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Weinhold (WO2018/177466A1, also printed as US2021/0130647A1, please refer to the US document for the below cited sections which is being utilized by the Examiner as an English language translation of the WO document). Weinhold discloses a coating material composition “for producing particularly erosion-stable coatings which are used as erosion protection, in particular as edge protection for rotor blades” of wind power plants (Abstract, Paragraph 0032, Claim 14, as in instant claim 14), wherein the coating material may be a pasty composition (Paragraph 0011, reading upon the claimed “putty” composition) comprising two components (Paragraph 0012): 1) a stock or binder component (“base composition”), and 2) a hardener component (“curing agent”) containing a polyisocyanate prepolymer having an NCO content of 2.8 to 18wt% (Paragraph 0024); wherein the stock or binder component contains at least one trifunctional polycaprolactone polyol or at least one polycarbonate diol or at least one polycaprolactone polyol and one polycarbonate diol (Paragraph 0012), and may further contain at least one second diamine, particularly a polyaspartic ester of formula (I) as described in Paragraph 0017-0021 (reading upon the claimed polyaspartic ester of instant claims 5-6), wherein the “mass ratio of polyols to amines lies between 0.1:1 and 5:1, preferably 0.5:1 and 2:1, more preferably between 0.8:1 and 1.2:1, most preferably between 0.9:1 and 1.1:1, especially at approx. 1:1” (Abstract, Paragraphs 0016-0023), with working examples specifically utilizing a ratio of polyol (a polycarbonate polyol or a polycaprolactone polyol which is a polyester polyol, as in instant claim 2) to polyaspartic ester compound (DESMODUR NH 1420) of 1:1 reading upon the claimed 1-10 parts (weight) of hydroxy functional resin(s) relative to 1 part (weight) of amino functional resin(s) as in instant claim 1 (Entire document, particularly as noted above and Examples, Table 1). Hence, Weinhold anticipates instant claims 1-2, 5-6, and 14.
With respect to instant claim 4, Weinhold discloses that the polycarbonate diols show hydroxyl numbers in the range of 35 to 300 mg KOH/g, preferably 50 to 280 mg KOH/g, more preferably 75 to 250 mg KOH/g (Paragraph 0014), with working examples utilizing a commercially available polycarbonate polyol having a hydroxyl value of 224 mg KOH/g (Examples), thereby anticipating instant claim 4.
With respect to instant claim 7, Weinhold discloses that the polyaspartic esters employed have an amine value of 120 to 300 mg KOH/g (Paragraph 0022), thereby anticipating instant claim 7.
With respect to instant claim 8, as noted above, Weinhold discloses that the polyisocyanate prepolymer has an NCO content of 2.8 to 18wt% (Paragraph 0024), and given the working examples utilizing a hardener mixture for inventive examples having an NCO content within the claimed range as well as comparative examples utilizing individual polyisocyanates having an NCO content within the claimed range, Weinhold anticipates instant claim 8 (Examples, Table 1, Paragraphs 0055-0068).
With respect to instant claim 9, Weinhold discloses that the ratio of NH and OH groups of the binder components to the isocyanate groups of the hardener components lines in the range of 1:0.5 to 1:2, preferably 1:0.7 to 1:1.3, more preferably 1:0.8 to 1:1.2, and particularly preferably close to a stoichiometric molar ratio of 1:1, e.g. in the range from 1:0.9 to 1:1.1 (Paragraph 0035), thereby anticipating instant claim 9.
With respect to instant claim 10, Weinhold discloses that the coating composition may also comprise catalysts for the catalysis of the reaction of hydroxyl groups and amino groups with isocyanate groups (Paragraph 0047), thereby anticipating instant claim 10.
Claims 1-2, 4-9, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hohnholz (US2017/0174933A1). Hohnholz discloses a two-part coating composition for providing improved erosion resistance to an outer surface of a substrate, particularly rotor blades of a wind turbine (as in instant claim 14), wherein the coating features good sandability and is particularly suited for providing good edge protection (Entire document, particularly Abstract, Paragraph 0012, 0022, 0094); and wherein the composition comprises: (1) a base component comprising (A) at least one polycarbonate diol(s) having an OH number of 50 to 500 mg KOH/g, measured in accordance with DIN 53240, present in a content of preferably in the range of 5 to 30wt% based on the total weight of the composition (Paragraphs 0027-0030; reading upon the claimed “one or more hydroxy functional resin comprising one or more hydroxy functional polymer” as in instant claim 1, particularly “hydroxy functional polycarbonates” as in instant claim 2, and hydroxyl number of instant claim 4); (B) at least one polyaspartic ester having an amine number of 120 to 300 mg KOH/g and a structure as shown in formula (I), present in a content of preferably in the range of 5 to 30wt% based on the total weight of the coating composition, e.g. similar to the content of (A) with a working example specifically utilizing a 1:1 ratio (Paragraphs 0032-0038 and Table 1; reading upon the claimed “one or more amino functional resin” of instant claim 1, particularly “one or more amino functional resin comprises one or more polyaspartic ester” as in instant claim 5 and structure as in claimed formula (I) of instant claim 6 with an amine number as in instant claim 7, and also reading upon the claimed relative (weight) parts as in instant claim 1 in light of the working example); and (C) at least one organosilane-modified filler; and (2) a hardener component comprising (D) at least one hexamethylene diisocyanate isocyanurate having an isocyanate content of 5% to 23%, very preferably 8% to 14%, with a working example at 11.0 (Paragraph 0054 and Examples, reading upon the claimed “curing agent comprising one or more polyisocyanates” as in instant claim 1 and particularly “one or more polyisocyanates have an NCO content in the range of 10-25%” and average functionality as in instant claim 8 given the working examples); wherein the ratio of the total molar amount of hydroxyl groups and amino groups in the base component to the molar amount of isocyanate groups in the hardener component is preferably from 1.0/0.9 to 1.0/1.5 (Paragraph 0078, reading upon the claimed range as recited in instant claim 9, particularly in light of the working examples); and given that Hohnholz specifically discloses that the coating can be produced in solvent-free form, or with solvent in a content of preferably less than 7.5wt%, and very preferably less than 2.5wt% (Paragraph 0063), the Examiner takes the position that Hohnholz discloses the claimed “putty” composition with sufficient specificity to anticipate instant claims 1-2, 4-9, and 14 (Entire document, particularly as noted above).
With respect to instant claim 10, Hohnholz discloses that the composition may further comprise a catalyst (Paragraph ), thereby anticipating instant claim 10.
Claims 1-2, 5-6, 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Best (US2015/0079294A1) discloses a coating composition (Abstract) that may be applied to various substrate materials (Paragraph 0054), wherein the coating composition comprises (a) a polyisocyanate prepolymer having an isocyanate content of 0.5 to 30wt%, such as 1 to 20% by weight or 10 to 20% by weight (Paragraph 0021, as in instant claim 8); (b) polymeric polyols including polyester polyols, polyether polyols, and polycarbonate polyols (Paragraph 0029, as in instant claim 2); (c) a polyaspartic ester having a structure according to the formula in Paragraph 0005, particularly as in Paragraph 0006 (as in instant claims 5-6); and (d) a chelated tin (IV) compound as a catalyst (as in instant claim 10; Paragraph 0047); wherein (b) and (c) are present in the coating composition at a weight ratio of 1:1 to 4:1 (Paragraph 0006), falling within the claimed 1-10 parts (weight) relative to 1 part (weight) of instant claim 1, thereby anticipating instant claims 1-2, 5-6, 8, and 10 given that the coating composition disclosed by Best is capable of use as a “putty” composition.
With respect to instant claim 9, Best discloses that components (a), (b), and (c) are used in the coating composition in amounts sufficient to provide an equivalent ratio of isocyanate groups to isocyanate-reactive groups (amine+hydroxyl) of 0.8:1 to 20:1, such as 0.8:1 to 2:1, or in some cases, 0.8:1 to 1.2:1 or 1:1 (Paragraph 0043), thereby anticipating instant claim 9.
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.
Claims 11-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Weinhold, as applied above to claims 1-2, 4-10, and 14, taken alone or in further view of Hong (US2014/0011935A1). The teachings of Weinhold are discussed in detail above and incorporated herein by reference, and although Weinhold further teaches that the coating material may contain fillers, in granular or powder form, in a content of up to 45wt%, preferably 0.1 to 40wt% based on the total weight of the coating material (fully encompassing the claimed content range of 0.5 to 15 wt% as recited in instant claim 12), for the purpose of achieving particular physical properties, with preferred fillers including metal oxides, Weinhold does not teach that the fillers or metal oxide fillers are hollow microspheres as in instant claim 11 (Paragraphs 0039-0041). However, it is first noted that hollow microspheres are an obvious species or form of granular metal oxide fillers in the art and given the absence of any clear showing of criticality and/or unexpected results, the Examiner takes the position that one having ordinary skill in the art at the time of the invention would have been motivated to provide the filler particles in any shape or form such that the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Weinhold taken alone. Alternatively or additionally, Hong teaches a similar polyurethane or polyurea coating composition for providing edge protection for an airfoil such as rotor blades (as in Weinhold), wherein the composition is made from a polyisocyanate and curing agents, such as polyaspartic esters, aldimines, and ketimines, polyamines and polyols or mixtures thereof (Abstract; as in Weinhold), and may comprise various fillers to impart desired properties to the coating with suitable fillers including metal-coated glass spheres or metal-coated hollow spheres as electrically conductive fillers, as well as metal oxide fillers such as micro-balloons to control dielectric constants, in filler concentrations effective to obtain desired properties (Paragraphs 0069-0072), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize hollow or micro-balloon fillers as taught by Hong in the invention taught by Weinhold based upon desired properties for a particular end use of the coating, given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 alternatively would have been obvious over the teachings of Weinhold in view of Hong.
With respect to instant claim 15, although Weinhold teaches an example wherein the coating composition is applied over a substrate precoated with known polyurea-based pore fillers thereby teaching and/or suggesting a wind blade having on at least a part of the outer surface a multilayer system, Weinhold does not limit the coating composition to such use but also does not teach that the coating composition is utilized to provide a cured putty layer upon which an optional cured primer layer to applied, followed by a cured topcoat below or above an optional cured leading edge protective coating layer as in instant claim 15. However, it is again noted that Hong teaches a similar polyurethane or polyurea coating composition for providing edge protection for an airfoil such as rotor blades as in Weinhold, specifically teaching that in one exemplary embodiment, the protective coating can comprise a layer of primer, a base coat layer, an optional tie layer and a top coat layer, wherein one of these layers is derived from the coating composition (Paragraph 0017), or in one embodiment, the primer, the base coat layer as well as the top coat layer can all be derived from the coating composition (Paragraph 0074); and given that Hong also teaches that the coating composition can be applied in one or more layers in order to create a protective coating (Paragraph 0073), such as in an amount of up to seven layers (Paragraph 0082), it would have been obvious to one having ordinary skill in the art to similarly utilize the coating composition taught by Weinhold as multiple layers as in Hong, reading upon the claimed cured putty layer, optional cured primer layer, cured topcoat layer, and cured leading edge protective coating layer given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results. Hence, instant claim 15 would have been obvious over the teachings of Weinhold in view of Hong.
Claims 3, 11-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hohnholz, as applied above to claims 1-2, 4-9, and 14, and in further view of Kramer (US2021/0163667A1). The teachings of Hohnholz are discussed in detail above and incorporated herein by reference, wherein with respect to instant claim 3, although Hohnholz teaches that the base component comprises at least one polycarbonate polyol and may further comprise other constituents different from the components already described above (Abstract, Paragraph 0068), Hohnholz does not teach that the composition comprises a castor oil based polyol as instantly claimed. However, given that it is well established in the art that a polyhydroxyl castor oil compound or “castor oil based polyol” is an obvious functionally equivalent polyol to a polycarbonate polyol in the art as evidenced by Kramer (Paragraphs 0060-0070) which similarly teaches a coating composition that may be applied to a rotor blade of a wind turbine (Paragraph 0206), the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Hohnholz in view of Kramer given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claims 11-12, Hohnholz teaches that “[s]uitable fillers to be modified (i.e., fillers not yet modified with organosilanes) include in principle all the fillers, especially inorganic fillers, known to the skilled person in connection with coating compositions” (Paragraph 0040), wherein the particle size is typically in the range of a few micrometers, and the content of the fillers in preferably in the range of 5 to 25 wt%, very preferably 8 to 15wt%, based on the total weight of the coating composition (Paragraph 0042); and given that hollow microspheres are an obvious species of filler shape/form in the art with Kramer teaching that suitable fillers for the similar coating composition include hollow beads (Paragraph 0140), the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Hohnholz in view of Kramer given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 15, Hohnholz teaches that the coating composition may be utilized in a multicoat coating on the substrate, and although Hohnholz teaches that “[p]referred multicoat coatings are those in which a coating of the invention constitutes the topcoat” with further coating layers such as a surfacer coat disposed beneath the coating, between the coating and the substrate (Paragraphs 0093-0094), given that Hohnholz also teaches and/or suggests that the coating may be applied directly to the substrate, particularly in light of the examples, and that the coating may have a dry film thickness of, for example, 100 to 500 microns (Paragraph 0088), applied utilizing known coating application methods (Paragraph 0083) wherein a desired coating thickness may be built up from multiple coating passes or coating layers, the claimed invention as recited in instant claim 15 would have been obvious over the teachings of Hohnholz in view of Kramer, especially given that the claim does not require the cured coating layers to be formed by different compositions.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vanderoorde (US20040186247A1) discloses a coating composition that may be utilized as a primer, filler, or clear coat layer, on aircraft wings, helicopter rotor blades, propeller blades, nose cones, radomes, fan blades, and the like, wherein the coating composition comprises a polyester polyol and at least one polyisocyanate, wherein other compounds may be present in the coating composition including hydroxy-functional oligomers and monomers such as castor oil, as well as aspartic esters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787