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 amendment filed 6/8/2026 has been entered. Claims 3 and 13 have been canceled. Claims 1-2, 4-12, and 14-19 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Applicant’s election without traverse of Group I (composition), Species A (hydroxy functional polyesters), in the reply filed on 6/8/2026 is acknowledged.
Claims 14-15 and 19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/8/2026.
Claim Rejections - 35 USC § 112
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. Amended claim 6 fails to include a period indicating the end of the claim and hence it is unclear as to what is meant to be fully encompassed by the claim.
Claim Rejections - 35 USC § 102
Claims 1-2, 4-10, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inada (WO2015/111709A1, please refer to the attached machine translation for the below cited sections). Inada discloses a composition for forming an impact-resistant coating film on an object, such as wind turbine blades (Paragraphs 0002 and 0008), wherein the composition comprises: (A) a polyol, (B) a polyisocyanate compound, and (C) a curing catalyst; wherein the polyol (A) comprises a polyol (A1) having a fatty acid-derived structural unit having 8 or more carbon atoms, and in one preferred embodiment the polyol (A1) is at least one selected from castor oil and hydrogenated castor oil (Paragraphs 0010 and 0019). Inada discloses that the composition may further contain at least one polyol (A2), as a polyol (A), selected from the group consisting of polycaprolactone diol, polycaprolactone triol, polycaprolactone tetraol, polycarbonate diol, and polyacrylate polyol (Paragraph 0020); a coloring component (D) (Paragraph 0118) such as a titanium dioxide like TIPAQUE® CR-95 as utilized in the examples (Paragraph 0119 and Paragraph 0213, Note 22); a water repellent agent (E) (Paragraph 0122); a fluororesin (F) (Paragraph 0128); as well as known paint additives such as hydroxyl group-containing resins other than component (A); compounds that react with isocyanate groups such as amino compounds; extender pigments such as talc, kaolin, barium sulfate, calcium carbonate, and silica (e.g., “filler”); and other known paint additives as recited in Paragraph 0150 (Paragraph 0150). Inada discloses that the composition may also comprise a solvent such as to adjust viscosity (Paragraph 0156), wherein the solids content of the coating composition is preferably adjusted to a solids content of 15% by mass or more, particularly preferably within the range of 35 to 90% by mass (thus reading upon a “putty” composition as in the claimed invention; Paragraph 0157). Inada specifically discloses an example, Example No. 84 (Table 6), comprising 40 parts of castor oil having a hydroxyl value of 160 mg KOH/g (as in instant claim 4) as the polyol (A1) (Note 1 of Paragraph 0211; reading upon the claimed one or more castor oil based polyols), 40 parts of a polycaprolactone polyol (PLAXEL 410, i.e., PLACCEL 410) having a hydroxyl value of 224 mg KOH/g (as in instant claim 4) as the polyol (A2) (Note 14 of Paragraph 0211, reading upon the claimed “further comprises one or more hydroxy functional resins selected from hydroxy functional polyesters” as in instant claim 2 and/or the “further comprises one or more additional hydroxy functional resins” as in instant claim 16), 0.5 part of 1,2-dimethylimidazole as the curing catalyst (C) (as in instant claim 10), 100 parts of TIPAQUE® CR-95 as coloring agent (D) (Note 22 of Paragraph 0213), a hexamethylene diisocyanate nurate as the polyisocyanate (B) with an NCO content of 21.8% (SUMIJOULE® N3300 which is known to have an average functionality falling within the claimed range as recited in instant claim 8, Note 34 of Paragraph 0214) in a content to provide 1 equivalent per hydroxyl group (i.e., a stoichiometric ratio of 100:100 falling within the claimed ratio range as recited in instant claim 9), and 20 parts of DESMOPHEN® NH-1220 as an amino compound (Note 49 of Paragraph 0214) which is a polyaspartic ester having an amino value of 240-248 mg KOH/g (as evidenced by Squiller, US2016/0024339A1, Paragraph 0057; see also the attached DESMOPHEN® NH 1220 Product Datasheet and the attached DESMOPHEN® NH 1220 Safety Data Sheet, reading upon the claimed “one or more amino functional resins [comprising or comprises] one or more polyaspartic ester” as in instant claims 1 and 5, with an amine number as in instant claim 7, and also reading upon the instantly claimed formula (I) as recited in instant claim 6 as is well known in the art, see also, Jeromenok, US2017/0327700A1, Paragraphs 0060-0066, Claims 4-7), thus 80 parts of one or more hydroxy functional resins comprising one or more castor oil based polyols to 20 parts by weight of one or more amino functional resins comprising one or more polyaspartic ester, or 4 parts by weight of hydroxyl functional resins ii) relative to 1 part by weight of amino functional resins i) falling with the claimed relative weight parts range as recited in instant claim 1. Hence, Inada discloses a “putty” composition comprising the same components and in amounts as instantly clamed thereby anticipating instant claims 1-2, 4-10, and 16.
Claim Rejections - 35 USC § 103
Claims 11-12 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Inada as applied above to claims 1-2, 4-10, and 16, and further discussed below. The teachings of Inada are discussed in detail above and incorporated herein by reference, wherein with respect to instant claims 11-12, it is again noted that Inada teaches that the composition “may further contain known paint additives” as recited in Paragraph 0150, such as extender pigments, resin particles, “surface modifiers, and anti-settling agents, to the extent that they do not impair the performance of the paint film” (Paragraph 0150); and although Inada does not specifically recite that the composition comprises “hollow microspheres” as in instant claim 11 in a content in the range of 0.5 to 15wt%, based on the total weight of the composition as in instant claim 12, it is noted that hollow microspheres, particularly hollow glass microspheres, are an obvious species of extender pigment and/or anti-settling agent in the art, and are typical provided in a content as instantly claimed (as evidenced by Köhler, Paints and Coatings, 4. Pigments, Extenders, and Additives, Entire document, particularly Section 3 including Tables 1-2; Section 4, particularly page 42 and Sections 4.2 and 4.9; or Vecchiato, WO2012/035520A1, see Abstract, paragraph bridging pages 3-4, and page 4, last paragraph). Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Inada 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.
Further, with respect to instant claims 17-18, as noted above, Inada teaches that the coating may contain known paint additives such as extender pigments including talc, kaolin, barium sulfate, calcium carbonate, and silica, reading upon the claimed “filler” (Paragraph 0150); and given that Inada teaches working examples utilizing calcium carbonate or kaolin or barium sulfate or silica, separately, as the only extender pigment or “filler” in the composition (Examples, Table 6, Notes 43-46), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate any one of said “filler” materials as the only “filler” present in the composition as in instant claims 17-18, especially given that the coloring pigment (D) is not required to be titanium dioxide as utilized in the examples as evident from Paragraphs 0118-0121. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 17-18 would have been obvious over the teachings of Inada given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-12, and 16-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 6/8/2026.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jeromenok (US2017/0327700A1) teaches a composition for forming an insulating layer that is particularly suitable for fire protection, such as for coating of steel components and primarily in the construction field, wherein the composition comprises a component A containing an isocyanate compound having an average NCO functionality of one or more, preferably more than two; a component B containing a reactive component that reacts with isocyanate compounds and is selected from compounds having at least two primary and/or secondary amino groups, preferably polyaspartic acid esters; a component C containing a thiol-functionalized compound; and a component D containing an insulation layer-forming additive comprising a mixture which contains optionally at least one carbon source, at least one dehydration catalyst and at least one blowing agent; and wherein preferably, a polyol may be further added to the composition as an additional component to react with the isocyanate group to form a urethane group, thereby improving the intumescent properties of the composition by reducing the degree of crosslinking of the product of the reaction of the polyaspartic acid ester and the polyisocyanate, making it possible to adjust the intumescence properties of the composition in a targeted manner through a suitable choice of polyols.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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