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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 2-7, 11, 14-16, and 18, in the reply filed on 19 June 2026 is acknowledged. The traversal is on the grounds that Bernad (WO 2020/260578 A1) does not disclose the equivalent ratio of isocyanate groups to amino groups of 2:1-4:1 as recited in amended claim 11. This is not found persuasive for the following reasons.
With respect to Applicant’s traversal of the restriction requirement, Applicant’s remarks are based on the amended claims filed 19 June 2026 having a special technical feature not taught by the references cited in the restriction requirement set forth in the action mailed 03 March 2026. However, the restriction requirement was properly made with respect to the claims presented at the time of the previous action (i.e., the claims filed 13 January 2026) and Applicant has not presented any arguments directed to the claims filed 13 January 2026. Also, even with respect to the newly amended claims filed 19 June 2026, the amended claims do not make a contribution over the prior art (i.e., Groups I-II still lack the same or corresponding special technical features) because the groups do not make a contribution over Amb et al. (WO 2019/003190 A1, “Amb”) as set forth below.
Amb discloses a two part coating composition, where the first part comprises polyisocyanate and the second part comprises polyamine (page 2, lines 17-18). The polyisocyanate has two or more reactive groups (page 3, line 5) and includes Desmodur XP 2599 (page 3, lines 29-30). Since Desmodur XP 2599 is identical to that of the present invention as a polyisocyanate having a ratio of moles of allophanate groups to the sum of moles of the isocyanurate groups and allophanate groups of 83.9:100 (instant specification, page 13, Table 1), the Desmodur XP 2599 inherently comprises allophanate groups and isocyanurate groups that falls within the claimed molar ratio of allophanate groups:(allophanate groups and isocyanurate groups) of not less than 65:100. The equivalent ratio of isocyanate groups of the polyisocyanate to amine groups reactive towards the isocyanate group of the polyaspartic acid ester is at least about 1:1 (page 16, lines 23-24), which overlaps the presently claimed range of 2:1-4:1. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding the composition being grout or caulk, while there is no disclosure from Amb that the two part coating is grout or caulk as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., grout or caulk) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a composition identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
In light of the overlap between the claimed two-component coating system and that taught by Amb, it would have been obvious to one of ordinary skill in the art to use a two-component coating system that is both taught by Amb and is encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Therefore, since the limitations set forth in claims 9 and 11 fail to define a contribution over Amb, they failed to constitute a special technical feature and hence there is lack of unity between the cited claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-10 and 19 are 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. Applicant timely traversed the restriction (election) requirement in the reply filed 19 June 2026.
Information Disclosure Statement
The information disclosure statements (IDSs) filed 19 June 2026 and 29 June 2026 have been reviewed by the examiner. The examiner has considered the references cited in the IDS filed 19 June 2026. However, the examiner has not considered the IDS filed 29 June 2026 as it repeats the same citation to Mechanical Education included with the IDS filed 19 June 2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 3-7, 11, 14-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Amb et al. (WO 2019/003190 A1, “Amb”) and the evidence provided by Robinson et al. (US 2010/0266764 A1, “Robinson”).
With respect to claims 7, 11, and 15, Amb discloses a two part coating composition where the first part comprises polyisocyanate and the second part comprises polyamine (page 2, lines 17-18). The polyisocyanate has two or more reactive groups (page 3, line 5) and includes Desmodur XP 2599 (page 3, lines 29-30). Since Desmodur XP 2599 is identical to that of the present invention as a polyisocyanate having a ratio of moles of allophanate groups to the sum of moles of the isocyanurate groups and allophanate groups of 83.9:100 (instant specification, page 13, Table 1), the Desmodur XP 2599 inherently comprises allophanate groups and isocyanurate groups that falls within the claimed molar ratio of allophanate groups:(allophanate groups and isocyanurate groups) of not less than 65:100. Amb further discloses the equivalent ratio of isocyanate groups of the polyisocyanate to amine groups reactive towards the isocyanate group of the polyaspartic acid ester is at least about 1:1 (page 16, lines 23-24); this overlaps the presently claimed range.
In light of the overlap between the claimed two-component coating system and that taught by Amb, it would have been obvious to one of ordinary skill in the art to use a two-component coating system that is both taught by Amb and is encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding the composition being grout or caulk, while there is no disclosure from Amb that the two part coating is grout or caulk as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., grout or caulk) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a composition identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
With respect to claims 3-4 and 14, Amb discloses the aspartic ester amines have the structure shown in Formula 3 below where R12 is an aliphatic divalent organic group containing up to 40 carbon atoms (which would inherently be non-reactive toward isocyanate groups at a temperature less than or equal to 100°C) and each R13 is independently an organic group inert toward isocyanate groups at temperatures of 100°C or less (page 11, line 34-page 12, line 7) and includes Desmophen NH 1420 (page 12, line 17). As evidenced by Robinson, Desmophen NH 1420 has the structure shown below, corresponding to the claimed formula I where X is a cycloaliphatic structure, R1 and R2 each represent ethyl groups, and n is 2 ([0027]). Given that R1 and R2 are identical to those used in the present invention (instant specification, page 7, lines 5-6), they would inherently be non-reactive toward isocyanate groups under normal pressure and at a temperature less than or equal to 100°C. Given that X is a cycloaliphatic structure as claimed, X would inherently be non-reactive toward isocyanate groups at a temperature of less than or equal to 100°C.
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Formula 3
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Desmophen NH 1420
With respect to claim 5, while Amb discloses that n is 2 as set forth in the rejection of claim 3 above, there is no disclosure from Amb regarding the polyaspartic acid ester being obtained by the reaction of a polyamine of formula II and a maleate or the fumarate of formula III as claimed. However, this is a process limitation in a product claim. It is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Amb meets the requirements of the claimed structure, Amb clearly meets the requirements of the present claims.
With respect to claim 6, Amb discloses the polyisocyanate includes Desmodur XP 2599 (page 3, lines 29-30). Since Desmodur XP 2599 is identical to that of the present invention as a polyisocyanate having an isocyanate group content of 6%, relative to the total weight of the polyisocyanate (instant specification, page 13, Table 1), the Desmodur 2599 inherently has an isocyanate group content of 6% by weight, relative to the total weight of the polyisocyanate as presently claimed.
With respect to claim 18, Amb discloses the coating has a thickness of at least 5 mm (page 15, lines 18-19), overlapping the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Amb et al. (WO 2019/003190 A1, “Amb”) and the evidence provided by Robinson et al. (US 2010/0266764 A1, “Robinson”) as applied to claims 11, 7, and 15 above, and further in view of Fukuchi et al. (JP 2017-165813 A, “Fukuchi”). The disclosure of Fukuchi is based off a machine translation of the reference included with the action mailed 03 March 2026.
With respect to claim 16, Amb discloses a two part coating composition where the first part comprises polyisocyanate and the second part comprises polyamine (page 2, lines 17-18). The polyisocyanate has two or more reactive groups (page 3, line 5).
However, Amb does not disclose wherein the ratio of moles of the allophanate groups to the sum of moles of the isocyanurate groups and the allophanate groups is 68:100 to 80:100.
Fukuchi teaches a polyisocyanate composition ([0001]) comprising a polyisocyanate having a molar ratio of allophanate groups/(isocyanurate groups and allophanate groups) of 0.2 to 0.9 (equivalent to 20:100 to 90:100) for good compatibility and curability ([0013], [0025]).
Amb and Fukuchi are analogous inventions in the field of compositions comprising polyisocyanates containing allophanate groups and isocyanurate groups.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the isocyanate of Amb to have a molar ratio of allophanate groups/(isocyanurate groups and allophanate groups) of 0.2 to 0.9, including values presently claimed, as taught by Fukuchi in order to provide a composition having good compatibility and curability (Fukuchi, [0013], [0025]).
Regarding the composition being grout or caulk, while there is no disclosure from Amb in view of Fukuchi that the chemical anchor is grout or caulk as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., grout or caulk) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a composition identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
Response to Arguments
Due to the cancellation of claims 2 and 13, the 35 U.S.C. 103 rejections of claims 2 and 13 are withdrawn.
Due to the amendment to claim 11, the: 35 U.S.C. 102(a)(1) rejections of claims 3-7, 11, and 15 over Bernad et al. (WO 2020/260578 A1, “Bernad”); the 35 U.S.C. 103 rejections of claims 3-7, 11, and 14-15 over Marauska et al. (EP 3 447 078 A1, “Marauska”) and the evidence provided by Robinson et al. (US 2010/0266764 A1, “Robinson”); and the 35 U.S.C. 103 rejection of claim 16 over Marauska in view of Fukuchi et al. (JP 2017-165813 A, “Fukuchi”) and the evidence provided by Robinson are withdrawn. This is because none of Bernad, Marauska, or Fukuchi disclose an equivalent ratio of isocyanate groups to amino groups of 2:1-4:1.
In light of Applicant’s remarks regarding the 35 U.S.C. 112(b) rejections which clarify that “normal pressure” refers to 1 atm (see remarks filed 19 June 2026, page 6), the 35 U.S.C. 112(b) rejections of claims 3-5 and 14 are withdrawn.
Applicant's arguments filed 19 June 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections over Amb in view of the evidence provided by Robinson, Applicant argues the claimed equivalent ratio of isocyanate groups to amino groups of 2:1-4:1 is a subgenus of the genus of at least about 1:1 disclosed by Amb, and that a subgenus being encompassed by a reference’s genus is insufficient to establish a prima facie case of obviousness. Applicant further argues one of ordinary skill in the art would have no reason to select the narrower range recited in claim 11 because the range recited in Amb is large. Applicant additionally argues Amb discloses a preferred range of 1.1:1 to 1.4:1. The examiner respectfully disagrees.
In response to Applicant’s argument that the disclosed range is insufficient to establish a prima facie case of obviousness for the narrower claimed range, and that one of ordinary skill in the art would have no reason to select the narrower range recited in claim 11, this is not found persuasive. The examiner acknowledges that Amb discloses a broad range of at least about 1:1. However, the fact remains that this range overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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). Further, Applicant has provided no evidence (i.e., data) demonstrating one of ordinary skill in the art would find the claimed range non-obvious.
In response to Applicant’s argument that Amb discloses a preferred range of 1.1:1-1.4:1, this is not found persuasive. The examiner acknowledges Amb discloses a preferred range. However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); see also MPEP 2123 II. The fact remains that Amb discloses the equivalent ratio of isocyanate groups of the polyisocyanate to amine groups reactive towards the isocyanate group of the polyaspartic acid ester is at least about 1:1 (page 16, lines 23-24), which overlaps the presently claimed invention. As set forth in MPEP 2144.05, in the case where the claimed range “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).
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E 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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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