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 IV, claim 11, in the reply filed on 13 January 2026 is acknowledged. The traversal is on the grounds that the reference applied in the restriction, Bernad (WO 2020/260578 A1) does not disclose the use of a grout or caulk. This is not found persuasive for the following reasons.
It is first noted that due to the amendment to claims 2-7, 9-11, 13-16, and the addition of new claims 18-19, the election/restriction requirement set forth in the action mailed 19 November 2025 has been amended as follows.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 2-7, 11, 13-16, and 18, drawn to a grout or caulk.
Group II, claims 9-10 and 19, drawn to two or more substrates.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of a two-component coating system comprising component A comprising a polyaspartic acid ester and component B comprising a polyisocyanate, where the polyisocyanate has an isocyanate functionality of not less than 4 and the polyisocyanate comprises allophanate groups and isocyanurate groups, and the ratio of moles of the allophanate groups to the sum of moles of the isocyanurate groups and the allophanate groups is not less than 65:100, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Bernad et al. (WO 2020/260578 A1, “Bernad”).
Bernad discloses a coating composition made from two components (i.e., a two-component system) comprising a component a) that includes a polyetheraspartic ester (i.e., a polyaspartic acid ester) and a component b) comprising a polyisocyanate (page 37, Table 5, Model Coating 6). The polyisocyanate 4 used in Model Coating 6 (page 37, Table 5) is Desmodur XP 2599, which has an isocyanate functionality of 4 (page 34, Table 3). Given that Desmodur XP 2599 is identical to that used in the present invention as a polyisocyanate having a ratio of moles of allophanate groups to the sum of moles of isocyanurate groups and allophanate groups of 83.9:100 (see instant specification, page 13, Table 1), then the Desmodur XP 2599 of Bernad inherently comprises allophanate groups and isocyanurate groups and falls within the claimed molar ratio of moles of allophanate groups of not less than 65:100. Thus, Bernad discloses an identical two-component coating system as that presently claimed.
While Bernad may not disclose the composition is grout or caulk 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 two-component coating system identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
Therefore, since the limitations set forth in claims 11 and 9 fail to define a contribution over Bernad, they failed to constitute a special technical feature and hence there is lack of unity between the cited claims.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Since Applicant has elected claim 11 with traverse in the response filed 13 January 2026, this has been interpreted as electing Group I, claims 2-7, 11, 13-16, and 18.
In response to Applicant’s arguments, the argument is not found persuasive. While Bernad may not disclose the composition is grout or caulk 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 two-component coating system identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
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 on 13 January 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 3-5 and 14 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.
With respect to claim 3, the claim recites “under normal pressure” in line 9. The claim is indefinite because it is unclear what is considered “normal pressure”. Does this mean atmospheric pressure? Or a pressure that is typically used in a pressurized reaction vessel when reacting the polyaspartic acid ester and polyisocyanate? Clarification is respectfully requested.
Claims 4-5 are rejected under 35 U.S.C. 112(b) due to their dependency on claim 3.
Claim 14 is rejected under 35 U.S.C. 112(b) due to its dependency on claim 4.
Claim Rejections - 35 USC § 102
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.
Claims 3-7, 11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bernad et al. (WO 2020/260578 A1, “Bernad”).
With respect to claims 7, 11, and 15, Bernad discloses a coating composition made from two components (i.e., a two-component system) comprising a component a) that includes a polyetheraspartic ester (i.e., a polyaspartic acid ester) and a component b) comprising a polyisocyanate (page 37, Table 5, Model Coating 6). The polyisocyanate 4 used in Model Coating 6 (page 37, Table 5) is Desmodur XP 2599, which has an isocyanate functionality of 4 (page 34, Table 3). Given that Desmodur XP 2599 is identical to that used in the present invention as a polyisocyanate having a ratio of moles of allophanate groups to the sum of moles of isocyanurate groups and allophanate groups of 83.9:100 (see instant specification, page 13, Table 1), then the Desmodur XP 2599 of Bernad inherently comprises allophanate groups and isocyanurate groups and falls within the claimed molar ratio of moles of allophanate groups of not less than 65:100. Thus, Bernad discloses an identical two-component coating system as that presently claimed.
While Bernad may not disclose the composition is grout or caulk 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 two-component coating system 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, Bernad discloses the polyetheraspartic ester has the structure shown by formula (I) shown below, where R is a linear or branched C1-C10 alkyl group and X is a polyether (page 4). The examiner notes that the right hand side of formula (I) includes an HH group; this has been interpreted as if it should be an NH group. Support for this position comes from embodiment 11 of Bernad (page 18), which has both the left hand side and right hand side using NH groups instead of an NH group and an HH group. Bernad’s structure of formula (I) corresponds to the claimed structure where X is an aliphatic n-valent organic segment that is inherently non-reactive toward isocyanate groups at a temperature less than or equal to 100°C, R1 and R2 are each independently organic groups that are non-reactive toward isocyanate groups under normal pressure and at a temperature less than or equal to 100°C, and n is 2. X is a polyether having the structure shown below, where m is in the range of 2-35 (pages 4-5). Given that R is a linear or branched C1-C10 alkyl group, they are considered non-reactive toward isocyanate groups as claimed.
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Polyether X
With respect to claim 5, while Bernad discloses the polyetheraspartic ester has the structure as set forth in the above rejection of claim 3 where n is 2, there is no disclosure from Bernad regarding the polyetheraspartic 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 Bernad meets the requirements of the claimed structure, Bernad clearly meets the requirements of the present claims.
With respect to claim 6, Bernad discloses the polyisocyanate 4 used in Model Coating 6 (page 37, Table 5) is Desmodur XP 2599, which has an isocyanate content of 6.0% (page 34, Table 3).
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.
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 2-7, 11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Marauska et al. (EP 3 447 078 A1, “Marauska”) and the evidence provided by Robinson et al. (US 2010/0266764 A1, “Robinson”). The disclosure of Marauska is based off a machine translation of the reference included with this action.
With respect to claims 7, 11, and 15, Marauska discloses a chemical anchor ([0001]) comprising a multi-component composition with at least one polyisocyanate and one polyaspartic acid ester ([0009]). The polyisocyanate has NCO functionality of 2 or greater ([0010]) and includes Desmodur XP 2599 ([0016]). 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 isocyanurate groups and allophanate groups of 83.9:100 (instant specification, page 13, Table 1), the Desmodur 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.
In light of the overlap between the claimed two-component coating system and that taught by Marauska, 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 Marauska 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 Marauska 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.
With respect to claim 2, Marauska discloses the equivalent ratio of isocyanate groups of the polyisocyanate to amine groups reactive toward the isocyanate group of the polyaspartic acid ester compound is between 0.3 and 1.7 ([0029]).
With respect to claims 3-4 and 14, Marauska discloses the polyaspartic acid ester has a formula identical to formula I ([0019]) and includes Desmophen NH 1420 ([0026]), which is identical to that used in the present invention (instant specification, page 7, lines 16-17). As evidenced by Robinson, Desmophen NH 1420 has the structure shown below, corresponding to formula I where X is a cycloaliphatic structure, R1 and R2 are each 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 less than or equal to 100°C.
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With respect to claim 5, while Marauska discloses that n is 2 as set forth in the rejection of claim 3 above, there is no disclosure from Marauska 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 Marauska meets the requirements of the claimed structure, Marauska clearly meets the requirements of the present claims.
With respect to claim 6, Marauska discloses the polyisocyanate includes Desmodur XP 2599 ([0016]). 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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Marauska et al. (EP 3 447 078 A1, “Marauska”) and the evidence provided by Robinson et al. (US 2010/0266764 A1, “Robinson”) as applied to claim 11 above, and further in view of Fukuchi et al. (JP 2017-165813 A, “Fukuchi”). The disclosures of Marauska and Fukuchi are based off machine translations of the references included with this action.
With respect to claim 16, Marauska discloses a chemical anchor ([0001]) comprising a multi-component composition with at least one polyisocyanate and one polyaspartic acid ester ([0009]). The polyisocyanate has NCO functionality of 2 or greater ([0010]).
However, Marauska 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]).
Marauska 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 Marauska 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 Marauska 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.
Claims 2-7, 11, 13-15, 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.
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 2 and 13, 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).
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 this action.
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.
Conclusion
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787