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 .
This communication is responsive to the claim set filed 07/25/2026 and Response to Restriction filed 02/12/2026. Claims 1-12 are pending. Claims 1-10 are under consideration in this Office Action. Claims 11-12 are withdrawn.
Claims 1-10 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election without traverse of Claims 1-10 in the reply filed on 02/12/2026 is acknowledged.
Claim Objections
Claim 10 is objected to because of the following informalities: line 10 ‘wherein one-component coating composition” should read –wherein the one-component coating composition--.
Appropriate correction is required.
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 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fulsche et al. (EP 3505549 A1 citing US2020347183A1 as English translation) in view of Beaudry et al. (US2012/0263961 A1).
Regarding Claim 1, Fulsche teaches a method of making a moisture-curing coating by utilizing a silane modified polyurea compound (claim 28). Attention is drawn to Table 3, wherein the components in making the coating include additives, such as Disperbyk 161 (wetting and dispersing additive), light stabilizer, thixotropic agents, pigment and filler, ByK 141 defoamer, solvent, a water scavenger and a silane modified polyurea compound. Each of Disperbyk 161 and ByK 141 reads on non-reactive resin because neither of them is reactive to urethane, urea, or siloxane groups in the coating composition.
The difference between Fulsche and instant Claim 1 is that Fulsche does not explicitly teach the process of grinding the additives and adding water scavenger and the silane modified polyurea compound.
However, Beaudry teaches making of topcoat by grinding a mixture of pigments, filler, defoamer and wetting and dispersing additive to Hegman 6.5 then mix with a binder mixture (Example 2).
One ordinary skilled artisan in the field would have been motivated to adopt the process of Beaudry for making the coating composition of Fulsche, before the effective filling date of instant application, because Fulsche teaches the coating composition is for a topcoating of an anticorrosion system ([0009]), and Beaudry teaches a coating system including the topcoat composition provides corrosion resistance (ab.). Beaudry further teaches that particle size of filler may contribute to anticorrosion of the coating ([0089]). Thus, one ordinary skilled artisan would have reasonably expected that grinding the additives of Fulsche would improve anti-corrosion of the coating composition.
Fulsche teaches silane modified polyurea compound functioning as a binder for producing coatings (ab.). Therefore, it would have been obvious to one ordinary skilled artisan to group the additives of Disperbyk 161, light stabilizer, thixotropic agents, pigment and filler, ByK 141 defoamer and solvent before mixing with the silane modified polyurea compound. However, the composition of Fulsche contains a water scavenger in addition to the components of Beaudry, nonetheless, it would have been obvious to one ordinary skilled artisan, before the effective filing date of instant application, to add the water scavenger after the grinding process because adding water scavenger to the grinding materials would reduce the efficiency of the water scavenger and potentially cause premature viscosity increases. It would also have been obvious to one ordinary skilled artisan to add the water scavenger to remove water before adding the silane modified polyurea compound and a crosslinking catalyst because Fulsche discloses that the coating is a moisture-curing coating (claim 26), if adding the silane modified polyurea compound and the crosslinking catalyst before water is effectively removed would lead to prematurely cure of the coating composition.
Regarding Claim 5, the composition contains a pigment (Table 3).
Regarding Claim 6, the water scavenger Dynasylan VTMO is the preferred drying agent of instant application which is a bifunctional organosilane.
Regarding Claim 7, the composition of Fulsche contains a solvent (Table 3) and Beaudry teaches the grinding material contains a solvent (Example 2).
Regarding Claims 8-9, Fulsche teaches the silane modified polyurea compound is based on isophorone diisocyanate comprising both isocyanurate and allophanate groups with an amino silane of general formula (I) (claim 16), which is the same as the claimed formula of instant Claim 9.
Regarding Claim 10, although Fulsche in view of Beaudry is silent on the initial viscosity, as discussed in Claim 1, Fulsche in view of Beaudry teaches making a one-component coating composition with substantially identical components in a substantially identical process, therefore, the claimed initial viscosity would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Fulsche in view of Beaudry, as applied to Claim 1 above, and in further view of Meixner et al. (US5,470,897).
The disclosure of Fulsche in view of Beaudry on Claim 1 is incorporated herein by reference.
The difference between Fulsche in view of Beaudry and the instant Claims 2-4 is that Fulsche in view of Beaudry does not explicitly teach that the non -reactive resin comprises a carbamic resin based on butylurethane and formaldehyde.
However, Meixner teaches a coating composition comprising carbamic acid resins based on butylurethane and formaldehyde (3:55-67). Meixner further teaches carbamic acid resins are critical for a durable good polishability of the coated surfaces. In view of such benefit, one ordinary skilled artisan would have been motivated before the effective filing date of instant application to incorporate carbamic acid resins taught by Meixner into the coating composition of Fulsche in view of Beaudry because durable good polishability is one of desirable properties of a topcoating composition.
Meixner furthermore teaches carbamic acid resins can be used in an amount of 0.1 to 10 wt.% of the main components (components A-D) of the coating composition (claim 3), and the component C is 0.01 to 0.3 wt.% of the total weight of components A-D; moreover, Meixner discloses that the coating composition contains siccatives, peroxides, and crosslinking compounds, respectively, in the amount of 0.005 to 1 wt%, 1 to 10 wt.%, 0.1 to 10 wt%, based on the weight of component A (4:20-55). One ordinary skilled artisan would infer that the amount of carbamic acid resins of the coating composition is up to 10 wt.% because the lower ranges of components C, siccatives, peroxides, and crosslinking compounds are small.
Meixner exemplifies the carbamic acid resins being Resamin HF450 from Hoechst which is the current Allnex. According to the company’s product information, the corresponding carbamic resin, based on butylurethane and formaldehyde, is Resamin HF480 which is high viscous. Therefore, one ordinary skilled artisan would have been motivated before the effective filing date of instant application to dilute the carbamic resins to increase grinding efficiency. However, dilution beyond certain degree would, in turn, decrease grinding efficiency, for example reduced kinetic energy transfer from media to particles. Therefore, the percentage of dilution, and therefore, the wt% of carbamic resins to the combined weight of carbamic resins and diluent would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the claimed wt% of carbamic resins to the combined weight of carbamic resins and diluent cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the wt% of carbamic resins to the combined weight of carbamic resins and diluent to reach the desired grinding efficiency, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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