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 .
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.
Claims 14-15, 17, 20-22, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2013/0109806 to Schaerfer et al. with reference to Safety Data Sheet for Hydrosol A170.
As to claims 14-15, 17, and 21-22, Schaefer discloses a polyisocyanate composition comprising the oligomerization of hexamethylene diisocyanate (0228), 50% by weight of a solvent containing more than 99% by weight of aromatics such as Solvesso 100, Solvesso 200, or Hyrosol A 170 (0134), 1000 ppm of dibutyltin dilaurate, an acid component, and a phenol component (Table 1). These are the same solvents as currently claimed, accordingly, the content of cumene would be met. Further, Hydrsol A 170 teaches a content of cumene that ranges from 0.1-2.8 wt% (Page 4 of 28). This overlaps the claimed range. The isocyanate composition can only contain 0.1-2.8 wt% of cumene. Cumene is a hazardous ingredient. Accordingly, it would have been obvious to select a solvent with low cumene content due to the toxicity associated with cumene and to decrease consumer exposure of cumene.
As to claim 20, the further solvent is optional.
As to claims 24-26, Schaefer discloses two component coating compositions for large vehicles or aircraft, industrial applications, utility vehicles in agriculture, and construction (0222) comprising the polyisocyanate composition and an hydroxy functional polyols such including polyacrylate polyols (0181).
Response to Arguments
Applicant's arguments filed 09/08/2026 have been fully considered but they are not persuasive.
Applicants have argued that their unexpected results in the color stability of the polyisocyanate composition rebut the prima facie case of obviousness. In response, the examiner has considered applicant's examples, and the position is taken that they are insufficient for the following reasons. The examples are not commensurate in scope with applicant's claims in terms of reactant species or amounts. It has been held that the claims must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. It has further been held that a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. Accordingly, it is not evident that the argued results hold for the full scope of the claims or that the argued color stability is necessarily possessed by the claimed composition.
Schaefer discloses improved color stability for polyisocyanate compositions due to the addition of acid and phenol components. Color stability is shown for compositions of up to 70 days when the polyisocyanate composition includes solvent, acid, and phenol component. The claims are open to other components that improve color stability. Therefore, the applicant's conclusion that only the solvent with low cumene content provides the argued unexpected results is not supported with evidence commensurate in scope with the claims.
Also, because the claims are open to components it is by no means clear that showings of improved color stability by only adjusting the cumene content of the solvent would be unexpected. The disclosures within the prior art use color stabilizers within polyisocyanate compositions that result in the same alleged color stability improvement.
It is noted that the specification provides comparative data. The comparative data does show that the claimed solvent with lower values of cumene provides an improved color stability as compared to the conventional solvents used in prior art. However, because the claims are open to other components that also improve color stability the claimed polyisocyanate composition taught in the claims is not different than the polyisocyanate composition taught in Schaefer.
Applicant argues that Schaefer fails to teach the claimed cumene content. This is not found persuasive because a common solvent used in polyisocyanate compositions is Hydrsol 170. Hydrsol 170 has a content of cumene that ranges from 0.1-2.8 wt% (Page 4 of 28). This overlaps the claimed range. The isocyanate composition can only contain 0.1-2.8 wt% of cumene. Cumene is a hazardous ingredient. Accordingly, it would have been obvious to select a solvent with low cumene content including those claimed (less than 1 wt% and less than 0.7 wt% in the total isocyanate composition) due to the toxicity associated with cumene and to decrease consumer exposure of cumene.
Applicant argues that Schaefer does not teach the claimed solvent amount. This is not found persuasive because the polyisocyanate composition is stored in 50% by weight of solvent (E) that includes Hydrsol 170 (0241). Further, the aromatic hydrocarbon solvent is the only solvent used.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
