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 .
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.
Claim 10 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.
Claim 10 recites the limitation "the acrylic resin (B’) further having a hydroxyl group" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-7, 9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US Patent No. 7,951,526 B2) in view of Shin-Etsu (Silicones for Resin Modification Brochure, 2011). Parker (Chemical Reviews 1959, 59, 4, 737-799) is included as an evidentiary reference.
Regarding claim 1, Hayashi teaches a composition containing modified silica particles (Abstract), wherein the modified silica particles comprise silica particles (Abstract) and an organic compound containing at least one ethylenically unsaturated group, at least one hydrophilic moiety, and at least one silyloxy group (Abstract).
These particles are compounded into a photocurable composition (Abstract) which additionally comprises a binder resin (col. 15, line 22). The binder resin may be formed from a combination of ethylenically unsaturated monomers (col. 17, line 57 – col. 18, line 10) including acrylic acid and/or methacrylic acid as component C within the monomer mixture (col. 18, lines 26-27).
Hayashi teaches that the inventive composition is coated onto a substrate (col. 34, claim 10), and then irradiated to form a cured coating (col. 34, claim 17). The curing process may be conducted at elevated temperatures (col. 24, lines 13-15). During the curing process, the ethylenically unsaturated groups, which have been grafted to the silica particles, react with the binder resin (in this case, formed from a mixture of three copolymer components, see col. 18, lines 1-10) which is also explicitly indicated as optionally comprising a functional group capable of undergoing addition polymerization, such as (meth)acrylic groups, for the purpose of improving the strength of the resulting film (col. 16, lines 4-6 and lines 13-17).
Hayashi additionally teaches that the binder resin may comprise, as monomer component B, a poly(alkylene glycol (col. 17, lines 62-65), which reads on the claimed “polyoxyalkylene chain” because a polyalkylene glycol such as polyethylene glycol has the same repeat unit structure as a corresponding polyoxyalkylene, such as polyethylene oxide.
The combination of the modified silica particles and the acrylic binder resin during photocuring therefore meets the claimed limitations, excepting that Hayashi does not contemplate that the acrylic resin contains the particularly polysiloxane structure. Hayashi therefore differs from claim 1 because it is silent with regard to the acrylic resin comprising a polysiloxane structure.
In the same field of endeavor, Shin-Etsu teaches silicones for resin modification (p. 2, Introduction section), and teaches a line of reactive silicone fluids which may improve materials properties (including heat resistance, cold resistance, weatherability, impact resistance, flexibility, lubricity, release properties, wear resistance, and water repellency see p. 8, Silicone Modifiers section). Shin-Etsu specifically teaches that acrylic resins may be modified by silicones (p. 8, Silicone Modifiers section), and teaches that the described silicone modifiers modify base resins by reacting with them directly (p. 8, Silicone Modifiers section). Shin-Etsu teaches a line of products possessing (meth)acrylate groups, hydroxyl groups, epoxy groups, amino groups, and phenol groups (p. 9, Tables 4-6), and specifically states that these functional groups can be reacted with organic resins (p. 9, Silicone Modifiers section, continued from previous page).
As described above, Hayashi teaches an acrylic binder polymer partially formed from acrylic acid/methacrylic acid as component C of the monomer mixture (col. 18, lines 26-27). Furthermore, Shin-Etsu teaches silicone modifiers containing epoxy groups, such as product “X-22-4741,” which further contributes a polyether structure intended to improve the miscibility of the silicone modifier with the base resin (p. 9, Silicone Modifiers section, continued from previous page). One having ordinary skill in the art would have understood that the carboxylic acid groups contained within the acrylic polymer of Hayashi would be capable of reacting with the epoxy groups of “X-22-4741” of Shin-Etsu, as the nucleophilic ring-opening reaction between a carboxylic acid and an epoxy functional group is well-established and understood in the art (e.g., Parker p.741 describes acidic, nucleophilic ring-opening of epoxides, and p. 766 additionally cites carboxylate ring-opening reactions with epoxides). Finally, the composition of Hayashi optionally contains acids (col. 25, lines 23-34) and silicones for the purpose of improving physical properties of a cured film of the inventive composition (col. 19, lines 34-42).
It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the liquid silicone modifiers of Shin-Etsu, including “X-22-4741,” within the formulation of Hayashi for the purpose of improving the physical properties of the cured film thereof. In so doing, the composition of Hayashi as modified by Shin-Etsu would comprise (i) a silica modified by an ethylenically unsaturated compound, (ii) an acrylic resin, optionally containing both methacrylate groups capable of undergoing addition polymerization during photocuring and carboxylic acid/carboxylate groups (from methacrylate/acrylate monomers therein), and (iii) a liquid silicone containing a polysiloxane structure, a polyoxyalkylene chain, and epoxy functional groups capable of reacting with the aforementioned carboxylic acid/carboxylate groups.
During photocuring of the inventive composition of Hayashi, the temperature may be raised to between 50 and 150°C (col. 24, lines 10-14). It is the Office’s position that, while curing the formulation of Hayashi as modified by Shin-Etsu, at least some of the components (i)-(iii), described above, will become chemically combined to form an acrylic resin-modified silica which additionally contains a polyoxyalkylene chain and a polysiloxane structure (owed to the affixed liquid silicone modifier). The composition of Hayashi as modified by Shin-Etsu therefore contains all of the components required by claim 1, and therefore meets the claimed compositional limitations.
Regarding claim 2, Hayashi teaches that the silica particles are preferably in the size range of 1 to 100 nm (col. 2, lines 53-56), which encompasses the claimed range, establishing a prima facie case of obviousness.
Regarding claim 3, As described above, Hayashi as modified contains silica particles bound to an acrylic resin which possesses reactive carboxylic acid functional groups (which reads on the claimed component “(a1)”), and a liquid silicone resin having an epoxy group which is reactive with the aforementioned carboxylic acid, and having a polyoxyalkylene chain (which reads on the claimed component “(a2)”).
Regarding claim 4, as described above, Hayashi teaches that the silica particles comprise an organic compound containing at least one ethylenically unsaturated group, at least one hydrophilic moiety, and at least one silyloxy group (Abstract), and teaches that the binder resin may be formed from a mixture of polymerizable unsaturated monomers including acrylic/methacrylic acid. The mixture of polymerizable unsaturated monomers and acrylic/methacrylic acid read on the claimed components (a12)” and “(a121),” respectively.
Regarding claim 5, the mixture of polymerizable unsaturated monomers of Hayashi includes acrylic/methacrylic acid, as described above, which read on “carboxy group-containing polymerizable unsaturated monomer” within the claimed list.
Regarding claim 6, as described above, the liquid silicone modifier of Shin-Etsu optionally contains epoxy groups, which read on the claimed list.
Regarding claim 7, Shin-Etsu teaches that component “X-22-4741” has a molecular weight of 2,500 g/mol, which falls within the claimed range, establishing a prima facie case of obviousness. Furthermore, the instant Specification states that “X-22-4741” is a suitable component (a2) (see instant Specification at [0067]).
Regarding claim 9, Hayashi further teaches that the acrylic monomer mixture may include hydroxyethyl methacrylate (col. 18, line 28-29), which would impart hydroxyl groups to the acrylic resin. Hayashi further teaches that the components used within component C of the monomer mixture (of which hydroxyethyl methacrylate is a member) may be employed as mixtures of materials (col. 18, line 44). Therefore, it would have been obvious to include both hydroxyethyl methacrylate and acrylic/methacrylic acid simultaneously within the monomeric mixture of the binder resin.
Regarding claim 11, component “X-22-4741,” taught by Shin-Etsu, is specifically indicated as a suitable material (a2) within the instant disclosure (see instant Specification at [0067]). Furthermore, the poly(alkylene glycol within Hayashi is an optional component (col. 17, lines 62-65), Therefore, compositions of Hayashi as modified by Shin-Etsu could contain polyoxyalkylene chains and polysiloxane structures arising only from the addition of “X-22-4741” (or other liquid silicones from Shin-Etsu), which presumably meet the claimed ratio characteristic because it/they are indicated as suitable components (a2).
Regarding claim 12, Hayashi further teaches the incorporation of an accessory binder component in addition to the aforementioned binder component (col. 18, lines 58-59).
Regarding claim 13, Hayashi teaches that the accessory binder component may include, inter alia, hydroxy-alkylated celluloses and polyvinyl alcohol (col. 18, lines 60-66), which read on the claimed “hydroxyl group-containing resin.” Hayashi further teaches the incorporation of a polymerization initiator (col. 33, claim 1), which reads on the claimed “cross-linking agent.”
Regarding claim 14, Hayashi teaches the formation of a cured film of the inventive composition (col. 19, lines 33-34). Hayashi further teaches the formation of an undercoating before the formation of the coating containing the inventive composition (col. 22, lines 60-65). The undercoat may further incorporate yellow pigments (col. 23, lines 52-54), and therefore the undercoat reads on the claimed “colored basecoat paint.” The method of formation taught by Hayashi therefore reads on the claimed method.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762