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.
Claims 1-15 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.
The recitation of “the alkoxysilane” in claim 1, line 21, claim 2, line 2, claim 3, line 2, claim 7, line 2, and claim 8, line 3 causes confusion. Does the applicant intend to refer to the “alkoxylsilane” of claim 1, line 6 or the “organo-functional alkoxysilane of general formula (I)” of claim 1, line 6-7? The examiner invites the Applicant to clarify.
Claims 4-6 and 9-15 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A two-component aqueous coating composition comprising:
A an aqueous resin component comprising a carboxyl-functional resin; and
B a substantially water-free hardener component comprising:
- a carbodiimide comprising in the range of from 1 to 20 carbodiimide moieties and terminal and/or pendant non-ionic emulsifying groups; and
- an alkoxylsilane selected from the group consisting of
an organo-functional alkoxysilane of general formula (I)
R1[-(CH2)n-Si(OR2)3-m(R3)m]p (I) and
a tetraalkylorthosilicate of general formula (II) Si(OR2)4 (II)
wherein: m is 0 or 1; n is an integer with a value in the range of from 0 to 6; p is 1 or 2, preferably 1; R1 is an organic group comprising an epoxide group, a vinyl group, or a (meth)acryloyl group, or is a hydrogen atom, and R1 does not comprise a carboxylic functional group, a mercapto- functional group, or an amine-functional group; R2 is an alkyl group having 1 to 4 carbon atoms; and R3 is an alkyl group having 1 to 4 carbon atoms,
wherein the weight ratio of the carbodiimide to the alkoxysilane in hardener component B is in the range of from 10:90 to 85:15.
Claim Interpretation
The recitation of substantially water-free is interpreted as “a water content of less than 0.5 wt%” in view of instant specification page 8, line 6-11.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch et al. (US 5437719 as listed on IDS dated December 18, 2023) in view of Derksen et al. (WO 2012015295 A1 as listed on IDS dated December 18, 2023).
Regarding claim 1, 11, and 12, Lynch et al. disclose an aqueous paint coating composition in Example 19 comprising a polyurethane dispersion QW-10, thereby reading on aqueous resin component of component A of instant claim 1, the resin dispersed in an aqueous phase on instant claim 11, and the polyurethane of instant claim 12, a carbodiimide UCARLNK XL-25-SE, and an organofunctional silane A-178, thereby reading on component B (Table XVII).
UCARLNK XL-25-SE comprise 50 weight percent solids in a solvent solution of propylene glycol monomethylether acetate as evidenced by Burd et al. (US 6558321 B1, col 36, line 27-28), thereby reading on a substantially water-free hardener of component B.
Lynch et al. disclose A-178 is a glycidoxypropyltrimethoxysilane, (as shown in the datasheet provided), thereby reading on a alkoxysilane of general formula (I) wherein m is 0, n is 3, p is 1, R1 is an epoxide group, and R2 is an alkyl group having 1 carbon atom.
Lynch et al. is silent on if the coating composition is a two-component coating composition as recited in instant claim 1.
However, Lynch et al. broadly teaches the polyurethane may be a two component system [col 7, line 56-68; col 8, line 1-8]. Therefore, it would have been obvious to one of ordinary skill in the art to form a two component coating composition as taught by Lynch et al.
Lynch et al. is silent on if the polyurethane dispersion of Example 19 is carboxyl functional as recited in claims 1, 11, and 12.
However, Lynch broadly teaches the polyurethane polymer can contain various functional groups such as carboxyl groups [col 6, line 3-13]. Therefore, it would have been obvious to one of ordinary skill in the art to use a carboxyl functional polyurethane polymer dispersion as taught by Lynch et al.
Lynch et al. is silent on the exact structure of the carbodiimide as recited in instant claim 1.
Derksen et al. teach a method to prepare multifunctional polycarbodiimides as crosslinking agents comprising a polycarbodiimide is formed with a mean value of 1-10 carbodiimide functions, thereby lying within the claimed range of 1 to 20 carbodiimides. Derksen et al. further teach the polycarbodiimide is terminated or chain extended by a compound containing a hydrophilic group and one or multiple amine and/or hydroxyl functions (claim 1), thereby reading on the terminal and/or pendant non-ionic emulsifying groups recited in instant claim 1. Derksen et al. offer the motivation that the carbodiimide is easily dispersed in water (page 3, line 36-40). Lynch et al. is also concerned with a water dispersible carbodiimide [col 16, line 50-64]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbodiimide of Derksen et al. to the two component coating composition of Lynch et al. with reasonable expectation that the dispersion would improve.
Lynch et al. disclose in Example 19 the amount of carbodiimide is 6.00 parts by weight and the amount of alkoxysilane is 0.20 parts by weight, equivalent to a weight ratio of 97:3 and thereby lying outside the claimed range of instant claim 1.
However, Lynch et al. broadly teach the amount of crosslinking agent is 0-3 weight percent and the amount of alkoxysilane is 0 to 0.25 weight percent (Table VIII), thereby overlapping the claimed weight ratio of instant claim 1. In the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Lynch et al.
Regarding claims 2 and 3, Lynch et al. disclose the coating composition of Example 19 comprises 37.50 wt% of a polyurethane dispersion QW-10 having a solid content of 32 wt% and 0.20 wt% of an organofunctional silane A-187 (Table II and XVII), calculated to be 12 wt% of solid weight of carboxyl functional resin based on the total composition of Example 19 (37.50 wt% × 0.32 = 12 wt% of solids) and 0.016 wt% of alkoxysilane based on the solid weight of carboxyl functional resin (0.2 wt%/12 wt% = 0.016 wt%), thereby lying outside the claimed range of alkoxysilane based on the solid weight of carboxyl functional resin.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of alkoxysilane and carboxyl-functional resin to produce two component coating composition comprising a component (B) with the desired hardness.
Regarding claim 4 and 5, Lynch et al. is silent on the non-ionic emulsifying groups of instant claim 4.
Derksen et al. teach the compound used to terminate and or chain extend the polycarbodiimide is a polyethoxy mono or diol with a molecular weight between 100 and 3000 Daltons or a polyethoxy/polypropy mono- or diol with a molecular weight between 100 and 3000 (claim 11), thereby reading on the poly(ethylene glycol) alkyl ether group and poly(ethylene glycol/propylene glycol) alkyl ether group with a molecular weight in the claimed range. Derksen et al. offer the motivation that the carbodiimide is easily dispersed in water (page 3, line 36-40). Lynch et al. is also concerned with a water dispersible carbodiimide [col 16, line 50-64]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbodiimide of Derksen et al. to the two component coating composition of Lynch et al. with reasonable expectation that the dispersion would improve.
Regarding claim 5, Lynch et al. is silent on the carbodiimide comprises alkoxysilyl or alkylalkoxysilyl groups as recited in the instant claim.
Derksen et al. teach the mono and/or polyisocyanate used to form the carbodiimide can contain an additional functional group that is an alkylalkoxy silane or an alkoxysilane (claim 2), thereby reading on the instant claim. Derksen et al. offer the motivation that the alkoxysilane contributes effectively to the crosslinking reaction (page 5, line 38-40; page 6, line 1-5). Lynch et al. is also concerned with the crosslinking reaction [col 2, line 33-40]. Therefore, it would have been obvious to one of ordinary skill in the art to add the carbodiimide comprising the alkoxy silane with the two component coating composition of Lynch et al. with reasonable expectation that the crosslinking would improve.
Regarding claim 6, Lynch et al. disclose the alkoxysilane of Example 19 is A-187 which comprises an alkyl group having 1 carbon as rejected in the rejection for claim 1 above, thereby reading on the instant claim.
Regarding claim 7, Lynch et al. disclose the alkoxysilane of Example 19 is A-187 which is a 3-glycidyloxypropyl trimethoxysilane as rejected in the rejection for claim 1 above, thereby reading on the instant claim.
Regarding claim 8, Lynch et al. disclose in Example 19 the amount of carbodiimide is 6.00 parts by weight and the amount of alkoxysilane is 0.20 parts by weight, equivalent to a weight ratio of 97:3 and thereby lying outside the claimed range for the weight ratio of the carbodiimide to the alkoxysilane.
However, Lynch et al. broadly teach the amount of crosslinking agent is 0-3 weight percent and the amount of alkoxysilane is 0 to 0.25 weight percent (Table VIII), thereby overlapping the claimed weight ratio. In the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Lynch et al.
Regarding claim 10, Lynch et al. is silent on the viscosity of component B as recited in the instant claim.
In view of the substantially identical component B of Lynch et al. in view of Derksen et al., the component B of Lynch et al. in view of Derksen et al. will possess the claimed properties because viscosity is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 13, Lynch et al. disclose the alkoxysilane of Example 19 is A-187 wherein p is 1 as rejected in the rejection for claim 1 above, thereby reading on the instant claim.
Regarding claims 9, 14, and 15, Lynch et al. do not teach the component B comprises the amount of organic solvent as recited in the instant claims.
Derksen et al. teach the amount of carbodiimide comprises 0 to 10 wt% of an organic solvent, thereby overlapping the claimed range of at most 5 wt% of organic solvent of instant claim 9, at most 1 wt% of organic solvent of instant claim 14, and free of organic solvent of instant claim 15. Derksen et al. offer the motivation that the amount of solvent reduces the amount of volatile organic compounds (page 3, line 1-26). Lynch et al. is also concerned with reducing the amount of organic volatiles emitted into the environment [col 1, line 30-41]. Therefore, it would have been obvious to one of ordinary skill in the art to use the amount of solvent taught by Derksen et al. with the two component coating composition of Lynch et al. with reasonable expectation that the amount of volatile organic compounds will be reduced.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights