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
Claims 5-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 October 2025.
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).
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.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (KR20130111451A) in view of McCartney (US 4,511,605).
Regarding Claims 1-3, Takahashi et al. (KR’451) teach an aqueous polyurethane composition, comprising polyurethane resin and inorganic (metal oxide) particles (p. 5), the polyurethane resin comprising a reaction product of a polyisocyanate component comprising polyisocyanate having a ring structure (e.g. alicyclic and aromatic polyisocyanates) (p. 22), and a polyol component comprising a macropolyol (polyester diol) [0027] and an active hydrogen group-containing compound (e.g. carboxyl group and hydroxyl group) containing a hydrophilic group [0029,0031-0033]. The macropolyol taught in KR’451 is a polyester diol with a molecular weight range of 400 and higher, corresponding to the range 35-280 mgKOH/g, where 280 mgKOH/g is equivalent to about 400 g/mol and the hydroxyl value is inversely related to molecular weight. The inorganic particles have an average particle size of 10 nm, for example [0124,0126], and have a range of 100 nm or less (p. 34). KR’451 also teaches concentrations of polyurethane resin (A), relative to a total amount of polyurethane resin (A) and inorganic particles (B), in a range of 35.7%-62.5% (Table 3, e.g. 50/(50+30)=62.5%) and of inorganic particles (A), relative to a total amount of polyurethane resin (A) and inorganic particles (B), in a range of 64.3%-37.5% (Table 3). KR’451 fails to teach silica particles. It was widely known at the time of invention to add colloidal silica to compositions comprising polyurethane resin for a number of reasons, including to modify viscosity, to increase corrosion resistance, and to increase adhesion of a coating to name a few. For example, McCartney (US’605) teach an aqueous polyurethane composition to which colloidal silica particles with a particle size of 10 millimicrons (10 nm) are added in a ratio of 2:1 (i.e. 33% colloidal silica) by weight to obtain an aqueous polyurethane dispersion of desirable viscosity (col. 5, line 59 to col. 6, line 2; col. 10, lines 3-13). Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the aqueous polyurethane composition of KR’451 by adding colloidal silica within the recited range of particle size and in the range of recited blending ratio, because it was widely known at the time of invention to add colloidal silica to compositions including aqueous polyurethane to modify viscosity, to increase resistance to corrosion, and to increase adhesion, and US’605 suggests adding colloidal silica to achieve a desirable viscosity.
Regarding Claim 4, the claim adds no specific additional compositional limitations, but merely includes a preamble to “a heat-resistant coating agent” comprising the composition of Claim 1. The limitation “heat -resistant coating agent comprising the aqueous polyurethane composition” is broad enough to include nothing more than the aqueous polyurethane composition, which can be itself considered, functionally, a heat-resistant coating agent. The obvious composition of KR’451 in view of US’605 would be expected to be “heat-resistant” to at least some extent, for example, because of the presence of colloidal silica. Additionally, the limitation “coating agent” is considered an intended use, not given patentable weight for the claimed composition.
Response to Arguments
Applicant’s amendment to the claims, filed 30 January 2026, with respect to the rejection of Claim 2 under 35 USC 112(b) has been fully considered and overcomes the previous rejection under this paragraph. The rejection of Claim 2 under 35 USC 112(b) has been withdrawn.
Applicant’s amendment to the claims, filed 30 January 2026, with respect to the rejection of Claims 1-4under 35 USC 102 has been fully considered and overcomes the previous rejection under this paragraph. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the obviousness of the amendment to the claims.
In response to Applicant’s argument that KR’451 fails to teach silica, including colloidal silica (Claim 3) (Remarks, p. 7), while true it was widespread practice to add colloidal silica to compositions, comprising aqueous polyurethane to modify viscosity, to increase adhesion, and/ or to increase corrosion resistance. McCartney (US 4,511,605) is now cited to show the obviousness of this modification.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jung (WO 01/98392 A1) (add colloidal silica to a composition including aqueous polyurethane to increase corrosion resistance)
Schottmann et al. (US 2003/0203991) (add colloidal silica to a composition including aqueous polyurethane to increase adhesion)
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712
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