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 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 1-3, 5-12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over lezzi et al., U.S. Patent Application Publication No. 2020/0332054 in view of Wolan et al., U.S. Patent Application Publication No. 2015/0266995 for the reasons outlined previously.
Claims 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over lezzi et al., U.S. Patent Application Publication No. 2020/0332054 in view of Wolan et al., U.S. Patent Application Publication No. 2015/0266995 as applied to claims 1-3, 5-12, and 14-18 above, and further in view of Thiemann et al., U.S. Patent Application Publication NO. 2015/0284611 for the reasons outlined previously.
Response to Arguments
Applicant initially makes the following observation in connection with the proposed combination:
“In Iezzi, the isocyanate component has entirely unreacted isocyanate groups. There are no "leftover isocyanate groups" to react with an amino-functional alkoxysilane. And if all the isocyanate groups were reacted with amino-functional alkoxysilane, the isocyanate component would then not be reactive with the silyl component. Further, if the two components in Iezzi were reacted first…”
The Examiner believes that it is clear from the manner in which the rejection was structured that the Examiner is proposing to block any residual isocyanate groups that remain upon full conversion of the mixture comprising a diisocyanate and the silyl-contaning compound per the teachings of Iezzi. Residual groups may be expected where a slight excess of the isocyanate reactant is used or even when the aforementioned reactants are combined in a 1:1 mol ratio (1:1 isocyanate-to-hydroxyl groups).
“Further, if the two components in Iezzi were reacted first, the thermoset will have already been formed. There would be no reason to react any leftover isocyanate groups with amino- functional alkoxysilane (assuming the reaction were possible at all) because the resulting end- caps would be locked in position in the thermoset and unable to be moisture cured with each other.”
Respectfully, the Examiner does not follow Applicants’ logic at least insofar as paragraph [0006] outlines the same sequence, i.e. reacting a di/triisocyanate with the silyl-containing compound, followed by reacting the resulting polyurethane with an aminoalkylalkoxysilane, and finally moisture-curing the polyurethane to provide the thermoset. Why would the silane groups be accessible to one another in this instance, but not when the same compounds are initially reacted in Iezzi, and then modified with the same alkoxysilane compound?
“There is no disclosure regarding the toxicity of a cured coating containing free isocyanate. Thus, there would be no motivation to avoid free isocyanate in the cured coating of Iezzi. And since there must be free isocyanate in one component to be reactive with the other, any such toxicity in the starting isocyanate component cannot be eliminated.”
The Guide for Handling Isocyanates attached to this communication says that not only monomeric isocyanates, but also polymeric isocyanates, are regarded as toxic. See the subject matter immediately following Table 1 on page 1. The products obtained upon reacting a polyisocyanate monomer with a hydroxyl-functional silyl compound per the teachings of Iezzi (again where there is a slight to moderate excess of isocyanate groups) are polymeric isocyanates. The Examiner respectfully doesn’t follow the latter statement. What necessity for residual isocyanates is there, particularly where they are replaced with alkoxysilane moieties?
Finally, Iezzi realizes their goal of reducing toxicity in polyurethane coating removal by incorporating into the structure residues that are easily attached with fluoride anions. One of ordinary skill would also be motivated to make the initial coating operation, whether by spraying or by other means, safer by replacing moisture-cured isocyanate groups with moisture-cured alkoxysilane groups.
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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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June 16, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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