Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior Art Rejection
2. 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.
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.
3. Claims 1-7, 9-17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/098772 A1 in view of JP 2012-107101 A.
WO 2016/098772 A1 disclose coating compositions comprising the reaction product of an isocyanate functional resin with an acrylic polyol, wherein the isocyanate functional resin is derived from aliphatic or alicyclic diisocyanate and polyols, such as polytetramethylene ether polyols and polycarbonate polyols, having a preferred molecular weight of 250-1000; the isocyanate functional resin is modified with allophanate and isocyanurate groups. See pages 4-9 within the provided translation. The acrylic polyol has a preferred hydroxyl value of 110-150 mg KOH/g and a preferred glass transition temperature of 0-30oC, with a most preferred range of 20-30oC. See page 22 of the translation. The isocyanate functional resin and acrylic polyol are reacted at a NCO/OH ration 0.6:1 to 1.1:1. See page 23 of the translation. Regarding claims 2 and 13, within the examples, isocyanate functional resins, as aforementioned, are disclosed having functionalities that meet those claimed. Regarding the average number of isocyanate functional groups of claims 21 and 22, isocyanate functionalities as high as 6.5 are disclosed within the third paragraph of page 16 of the translation of the primary reference.
4. Though the primary reference discloses polyols having molecular weights of 250-1000, it noted that the examples employ polycarbonate polyols of 500 molecular weight; therefore, the position is taken that employing the claimed polyols within the claimed molecular weight range would have been obvious. Furthermore, this position is supported by the disclosure within the secondary reference of the use of polyols having molecular weights of 250-750 in analogous coating compositions. Regarding the polydimethylsiloxane limitations of claims 6, 7, and 12-20, it is noted that the secondary reference discloses an analogous coating composition and employs polydimethylsiloxane such that the claimed silicon content corresponds to that claimed. See the provided abstract for the secondary reference. Accordingly, since it has been held that it is prima facie obvious to use a known compound for its known function, the position is taken that it would have been obvious to employ polydimethylsiloxane within the composition of the primary reference, so as to arrive at the claimed invention.
5. Applicants’ amendment and response have been considered; however, they are insufficient to overcome the prior art rejection. Applicants have argued that the primary reference fails to disclose that acrylic polyol (B) must have a combination of a glass transition temperature of 5-30oC and a hydroxyl number of 120 to 150 mg KOH/g. The examiner cannot agree with this statement in view of the preferred teachings within page 22 of the translation of the primary reference, which were previously cited by the examiner and which have been referenced by applicants within their response. The reference clearly teaches an acrylic polyol having a glass transition temperature having a preferred range of 0-30oC and a most preferred range of 20-30oC. Furthermore, the reference clearly teaches an acrylic polyol having a most preferred range of hydroxyl value number of 110-150 mg KOH/g. These respective values at the least significantly overlap the claimed values and provide clear and unambiguous guidance to operate within the claimed ranges. Given the significant degree of overlap of the claimed range and disclosed range of the hydroxyl value and the fact that the most preferred range for the glass transition temperature range falls fully within the claimed glass transition ranges, the examiner disagrees with applicants’ position that two values must be optimized. Furthermore, applicants’ argument that the hydroxyl value lower range values of 20, 50, 80 and 110 mg KOH/g will only direct one skilled in the art to optimize values below the claimed value of 120 mg KOH/g is entirely without merit, because the argument fails to appreciate the significance of the ranking of the preferred and most preferred disclosures and the disclosed hydroxyl value most preferred upper value of 150 mg KOH/g. Lastly, applicants have argued that examples 1 and 2, employing acrylic polyols having hydroxyl values of 150 and 121 mg KOH/g, yield superior results compared to example 3, employing an acrylic polyol having a hydroxyl value of 101 mg KOH/g. The examiner has considered these showings and finds them deficient for the following reasons. Firstly, argued example 3 is not representative of the most relevant teachings of the prior art. The most relevant teaching requires the use of an acrylic polyol having a hydroxyl value of at least 110 mg KOH/g, corresponding to the disclosed lower endpoint of the most preferred hydroxyl value. Secondly, the compositions of examples 1 and 2 are not commensurate in scope with the claims in terms of component species and amounts. Accordingly, it has not been established that the alleged showing of superior results holds for the full scope of the claims. Thirdly, it is by no means clear that a contamination resistance value of 0.7 or 0.8, compared to a value of 0.9, constitutes an unexpected or superior result. It is noted that example 3 is disclosed as being an example of the invention as opposed to a comparative example; therefore, as disclosed, the result of example 3 is acceptable or desired in the context of the disclosed invention.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (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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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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