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 .
Indefiniteness Rejections
2. 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.
3. Claims 1-20 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.
Firstly, with respect to claims 1 and 12, it is unclear what constitutes “its modified product” with respect to polyol component (a2), and it is unclear what constitutes “its modified product” with respect to an organic diisocyanate. The scope of the language is so extensive that the metes and bounds of the claims cannot be clearly ascertained.
Secondly, with respect to claims 8 and 18, it is unclear how “an isocyanate group-containing compound” and “a hydroxyl group-containing compound” relate to the components of the independent claims. There is no nexus between the terminology of claim 1 and claim 8 or between the terminology of claim 12 and claim 18. As drafted, the claimed ratio may apply to any isocyanate functional component and any hydroxyl functional component, including ones not specifically recited within claims 1 or 12.
Thirdly, with respect to claim 12, the Markush language, “selected from the group consisting of polycarbonate polyols”, renders the claims indefinite, because a single species does not constitute a group from which a selection is to be made.
Prior Art Rejection
4. 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.
5. Claims 1-20 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 mgKOH/g and a preferred glass transition temperature of 0-30 degrees C. 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.
6. 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 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.
Conclusion
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