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Claims 5-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 13 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 Objections
Claim 4 is objected to because of the following informalities:
Because Applicant changed “comprising” to “comprises” in line 2, the verb “are” in line 3 is no longer appropriate and should be deleted, and the limitation should read, “polyisocyanate components, present”
Because Applicant changed “comprising” to “comprises” in line 2, the verb “is” in line 8 and in line 9 is no longer appropriate and should be deleted, and the limitations should read, “a catalyst, present . . . and selected from the group . . . .”
Appropriate correction is required.
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 20-21 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.
Claim 20 recites the limitation “a reaction product of reactive sub-components the comprising a monofunctional carboxylic acid, selected from the group . . . .” The limitation is indefinite, because it is not clear what is required; the phrase “the comprising” does not make sense and suggests either an added or an omitted word or words, making it unclear what the claim intends to recite. Examiner considers the limitation to include the interpretation “a reaction product of reactive sub-components, comprising.” Additionally, the limitation is ambiguous, because it is not clear what the reactive sub-components (plural) are, since the claim might be attempting to recite sub-components comprising a monofunctional carboxylic acid (plural). It is not clear how to interpret this limitation for purposes of examination.
Claim 21 recites the limitation “wherein a catalyst is selected from.” The limitation is indefinite, because it is not clear how it is meant to limit Claim 1. Claims 1 and 21 are drawn to a siliconized-urethane alkyd resin, a product; Claim 1 does not recite a catalyst as a component of the siliconized-urethane alkyd resin; and Claim 21 merely recites a catalyst without any clear connection to the claimed siliconized-urethane alkyd resin. For example, Claim 21 does NOT recite the limitation “further comprising a catalyst.” Therefore, it is not clear what relationship the recited catalyst has to the claimed resin product or whether the catalyst is even a component of the claimed resin product. Because the claim does not positively require that the claimed resin comprises a catalyst, Examiner interprets the claim as merely disclosing a catalyst which bears some unknown relationship to the claimed product (e.g. possibly as a composition used in a process of making the product) and is not given patentable weight for the claimed resin.
Claim 21 recites the limitation “lithium/ tin salts of fatty acids/ carboxylic acids.” The limitation is indefinite as ambiguous, because it is not clear what the “/” is meant to imply, whether, for example, “and” or “or” or what combinations are required. For example, it is not clear whether “lithium/tin salts” means “a salt of both lithium and tin” or whether the member of the group is the combination of ALL of tin salts, lithium salts (or tin and lithium salts) of both fatty acids AND ALSO carboxylic acids or whether the member of the group is any of a lithium salt of either a fatty acid or carboxylic acid or a tin salt of either a fatty acid or a carboxylic acid. Examiner considers the broadest reasonable interpretation to include the interpretation that the recited member of the group is any of a lithium salt of either a fatty acid or carboxylic acid or a tin salt of either a fatty acid or a carboxylic acid.
Allowable Subject Matter
Claims 1-4 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding Claim 1, Chen et al. (CN 102134441 A) teach a silicone-polyurethane composite modified alkyd resin coating [0008]. CN’441 fails to teach epoxy functionality, molecular weight of the siliconized urethane alkyd resin or other properties, recited in Claim 1.
Regarding Claim 1, Kan et al. (US 2011/0207850) teach urethane, silicone, and epoxy modified alkyd resins, wherein each said one or more alkyds has an acid value of less than 20 and a molecular weight in the range of greater than 1000 Dalton [0007]. US’850 fails to teach or suggest a siliconized urethane resin with the recited properties.
Claims 20-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the objection to the specification has been fully considered and overcomes the previous objection. The objection to the specification has been withdrawn.
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the objection to Claim 3 has been fully considered and overcomes the previous objection. The objection to the specification has been withdrawn.
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the objection to Claim 4 has been fully considered and overcomes the specific objection to claim 4 for the reason given in the previous Office Action. However, upon further consideration, a new ground(s) of rejection is made in view of additional changes to Claim 4 by amendment, which raises additional objections.
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the rejections of Claims 1-4 under 35 USC 112(a) and (b) have been fully considered and overcomes the rejections of Claims 1-4 under these paragraphs. However, upon further consideration, a new ground(s) of rejection is made in view of new Claims 20-21, which raise new issues under 35 USC 112(b) for indefiniteness.
Conclusion
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.
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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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