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
Applicant’s election without traverse of Claims 1-4 in the reply filed on 13 October 2025 is acknowledged.
Claims 5-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “alkyl base resin.”
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
In Claim 3, line 3, the verb “are” should be “is.”
In Claim 4, line 3, the verb “is” should be “are.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification does not describe an “alkyl base resin” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instead, the specification describes an alkyd base resin, and it cannot be determined whether the word “alkyl” is a misspelling of the word “alkyd.” (See rejection of Claims 1-4 under 35 USC 112(b) below on indefiniteness).
Claims 1-4 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 1 recites the limitation “alkyl base resin” in line 9. The limitation is indefinite, because it is not clear what an alkyl base resin is in the context of the claims and the specification does no provide no adequate guidance as to its meaning. Examiner considers it to mean “alkyd base resin” for purposes of examination on the merits.
Claim 1 is drawn to “A siliconized-urethane alkyd resin composition comprising: a) a base alkyd resin component having a hydroxyl number in the range of 50-150 mg KOH/gm, and an acid number in the range of 6-10 mg . . . wherein the base alkyd resin has a molecular weight in the range of 4000-8000; b) an organosilane component comprising one or more organosilanes having epoxide functional silane to form a functionalized alkyl base resin, wherein the functional alkyl base resin has a molecular weight in the range of 8000-15000; and an isocyanate component . . . wherein the isocyanate component consumes 40 to 70% of OH number of the base alkyd resin component, wherein the siliconized-urethane has a molecular weight in the range of 20000-35000.” Claim 1 is indefinite, because it is not clear what the claimed siliconized-urethane alkyd resin composition requires. Specifically, it is not clear whether it requires a mixture of a) a base alkyd resin component, b) an organosilane component, and c) an isocyanate component, which are THEN reacted to form the claimed siliconized-urethane alkyd resin, or whether it requires the product of a reaction of all of a) a base alkyd resin component, b) an organosilane component, and c) an isocyanate component. While the preamble clearly claims a siliconized-urethane alkyd resin, a siliconized-urethane alkyd resin made as a product of an alkyd resin, an organosilane, and an isocyanate would not comprise the reactants from which it is made; in other words, it is further not clear what is meant by a siliconized-urethane alkyd resin comprising an organosilane or isocyanate, and it is not clear what is meant by a siliconized-urethane alkyd resin having a hydroxyl number in the range of 50-150 mg KOH/gm of which the isocyanate component consumes 40-70% of OH number, wherein the siliconized-urethane alkyd has a molecular weight in the range of 20000-35000. The possible confusion of the claimed siliconized-urethane alkyd resin with its possible precursors makes it unclear what is being claimed. For example, as to the claimed hydroxyl number, it is not clear whether the claimed siliconized-urethane alkyd resin composition requires a base alkyd resin which has a hydroxyl number in the range of 50-150 mg or a product which requires only 30%-70% of that range. For purposes of examination on the merits, Examiner considers the claims to require a reaction product made from components a), b), and c) with the recited molecular weight of the siliconized-urethane alkyd (20,000-35,000) and does not give significant patentable weight to many of the properties of the recited components or reactants (e.g. molecular weight of each component, hydroxyl, and acid number), which lose their identity as base alkyd, organosilane, and isocyanate when they are incorporated into the claimed product, “siliconized-urethane alkyd resin.”
Claim 2 requires the combination of limitations “wherein the base alkyd component comprises one or more of “a) vegetable oils . . .; b) polyhydric alcohols . . . ; c) polybasic acids or acid anhydrides . . . ; d) mono functional carboxylic acid . . . the amount of the monocarboxylic acid is in the range of from 0 to 15% of base alkyd composition; e) a catalyst . . . in an amount of 0-0.5 wt. %; and f) a reflux solvent . . .” The combination of limitations is indefinite for a number of reasons. First, it is not clear whether any of the components a)-f) are required, since either component d) or e) can be chosen at 0% concentration. Second, it is not clear what is meant by the base alkyd component of the siliconized-urethane alkyd resin comprising either a catalyst or a reflux solvent. It seems likely that the claims conflate compositions used to make the claimed siliconized-urethane alkyd resin with the claimed siliconized-urethane alkyd resin itself. Examiner considers Claim 2 to be met, since at least two components can be chosen which are not a feature of the claimed siliconized-urethane alkyd resin and two components can be chosen at 0% concentration, which are interpreted as making the limitations of Claim 2 optional.
Claim 2 recites the limitation “consisting of isomers of xylene or their mixture, methyl n-amyl ketone.” The limitation is indefinite, because it is not clear what is meant by “consisting of isomers of xylene or their mixture,” since a mixture of isomers of xylene” is equivalent to “isomers of xylene.” In addition, it is not clear what role the recited “methyl n-amyl ketone” plays in the limitation, whether it should be read as a part of the mixture of isomers of xylene somehow or as one composition in a list of reflux solvents. Examiner considers the limitation to include the interpretation that the reflux solvent comprises at least one composition from the group consisting of an isomer of xylene, a mixture of isomers of xylene, and methyl n-amyl ketone.
Claim 4 recites the limitation “and similar” in line 6. The limitation is indefinite as vague, because it is not clear what is considered “similar” or what compositions would be excluded from the group. Examiner interprets the claim to require the expressly listed compositions, ignoring the word “similar” for the purpose of examination on the merits.
Claim 4 recites the limitation “an amount of the isocyanate component comprising: a) the aliphatic . . . mono/polyisocyanate components.” There is insufficient antecedent basis for this limitation in the claim. Examiner considers the limitation to include the interpretation “aliphatic . . . mono/polyisocyanate components.”
Claim 4 recites the limitation "the catalyst" in component b). There is insufficient antecedent basis for this limitation in the claim. Examiner considers the limitation to include the interpretation “a catalyst.”
Regarding Claim 4, the phrase "etc. " renders the claim indefinite as vague, because it is not clear what the rest of required compounds would be. Examiner considers the group to consist of those compounds expressly listed.
Regarding Claim 4, the phrase "etc. such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner considers Claim 4 not to require the compounds following the phrase “such as.”
Claims 2-4 are rejected as depending from Claim 1.
Allowable Subject Matter
Claims 1-4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
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.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
SHIMOMURA (JPH07232439) (urethane resin modified with epoxysilane )
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
Prosecution Insights