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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 4, 2026 has been entered.
Election/Restrictions
Newly submitted claims 29-43 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The previously presented and new inventions are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as a sound dampening coating and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 29-43 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
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.
Claims 16-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wittwer et al. (US 2022/0186069) in view of Smith et al. (Journal of Polymer Science, Vol. 42, 391-416, 1960).
Considering Claims 16 and 18-25: Wittwer et al. teaches a polyurethane coating composition comprising a first component that comprises 7.5 weight percent of castor oil and 9.9 weight percent of dipropylene glycol/polyols; 2.0 weight percent of trifunctional polypropylene glycol/a triol; optionally less than 2 weight percent of plasticizer (¶0118); 9 weight percent of calcium carbonate; soy lecithin/a dispersant; a silane/adhesion promoter; and pyrogenic silica/a rheology modifier; and dibutyl tin dilaurate/a catalyst (Table 2); and a second component comprising polymeric diphenyl methylene diisocyanate/an aromatic diisocyanate (Table 2).
Wittwer et al. does not teach the Young’s modulus of the composition. However, Smith et al. teaches a polyurethane coating having a Young’s modulus of 80 psi/0.55 MPa (Table 1). Wittwer et al. and Smith et al. are analogous art as they are concerned with the same field of endeavor, namely polyurethane coatings. It would have been obvious to a person of ordinary skill in the art to have prepared a polyurethane with the Young’s modulus of Smith et al. in the invention of Wittwer et al., and the motivation to do so would have been, as Smith et al. suggests, to provide an elastomeric coating to the surface (Introduction).
Wittwer et al. does not teach applying the waterproofing polyurethane composition onto an article with a pre-applied waterproofing membrane. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. peel adhesion with hardened concrete, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 17: Wittwer et al. teaches that the triol can be trimethylolpropane (¶0069).
Considering Claim 26: The means of applying the hardened concrete is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Wittwer et al. (US 2022/0186069) in view of Smith et al. (Journal of Polymer Science, Vol. 42, 391-416, 1960) as applied to claim 16 above, and further in view of Foley et al. (US 2004/0087754).
Considering Claim 28: Wittwer et al. teaches the composition of claim 1 as set forth previous.
Wittwer et al. does not teach the triol as being from the claimed group. However, Foley et al. teaches using trimethylolethane as the triol chain extender for a polyurethane coating (¶0026). Wittwer et al. and Foley et al. are analogous art as they are concerned with the same field of endeavor, namely polyurethane coatings. It would have been obvious to a person of ordinary skill in the art to have used the triol of Foley et al. in the coating of Wittwer et al., and the motivation to do so would have been, as Foley et al. suggests, it is a known chain extender for polyurethane coatings.
Response to Arguments
The applicant’s arguments were addressed in the advisory action mailed August 24, 2026.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
