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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16, 17, and 21-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hart (US Pat. 5,508,340).
Considering Claims 16, 17, and 21-25: Hart teaches a composition for preparing a polyurethane coating comprising a first component comprising 29 parts of a first polyester polyol component, 25 parts of a second polyester polyol, 5 parts of trimethylolpropane/a triol, an amine catalyst, a dispersant, and a UV stabilizer, all out of 100 parts (Example 6). 55 parts of the polyol mixture is mixed with 28 parts of titanium dioxide pigment, 16 parts by weight of water, and 1 part of a dispersant (Example 6), resulting in a first component comprising 16 weight percent of the first polyester polyol, 13.75 weight percent of a second polyester polyol, 2.75 weight percent of the trimethylolpropane, and 28 weight percent of the filler. The first component is mixed with a second component comprising an hexamethylene diisocyanate (Example 6), which has a NCO content of 84/168.2, or ~50 weight percent.
Hart 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. the Young’s modulus or 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 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 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 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hart (US Pat. 5,508,340) as applied to claim 16 above, and further in view of Domanowski et al. (US 2015/0148449).
Considering Claim 18: Hart teaches the composition of claim 16 as shown above.
Hart does not teach a tackifier in the composition. However, Domanowski et al. teaches a two component polyurethane composition for concrete substrates (¶0009-16) comprising a first component comprising 24% by weight of a polyether polyol (¶0069); and a second component comprising an aromatic polyisocyanate having an isocyanate content of 16% and a functionality of 2.8 (¶0067). The polyol component further comprises 4.8% by weight of a tackifier (¶0073). Hart and Domanowski et al. are analogous art as they are concerned with the same field of endeavor, namely protective polyurethane coatings for concrete. It would have been obvious to a person of ordinary skill in the art to have added the tackifier of Domanowski et al. to the composition of Hart, and the motivation to do so would have been, as Domanowski et al. suggests, to increase the tack of the coating composition to the surface prior to curing.
Considering Claims 19 and 20: Hart teaches the composition of claim 16 as shown above. Hart teaches the composition as comprising a dispersant, and a UV stabilizer (Example 6).
Hart teaches the filler as being titanium dioxide. However, Domanowski et al. teaches using silica, calcium carbonate, talc, a magnesium silicate, mica or graphite as alternative fillers to titanium dioxide (¶0044). It would have been obvious to a person of ordinary skill in the art to have substituted one of the fillers of Domanowski et al. for the titanium dioxide of Hart, and the motivation to do so would have been, as Domanowski et al. suggests, they are functionally equivalent.
Response to Amendment
The declaration under 37 CFR 1.132 filed January 21, 2016 is sufficient to overcome the rejection of claims 16-26 based upon Domanowski et al. (US 2015/0148449) in view of Vu (US Pat. 4,710,560).
The declarant is correct that Vu teaches using the triol as a component of the urethane prepolymer rather than as a component of the polyol, and thus the argument is persuasive.
It is noted that the allegation of unexpected results is not persuasive, as it is not commensurate in scope with the instant claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). The instant claims recite broad genuses for the components, with broad amounts for the components other than the triol component. The data is directed to towards highly specific compositions with specific components in specific amounts.
Response to Arguments
Applicant’s arguments with respect to claims 16-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767