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 .
Examiner’s Comment
2. Though claims 13-15 remain withdrawn from further formal consideration, the examiner notes the following issues. Firstly, within the claim listing, applicants should change the status identifiers of claims 13 -15 to reflect their withdrawn status; as presented the claim listing fails to comply with the requirements of 37 CFR 1.121. Secondly, with respect to withdrawn claim 14, within the third line of step (3), the language, “the third coating composition”, lacks strict antecedence from a previously recited claim or composition. Furthermore, with respect to withdrawn claim 14, the method fails to recite which of the compositions of steps (1)-(3) constitutes the clearcoat composition of claim 13. Should the Unity of Invention Requirement be withdrawn, these issues will be formally addressed if they have not already been addressed.
The Unity of Invention Requirement remains in Final status.
Indefiniteness Rejection
3. 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.
4. Claim 8 is 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.
With respect to claim 8, reference has been made to variables n and R; however, these variables are not present in claim 1, the claim from which claim 8 depends.
Prior Art Rejection
5. 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.
6. Claims 1-12 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Groenewolt et al. (US 2016/0122583 A1 in view of WO 02/064684 A2.
Groenewolt et al. disclose a clearcoat composition comprising at least one polyol, such as polyacrylate and polyester polyols (paragraphs [0035]-[0053]), corresponding to instantly claimed (a2); an ether segment comprising polysiloxane, disclosed as BYK 325 within Table 4, corresponding to instantly claimed (a3); at least one polyisocyanate, corresponding to (b2) and further containing structural units (paragraph [0061]), corresponding to the claimed silane units (I) and (II); urea component acting as a rheological additive, derived from the reaction of polyisocyanate and benzyl amine (see Setalux 91756 within Table 4), corresponding to (a4), establishing that the claimed urea component was a known clearcoat additive/component; fumed silica as another rheological additive (paragraph [0104]), corresponding to (a5); a catalyst for crosslinking silane groups (see abstract), corresponding to (a7); and within paragraph [0131], it is taught that the polyol and polyisocyanate components may be present in a suitable solvent, meeting (a1), (b1), and (c1). Regarding the claimed combination of (a4) and (a5), disclosed compositions S3 and S6 within Table 4 employed such combinations and paragraph [0183] disclosed using a combination of fumed silica and a urea-based rheological agent.
7. Though the primary reference discloses combinations of (a4) and (a5), the primary reference fails to disclose relative amounts of (a4) and (a5), as claimed within the last three lines of clam 1 and claims 4 and 18. However, the use of components that correspond to (a4) and (a5) in combined amounts that meet those claimed in coating compositions comprising an active hydrogen containing component and a curing agent, such as a polyisocyanate, was known at the time of invention as shown by WO 02/064684 A2. WO 02/064684 A2 discloses that the combination is useful as a sag control agent in coatings to be applied on both vertical and horizontal surfaces and that its use improves surface appearance. See abstract and paragraphs [00019], [00037]-[00048]-[00052], and [00090], especially paragraphs [00046] and [00047), within WO 02/064684 A2. Furthermore, within Example 1 of this reference (paragraphs [000107]-[000111] and Tables 1 and 2), the criticality of using components corresponding to (a4) and (a5) in combination is demonstrated in view of the results obtained when using disclosed composition C, the only composition of Example 1 that employs the combination. Given these teachings within the primary and secondary references and the well-established tenet that it is obvious to use a known component for its known function, the position is taken that it would have been prima facie obvious to formulate the coating compositions of the primary reference using the claimed combination of (a4) and (a5) in both the claimed amounts, relative to each other, and the claimed amounts of each component, relative to instantly claimed component (A), with the reasonable expectation that coatings improved in appearance would result.
8. Applicants’ response to the previous prior art rejection has been considered, and as a result, the previous prior art rejection has been withdrawn.
Conclusion
9. 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
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