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 .
Response to Unity of Invention Requirement
2. Applicant's election with traverse of Group I, claims 1-12 and 16-20, in the reply filed on 01 December 2025 is acknowledged. The traversal is on the ground(s) that a Unity of Invention Requirement was not required in the International Application and that no additional search burden exists since the three groups are inexorably linked. This is not found persuasive because the Office has met its burden in establishing proper grounds for making the Requirement. Furthermore, despite applicants’ remarks, it has not been established that an undue search burden would not exist if all Groups were searched.
The requirement is still deemed proper and is therefore made FINAL.
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. Claims 1-12 and 16-20 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.
Firstly, with respect to claims 1, 3, and 17, the use of the word, “kind”, in association with the fumed silica renders the claims indefinite, because the language is not adequately descriptive of the component.
Secondly, with respect to claim 17, the Markush group specifying only a single species is considered improper, since a group has not been set forth.
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 Wegner et al. (US 2014/0147596 A1),
Groenewolt et al. disclose a clearcoat composition comprising at least one polyol, such as polyacrylate and polyester polyols (paragraph [0035]+), corresponding to instantly claimed (a1); 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 and paragraph [0081] within Wegner et al.), corresponding to (a4), establishing that the claimed urea component was a known clearcoat additive/component; fumed silica as another rheological additive (see 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). Given these teachings to produce a very similar coating composition and having a clear understanding of the function of each component, the position is taken that it would have been obvious to formulate them in the required or optimal quantities, so as to arrive at the instant invention.
Conclusion
7. 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