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 .
Response to Amendment
The response filed on December 01, 2025 has been entered. Claims 1, 2, 6, 7, 9, 11-16, 29-30, 32, 35, 39-40, 43, 49, 51, and 54 are pending.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1, 2, 6, 7, and 9) in the reply filed on December 01, 2025 is acknowledged. The traversal is on the grounds that WO 2018/089603 does not disclose all of the shared technical features. Specifically, it is argued that WO ‘603 does not disclose a coating composition comprising a reactive silicone component having a molecular weight of at least 500. While it is agreed that WO ‘603 does not disclose the shared technical feature of a reactive silicone component having a molecular weight of at least 500 in the composition, this argument is not found persuasive because, as set forth below, all of the shared technical features, including a composition comprising a reactive silicone component having a molecular weight of at least 500, are taught in the prior art. Specifically, see US Pub 2015/0072154 [0024].
Claims 11-16, 29-30, 32, 35, 39-40, 43, 49, 51, and 54 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Sheth et al. (US Pub 2015/0072154).
Regarding claim 1, US ‘154 discloses a coating composition comprising an isocyanate component (claim 1), an amine-functional resin comprising an aspartic acid ester (claim 1), a reactive silicone component having a molecular weight of 800 to 2,500 [0024], and titanium dioxide in an amount of at least 5 wt% (Table 1, Examples 1-3).
Regarding claim 7, US ‘154 discloses that the amine-functional resin further comprises a primary amine (claim 1).
Claim Rejections - 35 USC § 102/103
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.
Claim 6 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sheth et al. (US Pub 2015/0072154).
Regarding claim 6, US ‘154 does not specifically disclose the equivalent weight ratio of the isocyanate component to active hydrogen of the amine-functional resin being in the range of 0.85:1 to 1.4:1. However, US ‘154 does disclose that the ratio of equivalents of isocyanate groups to amine groups is in the range of 1.01 to 1.10:1 (claim 13) and that the mole ratio of isocyanate to amine is no more than 1:1 so there remains no excess primary amine upon reaction [0014]. This suggested that the equivalent weight ratio of the isocyanate to active hydrogen of the amine-functional resin is within the claimed range. Alternatively, the range would overlap, which would be prima facie obvious. See MPEP 2144.05
Claim Rejections - 35 USC § 103
Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sheth et al. (US Pub 2015/0072154) in view of one of Barancyk et al. (US Pub 2006/0046068) or Kabagamba et al. (US Pub 2020/0017711).
Regarding claim 2, US ‘154 discloses that the coating composition can contain a solvent [0027], but does not disclose that the coating composition further comprises a reactive diluent. US ‘068 discloses a similar coating composition that further contains a polyepoxide, such as 3,4-epoxycyclohexanecarboxylate [0038], which is one of the listed preferred reactive diluents in the present specification [0026]. US ‘068 discloses that such a component can serve as a curing agent in the composition. US ‘711 discloses that the amine groups on the polysiloxane may be reacted with a cyclic carbonate, such as propylene carbonate, to yield a urethane linkage and a terminal hydroxyl group [0062]. Cyclic carbonate is one of the listed preferred reactive diluents in the present specification [0026]. It would have been obvious to one of ordinary skill in the art to have prepared the coating composition of US ‘154, wherein the composition contains a reactive diluent, as taught in US ‘068 and US ‘711, motivated by the desire to incorporate a curing agent (US ‘068) or provide urethane linkages and terminal hydroxyl groups (US ‘711) in the composition.
Regarding claim 9, US ‘154 discloses that the isocyanate component comprises a prepolymer formed from isophorone (claim 6), but does not disclose that the prepolymer additional contains a polyether polyol or polyetheramine. US ‘068 and US ‘711 both disclose similar coating compositions wherein the isocyanate component comprises a prepolymer formed from isophorone diisocyanate and a polyether polyol (US ‘068-[0058], [0061]; US ‘711-[0042], [0046]). It would have been obvious to one having ordinary skill in the art to have prepared the coating composition of US ‘154, wherein the isocyanate component contains a polyether polyol, as taught in US ‘068 and US ‘711, motivated by the desire to use a conventionally known isocyanate component in the coating composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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