DETAILED ACTION
Response to Amendment
The response filed on March 30, 2026 has been entered. Claims 1, 2, 6, 7, 9, 11-16, 29-30, 32, 35, 39-40, 43, 49, 51, and 54 are pending. Claims 11-16, 29-30, 32, 35, 39-40, 43, 49, 51, and 54 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group. Claims 1, 2, 6, 7, and 9 are directed to the elected invention and examined herein.
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 the newly added limitations of “wherein the reactive silicone component comprises (i) a hydroxyl functional silicone including at least 3 reactive hydroxyl moieties and/or (ii) an amine functional silicone”, US ‘154 discloses a reactive silicone represented by the following general formula:
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135
253
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As set forth in paragraph [0024], R1 can be a hydroxyl group and “n” is selected so that the molecular weight of this reactive silicone is in the range of 800 to 2,500. Thus, an embodiment wherein the reactive silicone has at least 3 reactive hydroxyl moieties is readily envisaged.
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.
Claims 1, 2, 6, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kabagamba et al. (US Pub 2020/0017711) in view of Sheth et al. (US Pub 2015/0072154).
Regarding claim 1, US ‘711 discloses a coating composition comprising an isocyanate component (claim 2), an amine-functional resin comprising an aspartic acid ester [0052], a reactive amine functional silicone component [0062], and titanium dioxide [0069]. US ‘711 does not disclose the molecular weight of the reactive silicone component being at least 500 or the amount of titanium dioxide being at least 5 wt%. The teachings of US ‘154 are set forth above. In summary, US ‘154 is directed to a similar coating composition that uses a reactive silicone having a molecular weight in the range of 800 to 2,500 and the titanium dioxide is present in an amount of at least 5 wt%. It would have been obvious to one having ordinary skill in the art to have used a reactive silicone component having a conventionally known molecular weight and incorporated at least 5 wt% of titanium dioxide into the coating composition, motivated by the desire to obtain a coating composition having desired pigment/coloration properties.
Regarding claim 2, 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].
Regarding claim 6, US ‘711does 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 ‘711 does disclose that the ratio of equivalents of isocyanate groups to amine groups is in the range of 1.01 to 1.10:1 [0095]. 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
Regarding claim 7, US ‘711 discloses that the amine-functional resin further comprises a primary amine ([0051], [0052]).
Regarding claim 9, US ‘711 discloses the isocyanate component comprises a prepolymer formed from isophorone diisocyanate and a polyether polyol ([0042], [0046]).
Response to Arguments
Applicant’s arguments with respect to the claims 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. The arguments are directed to the newly added claim limitations added to claim 1, which are fully addressed above in paragraphs 6 and 15.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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