DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/EP2022/066653 filed 6/20/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. EP 21180835.7 filed 6/22/2021 and EP 22175129.0 filed 5/24/2022, which papers have been placed of record in the file.
Claims 1-21 are pending.
Election/Restrictions
Applicant's election with traverse of Group I Claims 1-7 in the reply filed on 7/30/2026 is acknowledged. The traversal is on the ground(s) that:
Huber Marinswek does not disclose the claimed number of urea bonds. Huber Marinswek does not disclose the molecular structure, repeat units, molecular weight, degree of polymerization, reactant ratio, or reaction conditions from which the claimed average number of urea bonds can be determined. The reaction scheme merely represents one possible reaction product and cannot represent the claimed urea bonds. Further, Huber Marinswek does not disclose the claimed average particle size. Figure 6 are D90 values, in contrast the present claims are D[4,3] values.
This argument is not found persuasive since the reaction of urea and formaldehyde resin is well known to one skilled in the art to contain at least two urea bonds. While an upper limit of urea bonds is not mentioned, it can be concluded the number of urea bonds is at least two. While the upper limit of urea bonds depends on molecular weight, it is well known that particle size is a function of molecular weight and hence number of urea bonds, and therefore case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). In the present case, it is well within the skill level of one skilled in the art to have selected given molecular weight and resulting number of urea bonds within the scope of claim 1.
Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected particular molecular weight to achieve the disclosed particle sizes, and resulting number of urea bonds per molecule within the scope of the claims.
Applicant argues Huber Marinswek does not disclose the claimed average particle size. Figure 6 are D90 values, in contrast the present claims are D[4,3] values.
This argument is not found persuasive since claim 1 does not recite an average particle size, nor a D[4,3] values, and the claimed particle diameters are disclosed. The line thickness in Figure 6 clearly discloses the volume particle sizes.
Applicant argues Huber Marinswek does not disclose the claimed particle size distribution. The graph merely discloses rough estimates.
This argument is not found persuasive since the graph clearly shows particle sizes and percentages such that one skilled in the art could easily determine are within the scope of claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
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.
Claims 1-7 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation equal to or less than 25%, and the claim also recites preferably less than 20%, more preferably less than 15% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The same rejection applies to the remaining volume percentages and ratios thereof recited in claims 2-4.
Claims 5-7 are subsumed by this rejection because of their dependence.
Regarding claims 1-5, 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 recites (derivatives thereof) and it would not be clear why parenthesis are recited. Further, it is unclear whether the limitations within the parenthesis are part of the claimed invention. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 recites …the volume percentage of particles of the particulate polyurea compound a2) having a diameter smaller than 2 µm is in the range of between 0 and 25%, preferably between 0 and 20%, more preferably between 0 and 15%... However, claim 1 must be between 0 and 25%, preferably between 0 and 20%, more preferably between 0 and 15% since a negative volume percentage is not possible. Therefore, claim 2 does not further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-4, 7 are rejected under 35 U.S.C. 103 as being unpatentable over Huber Marinswek (PERGOPAK Organic Matting and Effect Agents datasheet) as evidenced by Gebauer et al. (US 2014/0050928).
Regarding claim 1: Huber Marinswek (Figures 3-6; pages 1-5, M3, M4, M5 and M6) discloses particulate polyurea compounds a2) for reducing gloss of coatings, wherein:
The volume percentage of particles of the particulate polyurea compound a2) having a diameter of smaller than 2 μm is equal to or less than 25% (M3-M6 Figure 6).
The volume percentage of particles of the particulate polyurea compound a2) having a diameter from 5-10 μm divided by the volume percentage of particles of the particulate polyurea compound a2) having a diameter of less than 5 μm is equal or less than 15. Specifically, the volume percentage of particles of 5-10 μm of M3-M6 is at most 20, and the volume percentage of particles polyurea compound a2) having a diameter less than 5 μm is 40-85 % for M3-M6 respectively, and therefore the ratio of 5-10 / <5 is at most 0.5.
The volume average percentage of particles of the particulate polyurea compound a2) having a diameter larger than 20 μm is equal to or less than 10%. Specifically, the particles of M3 with a volume average particle diameter larger than 20 are at most 10%, and much less for M4-M6.
Per Gebauer, the particle size is determined by laser diffraction (Table 2 footnote 9 Gebauer). Therefore, the volume percentage and average particle size in Figure 6 of Huber Marinswek is measured through laser diffraction and hence are volume based. While a Malvern Mastersizer S laser diffraction apparatus in particular is not mentioned, it is the Examiners position the measurement of particles volume percent and average particle diameter utilizing laser diffraction yields the same values. Further, a product claim does not depend on the method of measuring properties.
Per Gebauer et al. (US 2014/0050928), the polyurea compound a2) is polymethyl urea (Table 2 footnote 9 Gebauer). Polymethyl urea is polymerized by the reaction scheme below, which is well known to one skilled in the art. A polymethyl urea polymer comprises at least two urea groups per molecule prior to crosslinking, as shown in the reaction scheme below. While the upper limit of urea bonds depends on molecular weight, it is well known that particle size is a function of molecular weight and hence number of urea bonds, and therefore case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). In the present case, it is well within the skill level of one skilled in the art to have selected given molecular weight and hence resulting number of urea bonds within the scope of claim 1.
Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected particular molecular weight and resulting number of urea bonds per molecule within the scope of the claims.
PNG
media_image1.png
117
724
media_image1.png
Greyscale
Finally, a film forming resin utilizing the polyurea compound a2 is disclosed as well.
a
PNG
media_image2.png
241
359
media_image2.png
Greyscale
Regarding claim 2: The volume percentage of particles of the particulate polyurea compound a2) having a diameter of smaller than 2 μm is equal to or less than 25% (M3-M6 Figure 6).
The volume percentage of particles of the particulate polyurea compound a2) having a diameter from 5-10 μm divided by the volume percentage of particles of the particulate polyurea compound a2) having a diameter of less than 5 μm is equal or less than 15. Specifically, the volume percentage of particles of 5-10 μm of M3-M6 is at most 20%, and the volume percentage of particles polyurea compound a2) having a diameter less than 5 μm is 40-85 % for M3-M6 respectively, and therefore the ratio of 5-10 / <5 is at most 0.5.
The volume average percentage of particles of the particulate polyurea compound a2) having a diameter larger than 20 um is equal to or less than 10%. Specifically, the particles of M3 with a volume average particle diameter larger than 20 are at most 10%, and much less for M4-M6.
Regarding claim 3: The ratio of particle size at 90 vol% of the particle size distribution and the particle size at 10 vol% of the particle size distribution of M3 is about 5, i.e. about 11/2.1.
PNG
media_image2.png
241
359
media_image2.png
Greyscale
Regarding claim 4: Per Gebauer, the polyurea compound a2) has an average particle size of 6-8.5 μm by laser diffraction (Table 2 footnote 9 Gebauer).
Regarding claim 7: The polyurea compound a2) is polymethyl urea comprising the reaction scheme below, comprises two urethane groups per molecule prior to crosslinking.
PNG
media_image1.png
117
724
media_image1.png
Greyscale
Per Gebauer, the polyurea compound a2) is polymethyl urea (Table 2 footnote 9 Gebauer). Polymethyl urea is polymerized by the reaction scheme below, which is well known to one skilled in the art. A polymethyl urea polymer comprises at least two urea groups per molecule prior to crosslinking, as shown in the reaction scheme below. While the upper limit of urea bonds depends on molecular weight, it is well known that particle size is a function of molecular weight and hence number of urea bonds, and therefore case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See MPEP 2144.05(II). In the present case, it is well within the skill level of one skilled in the art to have selected given molecular weight and resulting number of urea bonds within the scope of claim 1.
Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected particular molecular weight and resulting number of urea bonds per molecule within the scope of the claims.
Allowable Subject Matter
Claims 5-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Specifically, Huber Marinswek does not suggest alone, or in combination, the claimed particulate polyurea comprising a polyisocyanate nor an amine.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
Prosecution Insights