DETAILED 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 .
Election/Restrictions
2. Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on January 14, 2026 is acknowledged. Claim 1-19 are pending of which claims 17-19 are withdrawn and claims 1-16 are under consideration.
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.
3. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gertzmann et al. (US 2004/0034146 A1) in view of Costa (US 2005/0222304 A1).
Gertzmann et al. disclose solvent-free aqueous polyurethane-polyacrylate hybrid dispersions and their use for producing elastic coatings. The polyurethane-polyacrylate hybrid dispersions are obtained by preparing a hydrophilic or hydrophilicizable polyurethane by reacting isocyanate components with an equimolar amount of one or more diols or polyols, low molecular weight diols or polyols, and hydrophilic compounds having at least one NCO-reactive group, in the presence of ethylenically unsaturated monomers which are inert towards NCO groups. The hydrophilic or hydrophilicizable polyurethane is obtained by reacting one or more isocyanate components (A) with one or more components (B) comprising (B1) one or more diols or polyols having a molecular weight of from 500 to 6000 and an OH functionality of from 1.8 to 5, (B2) one or more low molecular weight diols or polyols of the molecular weight range from 62 to 400 with an OH functionality of two or more as chain extenders, (B3) one or more hydrophilic compounds containing non-ionic groups and/or ionic and/or potentially ionic groups and having at least one NCO-reactive group, (B4) if desired, polyamines and/or alkanolamines of the molecular weight range from 60 to 300 with an NH functionality of 2 or more, (B5) if desired, monofunctional compounds of the molecular weight range from 17 to 350 in the presence of ethylenically unsaturated monomers (C1) which are inert towards NCO groups, subsequently dispersing the polyurethane in water. Preferred isocyanate components (A) are diisocyanates such as isophorone diisocyanates (equivalent to the disclosed isocyanate as listed in the as-filed Specification) and in order to prepare polyurethanes having a certain degree of branching or crosslinking it is possible, where appropriate, to use, polyisocyanates having functionalities of more than 2 (equivalent to a. of claim 1 and i of claim 7 and meeting the limitation that the isocyanate compound has at least two isocyanate groups). As component (B1) (equivalent to b of the claim 1 and ii of claim 7 and meeting the limitations of claims 5 and 10) use is made of polyols having a molecular weight of from 500 to 6000. These include, for example, polyesters, polyethers, polycarbonates, polyester-carbonates, polyacetals, polyolefins, polyacrylates and polysiloxanes. Preference is given to using diols of polyesters, polyethers and polycarbonates. Suitable components (B2) are short-chain diols having molar weights of below 500 (equivalent to e of claim 3 and v. of claim 9) and examples include ethylene glycol, 1,2- and 1,3-propanediol, 1,3- and 1,4-butanediol, 1,6-hexanediol, 2-ethyl-1,3-hexanediol, diethylene glycol, dipropylene glycol, neopentylglycol, 2,4-dimethylpentanediol, 2-ethyl-3-propyl-1,5-pentanedio- l, 2,2,4-trimethylpentanediol, cyclohexanedimethanol or mixtures of such diols (equivalent to the disclosed diols listed in the as-filed Specification). Suitable components (B3) (equivalent to c of the claimed invention) are ionic or potentially ionic compounds which contain at least one NCO-reactive group. Examples include dimethylolpropionic acid or dimethylolbutanoic acid (equivalent to the disclosed component c listed in the as-filed Specification). Suitable components (B4) include polyfunctional, nitrogen-containing compounds that are reactive with isocyanates by way of NH groups, such as polyamines and alkanolamines (equivalent to f of claim 4 and iv of claim 7) and examples include diethylenetriamine and triethylenetetraamine (equivalent to the disclosed component f listed in the as-filed Specification). As component (C) it is possible to use polymerizable compounds containing vinylic unsaturation. Suitable components (C1) are nonionically hydrophilicized acrylates or methacrylates (equivalent to d of claim 1 and iii. of claim 7) and examples include methoxypolyethylene glycol acrylate or methacrylate, ethylene glycol di(meth)acrylates, oligo- and polyethylene glycol di(meth)acrylates. Likewise suitable are compounds containing further functional groups, such as acetoacetoxy groups (hence meeting the limitation that compound d includes at least one group capable of reacting with the isocyanate group and at least one ethylenically unsaturated group as recited in claim 1). The dispersing of the polyurethane in water (equivalent to the water of claim 1) may be preceded or followed where appropriate by the addition of further ethylenically unsaturated monomers (C1) which are inert towards NCO groups (meeting the limitation that the composition comprises non-radiation curable components as recited in claim 7).
The composition further comprises suitable polymerization initiators and crosslinkers (meeting the limitations of claim 13). The polyurethane-polyacrylate hybrid dispersions can be for producing a coating, which can be used, for example, for the temporary protection of glass, plastics, or paints (meeting the limitations of claim 16) (see Abstract and paragraphs 0014-0022, 0029-0033, 0040, 0043, 0067, 0070, 0078, 0080).
Gertzmann et al. fail to teach that their composition comprises polyurethane particles with a particle size of 1-10 microns.
However, Costa discloses particles that are polyurethane-polyurea micro spheres and can be added to a polymeric carrier such that it reflects/refracts light on the surface achieved by adding particles used to create a specific geometric pattern on the surface of the part. These particles greatly facilitate the dispersion of these particles in liquid paints/coatings as well. In the case of liquid paints, the paint's own solvent dissolves the carrier and frees the particles that, having separated, are uniformly distributed in the fluid mass of the paint itself. The particles to be used should preferably be microspheres made of polyurethane-polyurea as these have the greatest flatting and tactile characteristics for the same grain size and lightfastness and examples include using polyurethane-polyurea microspheres known commercially as DecosphaeraTM (equivalent to the polyurethane particles of claim 1 and disclosed in the as-filed Specification as the polyurethane particles used in the instant Examples). A relationship was found between the diameter and the aesthetic effect produced. It was particularly noted that maximum flatting, and maximum soft touch are obtained by using smaller diameter spheres. Tab. 1 summarizes the results obtained when conducting experiments with transparent micro spheres of various diameters (see Abstract and paragraphs 0001, 0010, 0032, 0039, 0046).
Accordingly, it would have been obvious to one having ordinary skill in the art to add polyurethane particles to the composition taught by Gertzmann et al. given that Costa teaches that the use of such particles provides a flatting and soft touch to the coating. With regards to claims 2, 6, 8, 11, and 12 and the particle size of the polyurethane particles, the Examiner would like to point out that workable physical properties, such as particle sizes, and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties, particularly given that a relationship was found between the diameter and the aesthetic effect produced and maximum flatting and maximum soft touch are obtained by using smaller diameter spheres. With regards to claim 14 and 15, the Examiner takes the position that the Tg and the oil absorption of the polyurethane particles taught by Costa must be identical to that of the claimed polyurethane particle given that Costa uses identical particles.
Conclusion
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787
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