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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S.
Patent Pub. No. 2020/0317949 to Weiher et al.
As to claims 1-5, 8-9, 11, and 16, Weiher discloses a coating composition comprising a
first component containing the reaction product of a trimeric hexamethylene diisocyanate and
preferably a silyl amine represented by the following formula:
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And a second component comprising an hydroxyl group containing compounds such as
poly(meth)acrylate polyols having OH numbers that ranges from 100 to 300 mg KOH/g (0050), a
catalyst for crosslinking of the silane groups, and an alkoxysilyl-functional siloxane defined by:
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With regards to the claim storage limitation, it is noted that claim 1 claims a coating
composition comprising components (A), (B), (C), and (D), all elected claims are recited in the
product-by-process format by use of the language, "wherein component Il is obtained by
storing a mixture of (C) and (D). Case law holds that: Even though product-by-process claims
are limited by and defined by the process, determination of patentability is based on the
product itself. The patentability of a product does not depend on its method of production. If
the product in the product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made by a different
process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry
weight absent a showing of criticality, the reference discloses the claimed product in the sense
that the prior art product structure is seen to be no different from that indicated by the claims.
Wieher discloses the claimed coating composition including all reactants (A), (B), (C),
and (D) and the process of storing would not form a structurally different coating composition.
As to claim 6, Wieher discloses reacting the polyisocyanate and silane containing amine
at 50-60°C in an excess of isocyanate reactive to prepare a curing agent having NCO values of
6.1, 17.7, 16.6, or 6.2% (Table 3).
As to claim 7, Wieher discloses mixtures of catalysts may be used including phosphoric
monoesters, cyclic phosphoric diesters, and amine blocked phosphoric esters (0080).
As to claims 12-13 and 15, Wieher discloses a process for producing a top coating on a
substrate comprising applying the coating composition discussed above and thermally curing
the composition (0147-0148).
As to claim 14, Wieher discloses applications such as coating of plastic parts (0148).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No.
2020/0317949 to Weiher et al. in view of U.S. Patent Pub. No. 2019/0040253 to Kasemi et al.
As to claim 10, Weiher discloses a coating composition comprising a first component
containing the reaction product of a trimeric hexamethylene diisocyanate and preferably a silyl
amine represented by the following formula:
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114
314
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Greyscale
And a second component comprising an hydroxyl group containing compounds such as
poly(meth)acrylate polyols having OH numbers that ranges from 100 to 300 mg KOH/g (0050), a
catalyst for crosslinking of the silane groups, and an alkoxysilyl-functional siloxane defined by:
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488
540
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Greyscale
Wieher does not expressly disclose storing components C and D. However, it is well known in the two-component polyurethane art that components containing isocyanate groups are stored separating from components containing isocyanate-reactive groups. The two
components are typically manufactured and stored separately before being used. This is
supported by Kasemi (0194). Further, Kasemi discloses storing for several months up to half a
year without any change in respective properties (0194). Accordingly, it would have been
obvious to a person of ordinary skill in the art to store component C and D of Wieher for long
durations including those within the claimed scope until ready for use with the expectation that the storage or lack thereof would not change respective properties of the two components.
Response to Arguments
Applicant’s arguments, see Arguments, filed 07/16/2026, with respect to the rejection(s) of claim(s) Claims 1-9 and 11-16 under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2020/0317949 to Weiher et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of U.S. Patent Pub. No. 2020/0317949 to Weiher et al.
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive. Applicants have argued that their unexpected results in the residue and marking characteristics of the rebut the prima facie case of obviousness. In response, the examiner has considered applicant's examples, and the position is taken that they are insufficient for the following reasons. The examples are not commensurate in scope with applicant’s claims in terms of reactant species or amounts. It has been held that the claims must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. It has further been held that a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288. Accordingly, it is not evident that the argued results hold for the full scope of the claims or that the argued lack of residue and markings is necessarily possessed by the claimed composition.
The arguments are not commensurate in scope with the claims which do not provide any connection between recited components and the properties, including residue and marking resistance and which do not exclude additional components which could lead to such improvements. The examples are a small test cases which does not test the full scope either of the prior art or of Applicant’s claim. It shows only that under some circumstances, a prior art coating may not demonstrate as good properties as a coating of the inventor. Because the inventor is the declarant and has an interest in the application and because there is a single test based solely on the prior art, the argument does not provide sufficient objective data to show 1) that a person of ordinary skill in the art would not have optimized the concentrations of known and common components as evidenced by the prior art or 2) that inventor’s/ declarant’s conclusion of "unexpected results" by inventor/ declarant is supported by the evidence. An improvement made by obvious modifications, such as optimized prolonged storage is not an unexpected result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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