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 .
Double Patenting
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 1-3, 6-12, and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,683,424 in view of WO-2019/087081 to Amb et al. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to coating compositions comprising at least an isocyanate-reactive agent comprising a secondary diamine wherein the secondary diamine comprises the reaction product of at least one diamine and alkyl esters of 2-butendioic acid.
The patented claims do not require the at least one silane component.
However, within the same field of polyurea coatings, Amb discloses an isocyanate- reactive component comprising at least one silane component (Pg. 10, II. 19-25), such as phenyltrimethoxysilane, phenyltriethoxysilane, dimethyldimethoxysilane, and dimethyldiethoxysilane etc. (Pg. 11, II. 11-16).
At the time of filing it would have been obvious to a person of ordinary skill in the art to include the silane component taught in Amb within the composition of the pending claims to improve elongation properties, improve wet tensile strength, and increase dry elongation (Pg. 11, II. 19-32).
Claims 1-3, 6-12, and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,152,161 in view of WO-2019/087081 to Amb et al. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to coating compositions comprising at least an isocyanate-reactive agent comprising a secondary diamine wherein the secondary diamine comprises the reaction product of at least one diamine and alkyl esters of 2-butendioic acid.
The patented claims do not require the at least one silane component. However, within the same field of polyurea coatings, Amb discloses an isocyanate-reactive component comprising at least one silane component (Pg. 10, II. 19-25), such as phenyltrimethoxysilane, phenyltriethoxysilane, dimethyldimethoxysilane, and dimethyldiethoxysilane etc. (Pg. 11, II. 11-16).
At the time of filing it would have been obvious to a person of ordinary skill in the art to include the silane component taught in Amb within the composition of the pending claims to improve elongation properties, improve wet tensile strength, and increase dry elongation (Pg. 11, II. 19-32).
Claim Rejections - 35 USC § 103
Claims 1-3, 6-12, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 10,683,424 in view of WO-2019/087081 to Amb et al.
As to claims 1-7, Fazel discloses an isocyanate reactive component comprising a secondary diamine wherein the secondary diamine comprises the reaction product of at least one diamine, preferably bis(4-aminocyclohexyl)methane. and alkyl esters of 2-butendioic acid,
preferably ethyl ester of 2-butendioic acid. Fazel does not teach the addition of a silane component.
However, within the same field of polyurea coatings, Amb discloses an isocyanate-
reactive component comprising at least one silane component (Pg. 10, II. 19-25), phenyltrimethoxysilane, phenyltriethoxysilane, dimethyldimethoxysilane, and dimethyldiethoxysilane etc. (Pg. 11, II. 11-16).
At the time of filing it would have been obvious to a person of ordinary skill in the art to include the silane component taught in Amb within the composition of Fazel to improve elongation properties, improve wet tensile strength, and increase dry elongation (Pg. 11, II. 19-32). As to claims 8-14, Fazel discloses a curing composition comprising the isocyanate-reactive component and a polyisocyanate, preferably a trimer of hexamethylene diisocyanate (Example 1). As to claim 15, Fazel in view of Amb discloses the addition of suitable reactive silanes comprising adducts of isocyanato silanes (Pg. 10, II. 1-6).
As to claim 16, Fazel discloses the addition of viscosity modifiers such as hexane,
heptane, xylene, toluene, etc. (5:11-25). As to claim 17, Fazel discloses the addition of further modifiers including bis(2-ethylhexyl)phthalate (5:30-40).
As to claim 18, Fazel discloses further additives including leveling agents, defoamers, air release agents, etc. are added to the curable composition (5:44-50).
As to claim 19, Fazel discloses a non-aqueous coating composition comprising the
isocyanate-reactive component and isocyanate component (2:5-6).
Response to Arguments
Applicant's arguments filed 07/22/2026 have been fully considered but they are not persuasive.
With regards to the Double Patenting rejections, the applicant argues that Amb is a prior art reference that is not commonly owned and therefore the rejection conflates the legal standards governing 103 and nonstatutory double patenting.
This is not found persuasive because any secondary reference used to support an obviousness analysis for a nonstatutory double patenting rejection must be prior art under 35 U.S.C. 102 or pre-AIA 35 U.S.C. 102. See MPEP 804.03. Amb is a prior art reference under 35 U.S.C. 102.
Applicants have argued that their unexpected results in longer cure profiles, lower mix viscosity, high hardness development, and excellent adhesion 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.
When looking to showings of results to overcome a rejection, the following must be considered:
Results must be Unexpected, commensurate in scope, and compare the closest prior art:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Firstly, Applicant’s argument is not commensurate in scope with the claims which do not provide any connection between recited components and the alleged properties, which do not exclude additional components which could lead to improvements in the alleged unexpected results, i.e. type of diisocyanate.
The showings are not commensurate in scope with very broad claims, which encompass many compounds, with respect to the alkoxy-functional silane containing reactant and excludes components that are necessary to achieve the alleged unexpected properties, i.e. a diisocyanate component. The claims recite several alkoxy-functional silanes and do not claim a diisocyanate component. The claims are also open to any amount of each component and applicants allege that this results in unexpected results. However, any showing based on “compositions” must be reasonable commensurate in scope with both the kind and amount of diisocyanate and amount of alkoxy-functional silane. The showings are clearly not reasonably commensurate given that applicants' have demonstrated a combination of longer cure profiles, lower mix viscosity, high hardness development, and excellent adhesion for precisely 1 species of diisocyanate (not claimed) and 4 specific alkoxy-functional silanes species used in 1 specific amount (12.5).
Secondly, the applicant must compare the closest prior art. The closest prior art teaches the same isocyanate-reactive component and a different silane functional component. The comparison examples only demonstrate the alleged unexpected results when the silane functional component is not present. A proper comparison of the prior art would be examples wherein isocyanate-reactive component stays the same and different alkoxy-functional silanes within the scope of the prior art are shown.
Although Applicant has provided comparative examples between a different polyurethane (not the prior art’s polyurethane) and that prepared according to Applicant, the examples do not test the full scope either of the prior art or of Applicant’s claim. It shows only that under some circumstances, a coating composition may demonstrate longer cure profiles, lower mixed viscosity, high hardness development, and excellent adhesion. The specification 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 substituting one alkoxy-functional silane for another is not an unexpected result.
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.
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.
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, Joseph Del Sole can be reached at 571-272-1130. 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.
/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
Prosecution Insights