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 .
DETAILED ACTION
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.
Claim 1 and 3-16 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.
Claim 1 recites that the primer compound comprises at least one thiol group, whereas the primer compound is a reaction product of a compound having at least two thiol groups. It is not clear if the reaction product must have at least one unreacted thiol group or a reactive compound that forms the primer compound has at least two thiol groups, and the primer compound may have no unreacted thiol groups or the residuals of two thiol groups.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-4, and 8 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Yasuhara et al. (US Patent Application 2020/0283647 A1, published 10 Sep. 2020, hereinafter Yasuhara).
Regarding claims 1, 3-4, and 8, Yasuhara teaches a cationic electrodeposition coating composition (primer compound) comprising the reaction product of allyl acetoacetate (claimed Formula VI) and trimethylolpropane tris (3-mercaptopropionate (claimed Formula I) or tris-[(3-mercaptopropionyloxy)-ethyl]-isocyanurate (claimed Formula II) (Abstract and paragraph 0040). Yasuhara teaches coating a metal substrate with his coating (paragraph 0027). Yasuhara teaches coating compositions without an oxirane/epoxy group (paragraphs 0040-0041, 0101, and 0150).
In light of the overlap between the claimed primer compound and that disclosed by Yasuhara, it would have been obvious to one of ordinary skill in the art to use primer compound that is both disclosed by Yasuhara and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Allowable Subject Matter
Claims 5-7 and 9-16 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.
Yasuhara and the references cited below do not disclose a reaction product using the claimed compounds in claims 5-7 and 9-10 nor the claimed articles in claims 11-16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moser et al. (WO 2019/064103 A1, published 04 Apr. 2019, hereinafter Moser) teaches a curable sealant composition comprising a polythiol, a β-diketone with a carbon-carbon double bond, and an adhesion promoter without an oxirane group (Abstract and page 10, lines14-16 and page 14, lines 11-16). However, Moser does not disclose using his composition as a reactive primer. Moser teaches that a substrate may be primed before his sealant composition is applied (page 22, lines 15-18), and Moser does not disclose that the polythiol and the β-diketone compound are reacted together to form a single compound. Powell et al. (US Patent Application 2016/0376448 A1, published 29 Dec. 2016, hereinafter Powell) teaches a curable composition comprising a polyene, a polythiol, and an anhydride (Abstract). However, Powell does not disclose inclusion of a β-diketone compound. Imai et al. (US Patent Application 2014/0255638 A1, published 11 Sep. 2014, hereinafter Imai) teaches an adhesive composition for wafer bonding comprising a dithiol compound in the adhesive and oxirane compound and a β-diketone compound in a release layer (Abstract). However, Imai does not disclose that a polythiol compound and a β-diketone compound are reacted together to form a single compound. Zook and Praggastis (WO 2019/239273 A1, published 19 Dec. 2019, hereinafter Zook) teaches a shim comprising a β-diketone compound as a decomplexing agent and a compound resulting from a reaction involving a polythiol compound (Abstract and paragraphs 0076, 0084, and 00134). However, Zook does not disclose that a polythiol compound and a diketone compound are reacted together to form a single compound nor that the diketone compound includes an ethylenically unsaturated group. Leake (US Patent 6,521,716 B1, published 18 Feb. 2003, hereinafter Leake) teaches a coating comprising a polythiol and a β-diketone (Abstract, Structure II, and col. 13, lines 1-6). However, Leake does not disclose inclusion of a β-diketone with an ethylenically unsaturated group. Nixon and Kelly (US Patent 6,433097 B1, published 13 Aug. 2002, hereinafter Nixon) teaches a composition for coating comprising a β-diketone and a polythiol as a chain transfer agent (Abstract and col. 4, lines 18-20 and 44-50). However, Nixon does not disclose inclusion of a β-diketone with an ethylenically unsaturated group nor that the polythiol is incorporated into the compound containing the β-diketone.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Examiner, Art Unit 1787
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