DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, in the reply filed on 08/07/2026 is acknowledged. The traversal is on the ground(s) that a search of the prior art is premature as a full search has not been conducted, and thus, the restriction requirement should be withdrawn (see Applicant’s Remarks at pg. 1). Applicant’s specific argument is not persuasive, given the technical feature is present in the prior art, thus establishing an a posteriori lack of unity of invention.
However, upon closer inspection of Williams (US-5102924-A), Williams teaches their catalyst to be a photocatalyst rather than an autooxidation catalyst (see Williams at col. 19, lines 11-13). In other words, it is not immediately apparent whether the catalyst of Williams functions as an autooxidation catalyst or not. Accordingly, Williams is no longer relied upon as demonstrating the technical feature.
However, the technical feature is still taught in the prior art, as demonstrated by the claim 1 rejection over Emmons (US-4180645-A), and alternatively Gupta (US-20050148678-A1), below. Consequently, an a posteriori lack of unity of invention is present, and the requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/07/2026.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
• In claim 1, line 11, the term “compunds” should be amended to read “compounds.”
• In claim 2, line 2, the term “isocya-nate” should be amended to read “isocyanate.”
Appropriate correction is required.
Claim Interpretation
The Examiner is interpreting the term “% b.wt.” in claim 6 to refer to “percent by weight.” Such an interpretation is supported in Applicant’s specification at pg. 10, line 18.
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 3, 8, and 9 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.
In claim 3, the term “TDI,” “HDI,” and “MDI” are unclear. There is no previous mention of such terms in the claims, and thus, their acronyms are undefined. For the purposes of examination, the Examiner is interpreting “TDI” to refer to 2,6-toluene diisocyanate, “HDI” to refer to hexamethylene diisocyanate, and “MDI” to refer to 4,4’-diphenylmethane diisocyanate, as supported by Applicant’s specification at pg. 5, lines 18-25.
In claim 8, the claimed phrases “the isocyanate/water reaction” and “the isocyanate/polyol reaction” lack sufficient antecedent basis in the claims. There is no previous mention of an isocyanate/water reaction or an isocyanate/polyol reaction. For the purposes of examination, the Examiner is interpreting the claim 8 limitations to apply only in the case that an isocyanate/water reaction is present and/or in the case that an isocyanate/polyol reaction is present.
In claim 9, the phrase “which is held available in one component or in two components” is confusing. A composition cannot exist as a composition when it is held in two components, i.e., when its components are not yet completely mixed. In other words, if the claimed compound (A) is kept separate from the other compounds to generate a “two component” system, the claim 1 composition is not yet formulated, given the component (A) is missing from the whole. Thus, confusion arises. For the purposes of examination, the Examiner is interpreting the claim 9 limitations to refer to how the composition is made, i.e., by mixing all the components together into a single mixture or by combining two previously held separate components together.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed 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 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.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Emmons et al. (US-4180645-A) (hereinafter referred to as “Emmons”), or, in the alternative, under 35 U.S.C 103 as obvious over Emmons in further view of Gupta (US-20050148678-A1) (hereinafter referred to as “Gupta”).
Regarding claims 1, 4, and 7, Emmons teaches a coating composition (see Emmons at col. 2, lines 41-43, teaching a coating composition) comprising
(A) an isocyanate compound having ≥2 -NCO groups (see Emmons at col. 2, lines 41-45, teaching the coating composition as containing an organic polyisocyanate; a polyisocyanate necessarily contains at least two -NCO groups);
(B) an isocyanate-reactive compound having ≥2 isocyanate-reactive groups, wherein the isocyanate-reactive compound (B) is a polyol (regarding claim 4) (see Emmons at col. 2, lines 54-64, teaching the coating composition as further comprising an organic compound having a plurality of groups containing a reactive hydrogen atom; also see Emmons at col. 5, lines 37-41, teaching the groups containing a reactive hydrogen may include -OH groups; thus, Emmons reasonably teaches their composition may contain a polyol, i.e., a compound having at least two -OH groups; also see Example 1 of Emmons at col. 12, teaching an example composition containing a polyester polyol; accordingly, Emmons reasonably teaches their composition may include a polyol in their composition; a polyol contains ≥2 -OH groups, which are isocyanate-reactive groups);
(C) a reactive diluent having no isocyanate-reactive groups and being selected from acrylates, methacrylates and mixtures thereof (see Emmons at col. 2, lines 47-50, teaching their composition may contain dicyclopentenyl methacrylate as a non-volatile reactive liquid monomer);
(D) a carbon dioxide scavenger if the reaction of (A) and (B) liberates carbon dioxide (Emmons does not necessitate the presence of water in their composition; accordingly, it necessarily follows that CO2 is not liberated from the reaction of (A) and (B), given water is not present; thus, the carbon dioxide scavenger is not necessitated to be present);
(E) an autooxidation catalyst, wherein the autooxidation catalyst (E) is selected from transition metal compounds, wherein the transition metal is selected from Mn, Fe and Cu (see Emmons at col. 2, lines 51-53, teaching the coating composition to contain a polyvalent metal-containing complex or salt that catalyzes the curing of (A) and (B); also see Emmons at col. 10, lines 48-52, teaching the catalyst may be a drier that catalyzes oxidative curing, and can include an iron, manganese, or copper compound; also see Emmons at col. 11, lines 33-58, teaching the drier may be used together with the polyisocyanate and the reactive hydrogen-containing compound; also see Emmons at Abstract, teaching the coating composition to be autooxidizable; also see Example 1 of Emmons at col. 12, teaching an example composition containing an oxidative catalyst); and
(F) optionally further catalysts and additives (given such components are optional, Emmons necessarily teaches such a limitation).
In the alternative that residual amounts of water may be present or that the reaction of Emmons does in fact generate carbon dioxide, it is well-known to include a carbon dioxide scavenger, such as calcium oxide, in the context of isocyanate reactions to reduce foaming (see Gupta at para. 0010).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a carbon dioxide scavenger such as calcium oxide, like that taught by Gupta, in the composition of Emmons in order to reduce foaming (see Gupta at para. 0010).
Regarding claims 2-3, see Emmons at col. 4, lines 18-19, teaching 4,4'-diphenylmethane diisocyanate as a suitable polyisocyanate; 4,4'-diphenylmethane diisocyanate is an aromatic diisocyanate, and corresponds to the claimed “monomeric MDI.”
Regarding claim 5, see Emmons at col. 2, lines 47-50, teaching their composition may contain dicyclopentenyl methacrylate as a non-volatile reactive liquid monomer; dicyclopentenyl methacrylate is a monofunctional methacrylic ester.
Regarding claim 6, see Example 9 of Emmons at col. 14, teaching an example composition containing 35 parts of dicyclopentenyl methacrylate (DCPMA) relative to a total composition content of 166.7 parts; accordingly, Emmons teaches Example 9 as containing about 21 wt% of DCPMA; thus, Emmons reasonably teaches via their example embodiments the inclusion of 21 wt% of DCPMA in their composition; this value falls within the claimed range.
Regarding claim 8, since the optional catalyst (F) is still claimed to be optional, Emmons necessarily reads on the claim.
Regarding claim 9, see Example 1 of Emmons at col. 12, lines 16-20, teaching the coating compositions as being prepared by mixing the components together; also see claim 1 of Emmons, teaching the composition as simply containing all of the components; accordingly, Emmons reasonably teaches their composition may be a simple one-component system, where all the materials are mixed together.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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