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 .
Preliminary amendment filed 4/1/2024 is made of record. Claims 1-9 are amended; and claims 10-11 are added. Accordingly, claims 1-11 are currently pending in the application.
Claim Objections
Claims 3-6 and 8-11 are objected to because of the following informalities:
Claim 3 recites “a concentration of 0.2 to 5 Wt% on solid resin between 0.5 to 3.5 Wt% on solid resin” (lines 2-3). Applicant is advised to rephrase it as “a concentration of 0.2 to 5 wt% based on solid resin between 0.5 to 3.5 wt% based on solid resin”.
Claim 4 recites “in a concentration between 0.3 and 5 weight% on solid resin, and in a weight ratio acid/amine is between 0.1/1 to 5/1” (lines 2-3). Applicant is advised to rephrase it as “in a concentration between 0.3 and 5 weight% based on solid resin, and in a weight ratio for said organic acid/said sterically hindered primary hydroxylamine of between 0.1/1 to 5/1”.
Claim 5 recites “wherein the sterically hindered primary hydroxylamine of structure 1 wherein R1 is CH3,CH2CH3,CH(CH3)2, CH2CH(CH3)2, alkyl, cycloalkyl, aryl, and R2 is alkyl, cycloalkyl, aryl, hydroxy alkyl,CH2OH, CH2CH2OH or RI and R2 could be linked in a cyclic structure, s cyclohexane ring” (lines 1-4). Applicant is advised to rephrase it as “wherein in the sterically hindered primary hydroxylamine of structure 1, R1 is CH3, CH2CH3, CH(CH3)2, CH2CH(CH3)2, alkyl, cycloalkyl, aryl, and R2 is alkyl, cycloalkyl, aryl, hydroxy alkyl,CH2OH, CH2CH2OH or R1 and R2 could be linked in a cyclic structure as cyclohexane ring”.
Claim 6 recites “structure 1 is hydroxylamine is 2-amino-2-methylpropan-1-ol OR 2-amino-2-ethyl-1,3-propanediol” (lines 2-3). Applicant is advised to rephrase it as “structure 1 is hydroxylamine, 2-amino-2-methylpropan-1-ol or 2-amino-2-ethyl-1,3-propanediol”.
Claims 8 (line 2) and 10 (line 2) recite “and a combination of them”. For consistency within the claims, applicant s advised to rephrase it as “or combination thereof”.
Claims 9 (lines 1-3) and 11 (lines 1-2) recites “containing an amino-group-substituted silane compound, an epoxy-group substituted silane compound, or a combination thereof” and should rephrase it as “further containing an amino-group-substituted silane compound, an epoxy-group substituted silane compound, or a combination thereof”
Appropriate correction and/or clarification are required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-4 and 7-9 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.
Claim 1 recites “sterically hindered primary hydroxylamine of structure 1
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(lines 5-6). There is no mention of what R1 and R2 represent. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. Examiner interprets R1 and R2 to be those listed in claim 5.
Claims 2-4 and 7-9 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1.
Claim 2 recites “polymer contains vinyl esters of carboxylic acids with C2 to C13 carbons” (lines 1-2). It is not clear if the polymer is based on repeating units derived from vinyl esters or if these repeat units are in addition to the silicon containing group. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. Examiner interprets the recitation to mean “further comprising repeat units derived from vinyl esters of carboxylic acids with C2 to C13 carbons” (see examples in present application).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “0.2 to 5 Wt%”, and the claim also recites 0.5 to 3.5 Wt%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 recites “sterically hindered primary hydroxylamine is structure 1 is hydroxylamine” and fails to further limit the scope of independent claim 1 on which it is dependent. Specifically, while it appears to narrow the scope by including species of the sterically hindered primary hydroxylamine (such as 2-amino-2-methylpropan-1-ol OR 2-amino-2-ethyl-1,3-prapanediol), one of the species “hydroxylamine” does not have to be sterically hindered primary hydroxylamine. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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, 3-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai et al (US 6,261,642 B1).
Regarding claims 1 and 5-6, Nagai et al disclose high solids coating composition comprising a copolymer prepared by polymerizing monomer components comprising vinyltrimethoxysilane and/or vinyltriethoxysilane and a curing catalyst (abstract). It is noted that hydrolysable alkoxy groups such as methoxy and ethoxy can be crosslinked by the formation of siloxane bond (i.e., reads on organic polymer having silicon containing group which can be crosslinked with the formation of a siloxane bond in present claim 1) under appropriate conditions. The thermosetting coating composition is usually used in the form of an organic solvent type coating composition (col. 7, lines 49-51) which reads on the solvent borne coating composition in present claim 1. See examples, wherein the composition comprises copolymer A and a curing catalyst DDBSA/AMP (Table 1) which is a neutralized product of dodecylbenzene sulfonic acid and 2-aminomethyl propanol (col. 13, lines 46-66) . The coating composition is curable is implicit in the use of curing catalyst to cure the composition (i.e., reads on one component curable coating composition in present claim 1).
Nagai et al fail to disclose as in present claims a curable composition comprising sterically hindered primary amine of structure 1 or a combination of sterically hindered primary amine of structure 1 with an organic acid.
However, Nagai et al in the general disclosure teach that catalysts for curing the composition by hydrolysis and condensation of methoxysilyl or ethoxysilyl of the copolymer A include acids such as dodecylbenzene sulfonic acid (i.e., reads on the organic acid in present claim 1) and amines such as 2-aminomethyl propanol (i.e., reads on sterically hindered primary hydroxylamine of structure 1 in present claim 1 and present claim 5 wherein R1 is CH3 and R2 is alkyl in present claim 5, and 2-amino-2-methylpropan-1-ol in present claim 6) and neutralized products of the acid with amine (col. 6, lines 42-55). Therefore, in light of the teachings in general disclosure of Nagai et al, it would have been obvious to one skilled in art prior to the filing of present application, to use amines such as 2-aminomethyl propanol alone or in combination with an organic acid such as dodecylbenzene sulfonic acid, as curing catalyst, in the exemplary embodiments, absent evidence to the contrary.
Regarding claims 3 and 4, 12a to 12c above, see example 1, wherein the composition comprises a total of 100 parts by weight of resins (i.e., copolymer A and hydroxyl-containing resin B) and 2 parts by weight of curing catalyst (Table 1). DDBSA is a neutralized product of dodecyl benzene sulfonic acid with an equivalent amount of 2-aminomethyl propanol (col. 13, lines 64-66) which reads on the concentration of sterically hindered hydroxylamine of structure I in present claims 3 and 4, and the ratio of acid/amine in present claim 4.
Regarding claims 7-8 and 10, it is the Office’s position inclusion of organic acid is in the alternative and therefore not required.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Heymans et al (EP 3 363 827 A1) in view of Nagai et al (US 6,261,642 B1).
Regarding claims 1 and 5-6, Heymans et al disclose crosslinkable copolymers of vinyl branched ester and vinyl silane. The curing is optimized in the presence of appropriate catalyst as one pack system (abstract) which reads on one-component curable coating composition in present claim 1. See example 1, wherein the polymer is formed from a monomer mixture comprising vinyltrimethoxysilane and methacrylopropyl trimethoxysilane (i.e., reads on organic polymer having silicon-containing group which can be crosslinked by the formation of a siloxane bond in present claim 1 under appropriate conditions) and comprises butyl acetate as a solvent (Table 1, page 4) which reads on solvent borne coating composition in present claim 1. The catalysts can be selected from acids and amines (paragraph 0015).
Heymans et al are silent with respect to sterically hindered primary amine of structure 1 or a combination of sterically hindered primary amine of structure 1 with an organic acid,
However, Nagai et al in the same field of endeavor teach catalysts for curing its composition by hydrolysis and condensation of methoxysilyl or ethoxysilyl of the copolymer A which include acids such as dodecylbenzene sulfonic acid (i.e., reads on the organic acid in present claim 1) and amines such as 2-aminomethyl propanol (i.e., reads on sterically hindered primary hydroxylamine of structure 1 in present claim 1, present claim 5 wherein R1 is CH3 and R2 is alkyl in present claim 5, and 2-amino-2-methyl propan-1-ol in present claim 6) and neutralized products of the acid with amine (col. 6, lines 42-55). Therefore, in light of the teachings in Nagai et al and given that Heymans et al contemplate use of amines and acids as catalysts, it would have been obvious to one skilled in art prior to the filing of present application, to use amines such as 2-aminomethyl propanol alone or in combination with an organic acid such as dodecylbenzene sulfonic acid, of Nagai et al, as curing catalyst, in curable composition, of Heymans et al, absent evidence to the contrary.
Regarding claim 2, see example 1, of Heymans et al, wherein the organic polymer is formed from a monomer mixture comprising Veova 10 (Table 1). It is noted that Veova 10 is a vinyl ester of carboxylic aid having 9 carbon atoms (i.e., reads on vinyl ester in present claim 2).
Regarding claims 3-4, see example 1, of Nagai et al, wherein the composition comprises a total of 100 parts by weight of resins (i.e., copolymer A and hydroxyl-containing resin B) and 2 parts by weight of curing catalyst (Table 1). DDBSA is a neutralized product of dodecyl benzene sulfonic acid with an equivalent amount of 2-aminomethyl propanol (col. 13, lines 64-66) which reads on the concentration of sterically hindered hydroxylamine of structure I in present claims 3 and 4, and the ratio of acid/amine in present claim 4. Therefore, in light of the teachings in Nagai et al, it would have been obvious to one skilled in art prior to the filing of present application to include curing catalyst comprising 2-aminomethyl propanol and/or a combination of 2-amino methyl propanol and dodecyl benzene sulfonic acid in presently claimed concentration for hydroxylamine and ratio for acid/amine, in the composition, of Heymans et al, absent evidence to the contrary.
Regarding claims 7-8 and 10, it is the Office’s position inclusion of organic acid is in the alternative and therefore not required.
Regarding claims 9 and 11, Heymans et al teach that catalyst for the coating formulation can include 3-aminopropyltrimethoxysilane (paragraph 0015) which reads on amino-group substituted silane compound in present claims 9 and 11.
Claims 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai et al (US 6,261,642 B1) or Heymans et al (EP 3 363 827 A1) in view of Nagai et al (US 6,261,642 B1), independently, in view of Okamoto et al (US 2006/0128919 A1).
The discussion with respect to Nagai et al and Heymans et al in view of Nagai et al in paragraphs 12 and 13, respectively, are incorporated here by reference.
Nagai et al and Heymans et al in view of Nagai et al, independently, are silent with respect to species of organic acid of present claims.
However, Okamoto et al in the same field of endeavor teach a curable composition including an organic polymer having one or more silicon containing functional groups capable of cross-linking by forming siloxane bonds in which the one or more silicon-containing functional groups capable of cross-linking by forming siloxane bonds are silicon containing functional groups each having 3 or more hydrolysable groups on one or more silicon atoms thereof (abstract). In a preferred embodiments non-tin catalyst is a catalyst which contains a carboxylic acid and an amine compound (paragraph 0045). In view of availability, curability and workability, preferable are 2-ethyl-hexanoinc acid and neodecanoic acid (paragraph 0242) which reads on alkyl carboxylic acid in present claim 7 and neodecanoic acid in present claims 8 and 10. Therefore, in light of the teachings in Okamoto et al, it would have been obvious to one skilled in art prior to the filing of present application, to include the carboxylic acid, of Okamoto et al, in the curable composition, of Nagai et al or Heymans et al in view of Nagai et al, independently, as a catalyst component, for above mentioned advantages.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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