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 .
Claim Status
Claims 88-107 are pending in this application, with claims 100-107 previously withdrawn in response to a restriction requirement. Claims 88, 89, 95, 99, 100 and 101 are amended, and no claims are canceled or added.
Response to Arguments
Applicant has overcome the rejections of claims 90, 96, 97, and 99 under 35 U.S.C. 112(b). The rejections(s) have been withdrawn.
Applicant’s arguments, see p. 7-9, filed 05/08/2026, with respect to the rejection(s) of claim(s) 88 under 35 U.S.C. § 102(a)(1) over Blum et al (US 2008/0090957 A1) 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 Therefore, the rejection has been withdrawn.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 under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in further view of Okamatsu et al (US 2009/0286925 A1).
Applicant's arguments filed 05/08/2026 regarding the rejection of claim 95 under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in further view of Okamatsu et al (US 2009/0286925 A1) have been fully considered but they are not persuasive.
“In other words, the Office Action expressly acknowledges that Blum does not disclose aziridine crosslinkers, and instead relies on Okamatsu. Applicants respectfully submit that neither Blum nor Okamatsu, alone or in combination, teach or suggest the composition of amended independent claims 88, 95, or 100.
Blum relates to automotive aqueous base-coat compositions used in the automotive context, the chemistry of which is dependent on the specific crosslinkers of amino/melamine resins, blocked polyisocyanates, and carbodiimides. These crosslinkers are not simply optional or incidental in Blum; rather, they are fundamental to the coating architecture and curing mechanism disclosed therein. Importantly, Blum's working examples uniformly employ these specific crosslinkers, and the performance attributes relied upon by Blum, such as film formation, adhesion, durability, and processability, are achieved in reliance on those chemistries. Blum provides no disclosure, suggestion, or experimental indication that its compositions could be modified generally, much less with an aziridine crosslinkers to achieve any desirable technical effect.”
The examiner agrees that Blum does not directly disclose the use of aziridine crosslinkers. However, Blum teaches examples of crosslinkers include the genus of amine resins, wherein aziridine crosslinkers are a species [p. 0103]. Blum further teaches amino crosslinker resins are used with preference [p. 0108]. Blum provides a list of examples of amine crosslinkers, however Blum does not particularly limit the amine crosslinking species [p. 0107]
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
“Okamatsu, by contrast, relates to the stabilization of water-based polyurethane emulsions, and specifically to the use of controlled carboxyl content and high-shear emulsification to achieve stable polyurethane particles in water. Although Okamatsu generically discusses oxazoline, carbodiimide, and aziridine groups as possible crosslinking chemistries, only oxazoline-based crosslinkers as preferred/supported and Okamatsu repeatedly ties performance improvements to emulsion structure, shear conditions, and urethane stoichiometry rather than crosslinker selection.”
Okamatsu teaches the urethane emulsion of the invention may also include, if necessary, a crosslinking agent and/or additive having two or more groups of at least one type selected from among oxazoline, carbodiimide and aziridine groups [p. 0095]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
“Applicants respectfully assert that, even if Okamatsu were deemed to support aziridine crosslinkers, which applicants do not concede, such crosslinkers would be inoperable in the compositions of Blum. Blum relates to automotive coatings comprising multiple interacting binder chemistries, including carboxyl-functional polyurethane dispersions, carboxyl-functional acrylic copolymers, and polyol components, where curing behavior and coating performance depend on the specific crosslinkers disclosed and exemplified therein. Asserting that one could modify Blum's numerous preferred crosslinker embodiments to employ aziridine chemistry, based solely on a non-analogous polyurethane emulsion reference, reflects impermissible hindsight bias and disregards the chemistry upon which Blum's formulations are based. Such hindsight reasoning cannot properly support a rejection under 35 U.S.C. § 103.”
In response to applicant's argument that Okamatsu is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Blum discloses an aqueous primer-surfacer precursor composition comprising a carboxyl functional polyurethane dispersion [example 1]. Blum teaches amine crosslinkers are used with preference [p. 0105]. Okamatsu teaches an aqueous coating composition comprising a carboxy functionalized urethane prepolymer and a neutralizing agent [p. 0011]. Okamatsu teaches the crosslinking agent is preferably a molecule having two or more groups of at least one type selected from oxazoline, carbodiimide, and aziridine [p. 0098]. As Okamatsdu and Blum are both directed towards compositions comprising carboxyl functional polyurethane dispersion and crosslinking species, the examiner respectfully disagrees with applicants assertion of non-analogous art.
Furthermore, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 88, 89, 91, 95, and 99 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in further view of Okamatsu et al (US 2009/0286925 A1).
Blum exemplifies an aqueous primer-surfacer precursor composition comprising [example 1, p. 0173-0175]:
(A2) a carboxyl functional polyurethane dispersion, Bayhydrol XP 621 [p. 0166];
(A1) a carboxyl-functional polyacrylate dispersion, Bayhydrol A 145, having an acid number of 10 mg KOG/g [p. 0165];
(B2) crosslinker, Cymel 327 [p. 0170]; and
(D) a hydroxy-functional polyester, Bayhydrol D270 [p. 0172].
Blum teaches amine crosslinkers are used with preference, however, Blum is silent with respect to aziridine crosslinkers specifically[p. 0108].
Okamatsu teaches an aqueous coating composition comprising a carboxy functionalized urethane prepolymer and a neutralizing agent [p. 0011]. Okamatsu teaches crosslinking agents may be included in the urethane emulsion [p. 0096]. Okamatsu teaches the crosslinking agent is preferably a molecule having two or more groups of at least one type selected from oxazoline, carbodiimide, and aziridine [p. 0098].
Okamatsu further teaches the amount of crosslinking agent, expressed as the molar ratio of the carboxylate present in the carboxylate-containing containing urethane prepolymer to the sum of the oxazoline groups, carbodiimide groups and aziridine groups present in the crosslinking agent, is more preferably between 1.0/0.8 and 1.0/1.2. At a molar ratio within the above range, the film hardness-enhancing enhancing effect by crosslinking is large, enabling a cured product having an excellent water resistance to be obtained. In addition, the storage stability is also excellent [p. 0107].
In light of this, it would be obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Blum with a molar ratio of carboxylate groups to aziridine groups between 1.0/0.8 and 1.0/1.2 as the general teachings of Blum are open to aziridine crosslinkers and Okamatsu teaches at this ratio of reactive groups enhances the films hardness and water resistance. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Blum teaches the coating composition may comprise 5% to 40% by weight of at least one crosslinker [p. 0123; 0143]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 99 limits the primer-surfacer coating of claim 95 to a two-part composition that forms a two-part primer surfacer system. As claim 99 defines the primer-surfacer coating by how it was made, claim 99 is considered a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the product implied by the steps. See MPEP 2113. In the present case, the recited steps imply a primer-surfacer coating. Blum teaches all components of the previously recited primer-surfacer coating. 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) (see MPEP § 2113).
Claims 93 and 94 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in view of Okamatsu et al (US 2009/0286925 A1) and in further view of Gessner et al (US 6437036 B1).
The disclosure of Blum et al is described above and is applied here as such.
Blum teaches the aqueous coating composition provides anti-stone chip properties [abstract]. Blum teaches the volatile components evaporate from the composition during drying and leave the film tack-free [p. 0112]. Blum exemplifies compositions having a solids content of 30.6% [p. 0179]. However, Blum is silent with respect to the volatile organic content of the composition.
Gessner teaches aqueous primer composition that includes a polyurethane polymer, an acrylic polymer, and a crosslinking component [abstract]. Gessner teaches it is desirable to have a provide a primer composition for improved resistance to stone chipping that is formulated with a very low content of volatile organic solvents [c. 2, ll. 9-15]. Gessner teaches the waterborne primer composition is prepared as a solvent free or “substantially solvent free” dispersion, wherein “substantially solvent free means that the dispersion has a volatile organic content of less than 5% by weight [c. 7, ll. 59-65]. Gessner teaches the composition most preferably has a volatile organic content of less than 0.7 lbs/gal (83 g/L) [c. 87 ll. 42-65]. Gessner further exemplifies a composition having a volatile organic content of 0.24 pounds per gallon (28 g/L), having a nonvolatile content of 42% by weight [c. 10, ll. 28-31].
In light of this, a skilled artisan would reasonably expect embodiments of the aqueous primer of Blum to have a VOC of less than 100 g/L as Gessner teaches similar aqueous primer compositions have a VOC of less than 83 g/L . Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed that embodiments of Blum were are obviously capable of satisfying the claimed VOC of less than 100 g/L. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 96 and 97 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in view of Okamatsu et al (US 2009/0286925 A1) and in further view of Swarup (US 2014/0242281 A1).
The disclosure of Blum et al is described above and is applied here as such.
Blum teaches the coatings display excellent adhesion and very good resistances to water exposure [p. 0193]. Blum is silent with respect to the adhesion of the coating as claimed in claims 96 and 97.
Swarup prepares a coating cured coating from a composition comprising a urethane acrylic latex, a urethane diol, and a crosslinker [p. 0069, table 1]. Swarup teaches all fully cured compositions have an adhesion of 5 according to the ASTM D3359 adhesion test [table 2].
In light of this, a skilled artisan would reasonably predict embodiments of Blum to satisfy the instantly claimed properties as Swarup teaches a related composition that, when cured, has an adhesion of 5, and the composition of Blum satisfies all the chemical and material limitations of the claimed composition. Therefore, it would be obvious to one having ordinary skill in the art at the time the invention was filed that embodiments of Blum are obviously capable of satisfying the claimed properties.
Claims 98 is rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) in view of Okamatsu et al (US 2009/0286925 A1) and in further view of Goscha (US 2010/0092671 A1).
The disclosure of Blum et al is described above and is applied here as such.
Blum exemplifies preparing a coating having a thickness of 55 micron. However, Blum is silent with respect to any limitations regarding coating thickness.
Goscha teaches coating compositions as hybrid systems, which are an admixture of two types of resins. Goscha teaches a polyurethane/acrylic hybrid system, with an external crosslinker such as a polycarbodiimide or an aziridine [p. 0109]. Goscha further teaches a polyester polyols may be used in the coating compositions [p. 0110]. Goscha teaches the coating compositions can be applied to a substrate using a roller, a spray, a brush, or other types of applicators [p. 0071]. Goscha teaches the coating can have a thickness between about 0.002 inch (2 mils) and about 0.1 inch (100 mils). Goscha teaches providing a coating thickness in this range reduces the likelihood of thin or uncoated substrate portions [p. 0071].
In light of this, a skilled artisan would reasonably expect embodiments of Blum to be obviously capable of forming coatings having a thickness in the claimed range, as Goscha teaches a similar composition capable of forming a coating that that embraces the claimed thickness range, and Blum et al satisfies all claimed chemical and material limitations. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the composition of Blum to prepare a coating having a thickness from 5 mils to 50 mils as Goscha teaches coating thickness in this range reduces the likelihood of thin or uncoated substrate portions. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 92 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Blum (US 2008/0090957 A1) is the closest prior art of record. Bloom teaches the paints and coatings prepared from the coating compositions of the invention may where appropriate comprise further binders, reactive diluents and polymers having unsaturated groups which can be cured by means of UV light, organic and/or inorganic pigments, carbon blacks, fillers, further solvents, thickeners, Theological additives, organic or inorganic nanoparticles based for example on silicon, zinc, titanium, barium, calcium, magnesium, etc., additives for improving pigment wetting, for defoaming, for improving flow, gloss or adhesion, for preventing or reducing yellowing or the harmful effects of UV light [p. 0163]. However, Blum, nor any prior art of record located by the examiner, alone or in combination, teaches or suggests the components and amounts there of that are recited in claim 92.
Conclusion
THIS ACTION IS MADE FINAL. 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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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