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
Claims 100-107 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/03/2025.
Claims 88-99 are under prosecution.
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 90, 96, 97, and 99 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 90 recites the limitation "aziridine groups" in the second line. There is insufficient antecedent basis for this limitation in the claim. It appears applicants intended for claim 90 to be dependent on claim 89, not claim 88. For the purpose of examination, claim 90 will be considered as dependent on claim 89.
Claims 96 and 97 recite the limitation that the primer-surface coating exhibits an adhesion of 4B or 5B determined according to ASTM D3359. It is unclear if this adhesion is determined (A) after the coating has been after pretreatment with each individual recited treatment (ex. fluid immersion, humidity exposure), or if the adhesion is determined (B) after a pretreatment with a sequence of the recited treatments. It is not immediately clear from the specification whether applicants intended to claim the adhesion after scenario (A) or (B).
Claim 99 recites the limitation “The primer-surfacer composition of claim 95" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 95 is drawn to a “primer-surfacer coating composition”. For the purpose of examination, claim 99 will be considered as drawn to a primer-surfacer coating.
Claim Rejections - 35 USC § 102
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 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.
Claim 88 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blum et al (US 2008/0090957 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].
Claim Rejections - 35 USC § 103
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.
Claims 89, 91, 95, and 99 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1).
The disclosure of Blum et al is described above and is applied here as such.
Regarding claims 89, 91, and 95: Blum teaches carbodiimides as suitable crosslinking resins [p. 0105]. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare the composition of Blum with a carbodiimide crosslinker. 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).
Claim 90 is 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).
The disclosure of Blum et al is described above and is applied here as such.
Blum teaches carbodiimides as suitable crosslinking resins [p. 0105]. 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).
Claims 93 and 94 are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al (US 2008/0090957 A1) 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 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 polycarbodiimide crosslinker [p. 0069, table 1]. Swarup teaches all fully cured compositions prepared with the polycarbodiimide crosslinker 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 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
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766