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 .
Specification
The abstract of the disclosure is objected to because: the abstract should be in a narrative form describing the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
In reviewing the specification in order to determine the scope of the instant invention and whether the claims are enabled by the instant disclosure, it was noted that the specification (as filed) recites on pages 13-14 that the polyol may be a compound represented by Chemical Formula 3 or HO-R’-OH, wherein “R’ is a substituted or unsubstituted C1 to C10 alkyl group, a substituted or unsubstituted C6 to C20 aryl group, or a substituted or unsubstituted C5 to C20 heteroaryl group” (emphasis added). The specification also recites, “Specifically, the polyol may be polypropylene glycol” and that the “polyol may have a number average molecular weight of 400 to 1,000 g/mol” (see page 14, lines 2-5), with all of the working examples utilizing polypropylene glycol (PPG) having a number molecular weight of 425 g/mol (Examples, see particularly pages 22-23 and Table 1). However, it is noted that polypropylene glycol (PPG), in general, has a chemical formula of HO(C3H6O)nH, or C3nH6n+2On+1, wherein n is an integer, such that with the exception of n=1 (i.e., propylene glycol), the portion of the PPG compound between the two terminal OH groups includes oxygen atom(s) (e.g., a polyether or oxypropylene chain not an alkyl chain); and given that the PPG utilized in all of the working examples has a number molecular weight of 425 g/mol and thus a chemical formula of HO(C3H6O)7H with n=7, even if one was to consider a “substituted” alkyl group as encompassing an oxygen-containing alkyl group or alkoxy group (which the Examiner does not contend), the PPG of all of the working examples, which has 21 carbon atoms if you include the CH3 side chain or 14 carbon atoms if you consider the CH3 side chain as a “substituent”, does not meet the limitations of Chemical Formula 3 as defined by the Applicant (which is also recited in claim 5). Hence, given the above and that PPG is the only exemplified polyol recited throughout the specification, clarification is requested with respect to the polyol compound represented by Chemical Formula 3.
Claim Objections
Claims 1, 4-5, and 13-14 are objected to because of the following informalities: claims 1, 4, 5, 13, and 14 include square brackets for the Chemical Formula # labels, however, given that square brackets are reserved for editing purposes, Applicant should refrain from using square brackets in the claims. Appropriate correction is 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.
Claims 9-12 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. Claims 9-12 recite the limitation "the mixed resin" in each line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, it is noted that when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (CN108610934A, please refer to the attached machine translation for the below cited sections). Liu discloses a polyurethane waterproof coating composition comprising: (A) talcum powder, light calcium carbonate powder, or a 1:1 mass ratio mixture thereof, treated with a coupling agent (reading upon the claimed “inorganic pigment” of instant claim 1 and particularly as in instant claim 7); and (B) a polyurethane resin produced by reacting polyether polyol with diphenyl methane diisocyanate (MDI, an aromatic diisocyanate), particularly in one embodiment, a mixture of 4,4’-MDI and 2,4’-MDI in a molar/weight ratio of 1:1, 1:2, or 2:1 (reading upon the claimed polyurethane resin formed by reacting an aromatic diisocyanate of Chemical Formula 1 as in instant claims 1-3 and particularly Chemical Formula 2 as in instant claim 4 in light of the 2,4’-MDI); wherein the mixing ratio of (A) to (B) is 1:1 (Entire document, particularly Paragraphs 0012-0016, 0018-0019, 0024, and 0039-0040), falling within the claimed range of 20 to 150 parts by weight of inorganic pigment with respect to 100 parts by weight of the polyurethane resin as in instant claim 1. Hence, Liu discloses a coating composition comprising a polyurethane resin and an inorganic pigment, particularly talc and calcium carbonate as in instant claim 7, wherein the inorganic pigment is contained in a weight ratio of 1:1 with respect to the polyurethane resin, i.e., an amount of 100 parts by weight with respect to 100 parts by weight of the polyurethane resin, falling within the claimed range as recited in instant claim 1, and the polyurethane resin is formed by reacting a polyol with 2,4’-MDI, an aromatic diisocyanate monomer represented by the claimed Chemical Formula 1, particularly represented by the claimed Chemical Formula 2, as in instant claims 1-4, and given that the instantly claimed invention as recited does not exclude the incorporation of additional aromatic diisocyanate monomers that are not represented by the claimed Chemical Formula 1, as in the case of 4,4’-MDI utilized in admixture with the 2,4’-MDI in the examples of Liu, and that the claimed “electrical steel sheet adhesive” constitutes intended end use of the coating composition wherein the coating composition disclosed by Liu is capable of the same intended end use, the Examiner takes the position that Liu anticipates instant claims 1-4 and 7.
With respect to instant claim 8, as noted above, Liu discloses that the talc and calcium carbonate powders are treated with a coupling agent thereby anticipating instant claim 8.
Claims 1-5, 7-8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikebe (US2009/0005492A1). Ikebe discloses a surface finishing material that is a two-component ambient temperature curable polyurethane coating composition that upon mixing of the two components, or A and B sides, ensures a given usable operating time and suppressed adhesion of the surface after curing by reacting an A-side composed mainly of a urethane prepolymer having terminal isocyanate groups and a B-side composed mainly of a polyol containing a crosslinker and a filler (Abstract, Paragraphs 0011-0012 and 0043), wherein the urethane prepolymer is the reaction product of a polyisocyanate composed of at least 50% by weight 2,4’-MDI (thus a range of 50wt% to 100wt%) with a polyol (Paragraph 0012; as in instant claim 1 with 2,4’-MDI reading upon the instantly claimed aromatic diisocyanate having a chemical formula/structure as in instant claims 1-4). Ikebe discloses that the remaining less than 50% polyisocyanate used to produce the urethane prepolymer may be made up of 4,4’-MDI alone, or 4,4’-MDI with a very small amount of 2,2’-MDI as isomers of 2,4’-MDI, and that in some cases, an isocyanate other than the MDI type such as toluene diisocyanate (TDI) may be included (Paragraphs 0027-0028); but that preferably the polyisocyanate used to produce the urethane prepolymer of side-A contains 2,4’-MDI in an amount of from 70 to 98%, wherein “[w]hen the content of 2,4'-MDI is less than 50%, the reaction balance of 4,4'-MDI and 2,4'-MDI is bad, the surface to which the surface finishing material is applied is sticky after curing for a long time, adhesive force is left and workability is bad” and that “[p]articularly advantageous usable times, strength and suppression of residual adhesive force, are achieved by using 2,4'-MDI in amounts of from 80 to 98%, most preferably, of from 95 to 98%” wherein “[t]he more 2,4’-MDI present, the better is the effect” (Paragraphs 0026-0027), as evidenced by the working examples which utilize 2,4’-MDI in amounts ranging from 0% to 97% with 4,4’-MDI or in the case of one example, 80% of 2,4’-MDI with 20% of 2,4’-TDI to compare the properties of the resulting composition and cured coating and the effects of the 2,4’-MDI thereon (Examples, particularly Tables 1-13).
Ikebe discloses that the filler is preferably a filler containing an acid filler having a pH of less than 7, such as some clays like kaolin clay, silica, and the like, in a filler content of generally 25% or more of the total weight of the filler, with non-acid fillers that may be utilized in combination with the acid filler including calcium carbonate, barium sulfate, zeolite, talc, anhydrous gypsum (CaSO4), mica, and the like, alone or in combination (Paragraphs 0036-0038; reading upon the instantly claimed “inorganic pigment” as recited in instant claim 1 and particularly as in instant claim 7); wherein the total amount of filler(s) is 90% or less of the total weight of B-side, preferably 1 to 70% (Paragraph 0039). Ikebe discloses that the B-side may also optionally include a catalyst (as in instant claim 8), a coloring agent such as iron oxide or titanium oxide (also reading upon the claimed “inorganic pigment”), a moisture absorbent, a defoaming agent (also reads upon a “wetting agent” as in instant claim 8), a plasticizer, a stabilizer, a leveling agent, a modifier, or the like according to need in addition to the polyol, crosslinker, and filler as essential components (Paragraphs 0040-0042); and the A-side may also include one or more additives such as a plasticizer and/or a defoaming agent in addition to the urethane prepolymer (Paragraph 0033). Ikebe specifically discloses working examples utilizing 2,4’-MDI (as in instant claims 1-4) reacted with a polyol to produce the urethane prepolymer and thus the resulting polyurethane of the coating composition (reading upon the instantly claimed polyurethane resin “formed by reacting an aromatic diisocyanate monomer represented by…Chemical Formula 1 and a polyol”), wherein after mixing parts A and B, with part B including the inorganic filler/pigment as well as a crosslinking/curing agent, a curing catalyst, and other additives (as in instant claim 8), the content of inorganic filler/pigment of almost all of the working examples falls within the instantly claimed range of “20 to 150 parts by weight with respect to 100 parts by weight of the polyurethane resin”, whether as the urethane prepolymer of the A-side taken alone or the resulting polyurethane based upon the total weight of urethane prepolymer of the A-side and the polyol of the B-side (Examples, Tables 1-13, see particularly Examples 17-18 and 24-25 which utilize 97% of 2,4’-MDI as the polyisocyanate and calcium carbonate, as in instant claim 7, as inorganic filler in an amount as in instant claim 1); and given that the polyurethane coating composition of Ikebe, particularly as in the working examples, is capable of being utilized as an “electrical steel sheet adhesive coating composition”, the Examiner takes the position that Ikebe anticipates instant claims 1-4 and 7-8.
With respect to instant claim 5, Ikebe discloses that polyols suitable for production of the urethane prepolymer include those as recited in Paragraph 0030 such as polyether polyols, and particularly polyoxyalkylene polyols which are obtained by addition polymerization of a polyhydric alcohol such as ethylene glycol, propylene glycol, and 1,4-butanediol (as in instant claim 5), with preferred polyoxyalkylene polyols having a molecular weight of from 100 to 10000 and a functionality of from 2 to 3; while the polyol which is a major component of the B-side may be any of the polyols described as being useful for preparation of the urethane prepolymer (Paragraphs 0030 and 0034), and given that Ikebe specifically discloses examples wherein 1,4-butanediol is included in part B as a crosslinker (Paragraph 0035, Table 7), the Examiner takes the position that Ikebe discloses the claimed invention with sufficient specificity to anticipate instant claim 5.
With respect to instant claims 10-12, Ikebe discloses working examples comprising additives reading upon the instantly claimed “curing agent” (i.e., crosslinker), “curing catalyst” (i.e., catalyst), and “wetting agent” (i.e., FLOREN AC-1190 utilized by Ikebe as a “leveling agent”), respectively, in contents as instantly claimed (Examples, particularly Tables 5-13). Hence, the Examiner takes the position that Ikebe discloses the claimed invention with sufficient specificity to anticipate instant claims 10-12.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Ha (WO2022/139338A1, also printed as US2024/0301237A1, please refer to the US document as an English language equivalent of the WO document for the below cited sections). Ha discloses a polyurethane-coated electrical steel sheet and a laminate thereof formed by stacking a plurality of electrical steel sheets with a polyurethane coating layer positioned between the electrical steel sheets as shown in Figs. 1-2 and heat staking (as in instant claims 13-14); wherein the polyurethane coating is formed from a polyurethane coating composition comprising a polyurethane adhesive resin; organic and/or inorganic particles, such as silica (SiO2) or titania (TiO2) particles as utilized in the examples (reading upon the claimed “inorganic pigment” of instant claims 1, 7, and 13-14); and a bonding additive that is one or more selected from the group consisting of a coupling agent, a wetting agent, a curing agent, and a curing catalyst (as in instant claim 8; Entire document, particularly Abstract, Paragraphs 0007-0013, 0026, 0038-0040, and 0044-0045; and Examples). Ha discloses that the polyurethane is formed by reacting a diisocyanate monomer and a polyol, wherein the diisocyanate monomer may be an aromatic diisocyanate monomer having a Chemical Formula 1, reading upon the instantly claimed Chemical Formula 1 as in instant claims 1-4 and 13-14, and the polyol may be a polyol represented by Chemical Formula 6, reading upon the instantly claimed Chemical Formula 3 of instant claim 5 (Entire document, particularly Paragraphs 0049-0067); with various working examples utilizing 2,4’-MDI (reading upon the instantly claimed Chemical Formula 1, and particularly instantly claimed Chemical Formula 2, as in instant claims 1-4 and 13-14) reacted with a poly(propylene glycol) (PPG) having a number molecular weight of 425 g/mol as the polyol (e.g., as in the working examples of the instant specification).
More specifically, Ha discloses working examples, Examples 1-4 and Comparative Examples 1-2, comprising a polyurethane formed by reacting 40wt% of 2,4’-MDI as the aromatic diisocyanate of Chemical Formula 1, reading upon the instantly claimed aromatic diisocyanate of Chemical Formulae 1-2 of instant claims 1-4 and 13-14, with 60wt% of the above PPG as the polyol (as in instant claims 1 and 13-14; Paragraph 0105), reading upon the wt% ranges as recited in instant claim 6, and including, “based on 100 parts by weight of the bonding resin, 0.5 parts by weight of a silane coupling agent, 0.1 parts by weight of a silicone-based wetting agent, 1 part by weight of a dicyandiamide-based curing agent, and 0.5 parts by weight of an imidazole-based curing catalyst in the bonding resin” reading upon the instantly claimed “one or more” additives as recited in instant claim 8, in contents as recited in instant claims 9-12 (Paragraph 0104); with Example 2 further including SiO2 in a content of 17 “wt%, based on 100 wt of resin” which is slightly below the 20 parts by weight endpoint of the instantly claimed invention as well as below the 20wt% upper endpoint based on 100wt% of the entire coating layer as disclosed by Ha for the particles (Paragraph 0011, Claim 5), while Comparative Example 2 further contains 25 wt% of SiO2 “based on 100 wt of resin” (i.e., 25 parts by weight with respect to 100 parts by weight of resin) reading upon instantly claimed “inorganic pigment” of instant claims 1, 7, and 13-14, and falling within the instantly claimed “20 to 150 parts by weight with respect to 100 parts by weight of the polyurethane resin” for the amount of “inorganic pigment” as recited in instant claims 1 and 13-14, and given that Ha utilizes the polyurethane adhesive coating composition of Comparative Example 2 to produce an electrical steel sheet laminate as in instant claim 13 by a method as in instant claim 14 by coating and heat staking in order to test the properties thereof and compare to the inventive examples (Examples, and Paragraphs 0090-0114, Table 1), at least Comparative Example 2 of Ha anticipates instant claims 1-4 and 6-14. Further, given that Ha specifically discloses that the “sum c of organic particles, inorganic particles, or a combination thereof in the polyurethane coating layer is more than 0 wt % and 20 wt % or less based on 100 wt % of the entire coating layer” with the above data point at 17wt% SiO2 “based on 100 wt or resin” and discloses that the polyol may be a compound represented by the same chemical formula as recited in instant claim 5, the Examiner takes the position that in addition to Comparative Example 2 which clearly anticipates instant claims 1-4 and 6-14, Ha discloses the instantly claimed invention with sufficient specificity to anticipate instant claims 1-14.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
It is further noted that the applied reference has a common applicant and/or joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it ALSO constitutes prior art under 35 U.S.C. 102(a)(2). If a certified copy of an English language translation of said foreign priority application is submitted with a statement as noted above to perfect foreign priority, then the rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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.
Alternatively, claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ha, as applied to claims 1-14 above. The teachings of Ha are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to instant claim 5 for the reasons discussed in detail above wherein although the examples of Ha (including Comparative Example 2) utilize PPG as the polyol, which as discussed above does not meet the limitations of Chemical Formula 3 as recited in instant claim 5, Ha clearly teaches that the polyol may be represented by Chemical Formula 6 which is the same as the instantly claimed Chemical Formula 3; the Examiner alternatively takes the position that the instantly claimed invention as recited in instant claim 5 would have been obvious over the teachings of Ha given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/268806 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the electrical steel sheet comprising a polyurethane coating layer comprising inorganic particles and a polyurethane resin formed by reacting a diisocyanate monomer and a polyol, particularly an aromatic diisocyanate monomer as recited in copending claim 9, reads upon the “electrical steel sheet adhesive coating composition comprising: a polyurethane resin and an inorganic pigment…and the polyurethane resin is formed by reacting an aromatic diisocyanate monomer represented by…Chemical Formula 1 and a polyol” of instant claim 1, and particularly reads upon and/or encompasses the claimed aromatic diisocyanate monomer as recited in instant claims 1-4, and given the overlap in the content of the inorganic particles as recited in copending claim 9 of more than 0wt% and 20wt% or less based on 100 wt% of the entire coating layer (as recited in copending claim 1 from which copending claim 9 depends), with the claimed amount of 20 to 150 parts by weight with respect to 100 parts by weight of the polyurethane resin, the claimed invention as recited in instant claims 1-4 would have been obvious over copending claim 9 given that it is well established that a prima facie case of obviousness exists where claimed ranges overlap. Further, with respect to instant claim 7, given that at least silica and titania are an obvious species of inorganic particles/pigments in the art, instant claim 7 would have been obvious over copending claim 9 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787