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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 8, “cured overlying polymeric layer” should read “cured polymeric layer”.
Appropriate correction is required.
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 1-4, 6-8, 10-11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hurley (US 2016/0208111 A1) in view of the evidence of Mechanical Rubber (Durometer Conversion Chart). It is noted that the disclosure of Mechanical Rubber is based on the document mailed 09/04/2024.
Regarding Claims 1, 3, and 15, Hurley discloses a coating system which includes a base coat, which comprises polyurethane binder and first particles, and a second coating, which comprises second particles (para 0007). The polyurethane binder may have a hardness of about Shore A50 (which according to the evidence of Mechanical Rubber is about Shore D12) to about Shore D70, with higher values (i.e. D35-D70) preferred for applications requiring higher wear resistance (para 0050). The first particles may comprise metals (such as nickel, zinc, or tin), alloys of metals, and metal oxides (para 0086), which correspond to the biocidal powder addition disclosed in the present specification (pg 18, lines 8-10). The second particles comprise hydrophobic moieties such as siloxanes (para 0095), which correspond to the claimed icephobic material addition according to the present specification (pg 17, line 16).
The second particles may be applied directly to the base coat, either before the base coat has dried or with a solvent that moistens the base coat, so that the second particles are incorporated into the base coat (paras 0160-0162). Therefore, the base coat would comprise the polyurethane binder (i.e. polymeric resin), the first particles (i.e. biocidal powder addition), and the second particles (i.e. icephobic material addition).
There is not a disclosure of the coating thickness, but the coating must comprise at least some particles larger than 25 microns (para 0104); therefore the coating thickness must be at least 25 microns.
The coating system is cured (para 0216).
There is not a specific disclosure of the shore hardness of the entire coating system. However, given the hardness of the polyurethane binder, which ranges from about Shore D12 to about Shore D70 (para 0050) and therefore may be substantially higher than the claimed Shore D-scale hardness of at least 20, the coating would be expected to have a hardness overlapping the claimed range.
Alternatively, since Hurley discloses high hardness (i.e. D35-D70) is preferred for applications requiring higher wear resistance (para 0050), it would be obvious to optimize the shore hardness of the composition, including to within the range claimed, to achieve desirable wear resistance.
In light of the overlap between the claimed cured polymeric layer and that disclosed by Hurley, it would have been obvious to one of ordinary skill in the art to produce a cured polymeric layer that is both disclosed by Hurley and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 2, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses the first particles (i.e. the biocidal powder addition) comprise about 0.01 to about 60 wt% of the composition (para 0089). Although there is no disclosure in Hurley of the amount of biocidal powder in vol.%, given that broad ranged claimed, i.e. at least 5 vol.%, and given that broad amount disclosed by Hurley, i.e. about 0.01 to 60 wt.%, it is clear that the amount of biocidal powder of Hurley would necessarily overlap that claimed.
Regarding Claim 4, Hurley discloses all the limitations of the present invention according to Claim 3 above. Hurley further discloses the first particles (i.e. the biocidal powder addition) have an average particle size of about 1-300 microns (para 0088).
Regarding Claim 6, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses the first particles (i.e. the biocidal powder addition) comprise about 0.01 to about 60 wt% of the composition (para 0089).
Hurley further discloses the second particles (i.e. icephobic material addition) impart hydrophobic properties (para 0095). While Hurley does not disclose the amount of second particles used, it would have been obvious to a person having ordinary skill in the art to optimize the amount of second particles, including to within the claimed range, to impart desired level of hydrophobic properties.
Regarding Claim 7, Hurley discloses all the limitations of the present invention according to Claim 1 above. While Hurley does not disclose the radius of no growth of the outer surface of the cured polymeric layer, since Hurley discloses cured coating as claimed, including first particles corresponding to the biocidal powder addition as claimed, including type, size, and amount of biocidal powder addition as claimed, the surface of the cured coating would necessarily have a radius of no growth as claimed.
Regarding Claim 8, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses the coatings are dried (para 0216) (i.e. any liquid components such as solvents are evaporated).
Alternatively, the solvents (i.e. liquid dispersants) disclosed by Hurley are disclosed as optional (para 0160) and there are no liquids required in the cured coating system. Therefore it would have been obvious to a person having ordinary skill in the art to produce the cured coating system, wherein it is free of liquids as claimed.
Regarding Claim 10, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses a primer disposed between a substrate and the base coat, wherein the primer may be epoxy or polyurethane primer and may be a one-part or two-part primer composition (i.e. cured chemical composition having different chemical composition than the base coat) (paras 0179-0180).
Regarding Claim 11, Hurley discloses all the limitations of the present invention according to Claim 10 above. Hurley further discloses the arithmetical mean roughness of the outer surface of the composite may be greater than about 1.2 microns (para 0029). While Hurley discloses surface roughness of about 1.2 microns and the present claims require a surface roughness of < 1 micron, given that “about” includes values slightly above and below that disclosed, “about 1.2 microns” would meet the claimed surface roughness.
Alternatively, the only deficiency of Hurley is that Hurley discloses surface roughness of about 1.2 microns, while the present claims require a surface roughness of < 1 micron.
It is apparent, however, that the instantly claimed surface roughness of < 1 micron and that taught by Hurley are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the surface roughness disclosed by Hurley and that disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the surface roughness disclosed in the present claims is but an obvious variant of the surface roughness disclosed in Hurley, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding Claim 12, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses the second particles (i.e. icephobic material addition) are particles (para 0098) (i.e. solids).
Further, while the second coating comprising the second particles may optionally comprise a solvent when integrated into the base coating (para 0160) the solvent is optional and there is no required liquid component. Therefore, it would be obvious to a person having ordinary skill in the art to use a second composition which comprises the solid second particles and is free of liquids.
Regarding Claims 13-14, Hurley discloses all the limitations of the present invention according to Claim 1 above. While Hurley does not disclose the sand erosion value or ice adhesion properties of the cured coating system, since Hurley disclosed a cured coating as claimed, including polyurethane binder as claimed which promotes high wear resistance (para 0050), biocidal first particles as claimed, and hydrophobic second particles as claimed which promote resistance to surface ice formation (para 0006), the cured coating of Hurley would necessarily have sand erosion value and ice adhesion properties as claimed.
Regarding Claim 16, Hurley discloses all the limitations of the present invention according to Claim 1 above. Hurley further discloses the second particles (i.e. icephobic material addition) impart hydrophobic properties (para 0095). While Hurley does not disclose the amount of second particles used, it would have been obvious to a person having ordinary skill in the art to optimize the amount of second particles, including to within the claimed range, to impart desired level of hydrophobic properties.
Regarding Claim 17, Hurley discloses a coating system which includes a base coat, which comprises polyurethane binder and first particles, and a second coating, which comprises second particles (para 0007). The first particles may comprise metals (such as nickel, zinc, or tin), alloys of metals, and metal oxides (para 0086), which correspond to the biocidal powder addition disclosed in the present specification (pg 18, lines 8-10). The second particles comprise hydrophobic moieties such as siloxanes (para 0095), which correspond to the claimed icephobic material addition according to the present specification (pg 17, line 16).
The second particles may be applied directly to the base coat, either before the base coat has dried or with a solvent that moistens the base coat, so that the second particles are incorporated into the base coat (paras 0160-0162). Therefore, the base coat would comprise the polyurethane binder (i.e. polymeric resin), the first particles (i.e. biocidal powder addition), and the second particles (i.e. icephobic material addition).
There is not a disclosure of the coating thickness, but the base coat and integrated second coating must comprise at least some particles larger than 25 microns (para 0104); therefore the coating thickness must be at least 25 microns.
Hurley further discloses a primer disposed between a substrate and the base coat, wherein the primer may be epoxy or polyurethane primer and may be a one-part or two-part primer composition (i.e. cured chemical composition having different chemical composition than the base coat) (paras 0179-0180).
The coating system is cured (para 0216).
In light of the overlap between the claimed cured polymeric layer and that disclosed by Hurley, it would have been obvious to one of ordinary skill in the art to produce a cured polymeric layer that is both disclosed by Hurley and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 18, Hurley discloses all the limitations of the present invention according to Claim 17 above. Hurley further discloses the arithmetical mean roughness of the outer surface of the composite may be greater than about 1.2 microns (para 0029). While Hurley discloses surface roughness of about 1.2 microns and the present claims require a surface roughness of < 1 micron, given that “about” includes values slightly above and below that disclosed, “about 1.2 microns” would meet the claimed surface roughness.
Alternatively, the only deficiency of Hurley is that Hurley discloses surface roughness of about 1.2 microns, while the present claims require a surface roughness of < 1 micron.
It is apparent, however, that the instantly claimed surface roughness of < 1 micron and that taught by Hurley are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the surface roughness disclosed by Hurley and that disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the surface roughness disclosed in the present claims is but an obvious variant of the surface roughness disclosed in Hurley, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding Claim 19, Hurley discloses all the limitations of the present invention according to Claim 17 above. Hurley further discloses the polyurethane binder may have a hardness of about Shore A50 (which according to the evidence of Mechanical Rubber is about Shore D12) to about Shore D70, with higher values (i.e. D35-D70) preferred for applications requiring higher wear resistance (para 0050).
There is not a specific disclosure of the shore hardness of the cured base coat with integrated second coating. However, given the hardness of the polyurethane binder, which ranges from about Shore D12 to about Shore D70 (para 0050) and therefore may be substantially higher than the claimed Shore D-scale hardness of at least 20, the coating would be expected to have a hardness overlapping the claimed range.
Alternatively, since Hurley discloses high hardness (i.e. D35-D70) is preferred for applications requiring higher wear resistance (para 0050), it would be obvious to optimize the shore hardness of the cured layer, including to within the range claimed, to achieve desirable wear resistance.
Regarding Claim 20, Hurley discloses all the limitations of the present invention according to Claim 17 above. While Hurley does not disclose the ice adhesion property of the cured coating system, since Hurley discloses a cured coating as claimed, including polyurethane binder as claimed, biocidal first particles as claimed, and hydrophobic second particles as claimed which promote resistance to surface ice formation (para 0006), the cured coating of Hurley would necessarily have ice adhesion property as claimed.
Allowable Subject Matter
Claims 5 and 9 are 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.
Regarding Claim 5, Hurley does not disclose the first particles (i.e. biocidal powder addition) being grain-refined as claimed.
Regarding Claim 9, Hurley does not disclose the base coat comprising epoxy resins as claimed. This is especially significant since the polyurethane resin of the base coat provides the hardness as claimed, and since Hurley is silent regarding use of additional polymers or additives in the base coat.
Response to Arguments
In light of applicant’s amendment filed 04/21/2026, the Claim Objections of record are withdrawn.
In light of the Terminal Disclaimers filed 04/21/2026, the Double Patenting rejections of record are withdrawn.
Applicant’s arguments, see Remarks, filed 04/21/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 USC 103 over Elsbernd in view of Lahiri, Couturier, and/or Nowak 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 in view of Hurley above.
Examiner notes that applicant argues the Shore Hardness disclosed by Elsbernd is only of the polymeric resin alone, and not of the entire cured composition including icephobic material of Elsbernd and biocidal powder of Lahiri.
Regarding the present rejection over Hurley, examiner acknowledges that there is not a specific disclosure of the shore hardness of the entire coating system. However, given the hardness of the polyurethane binder, which ranges from about Shore D12 to about Shore D70 and therefore may be substantially higher than the claimed Shore D-scale hardness of at least 20, the coating would be expected to have a hardness overlapping the claimed range.
Alternatively, since Hurley discloses high hardness (i.e. D35-D70) is preferred for applications requiring higher wear resistance, it would be obvious to optimize the shore hardness of the composition, including to within the range claimed, to achieve desirable wear resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
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