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
Applicant’s election without traverse of claims 1, 3, 6, 11, 13, 15, 19, 20, 24, 28, 30, 32, and 34 in the reply filed on 05 May 2026 is acknowledged.
Claim 24 was not recited in the restriction requirement, and as it depends from the elected claim and does not recite any restrictable subject matter, it is being examined along with the elected claims.
Applicant’s election without traverse of polyisocyanate, polyol, fumed silica, and a combination of C9–11 aromatic hydrocarbons as species I–IV, respectively, in the reply filed on 05 May 2026 is acknowledged.
Claims 3 and 30 will herein be interpreted as reciting the first compound comprising a polyisocyanate and the second compound comprising a polyol.
Claim 32 will herein be interpreted as reciting the inorganic filler comprising fumed silica.
Claims 15 and 32 will herein be interpreted as reciting the low energy solvent comprising a combination of C9–11 aromatic hydrocarbons.
Claims 36, 37, 41, 44, 47, 48 and 51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05 May 2026.
Specification
The disclosure is objected to because of the following informalities:
Paragraphs 00211 and 00212 of the specification appear to have been mis-scanned or were a color other than black before being uploaded; as a result, the text is noticeably lighter and fuzzier, making it harder to read these paragraphs by comparison.
Appropriate correction is required.
Claim Interpretation
Claim 1 and all claims dependent thereon recites an “in-mold” coating composition. The limitation “in-mold” does not impart any structural limitations, and instead merely indicates where the composition is intended to be used (i.e., in a mold). Any sufficiently similar coating composition is at least capable of being applied toward the same intended use, unless Applicants can show that a person having ordinary skill in the art would have understood “in-mold” to convey specific structural limitations to the composition beyond what is already claimed. See MPEP 2111.02(II) regarding statements of intended use in the preamble.
Claims 1, 24, and 30 each recite the measurement of surface tension using a Du Noüy ring. The method by which surface tension is measured is not considered to impart any patentable weight over a comparable composition with surface tension measured by a different method. Additionally, regarding claims 1 and 30, because the solvent itself is recited as having the claimed surface tension, and not the overall composition, all solvents of the same type must inherently have the same surface tension under the claimed conditions. See MPEP 2112.01(II) regarding inherency of properties in products of identical chemical composition.
Claim 24 recites the in-mold coating composition as having a surface tension less than 30 dynes/cm. This is notable because claims 1 and 30 recite the solvent of the composition as having a claimed surface tension, not the composition itself. Claim 24 is therefore introducing a new limitation on the composition, not a further limitation of the solvent surface tension. Surface tension can only be measured on liquids, not solids, so it is affected by any other liquid components that may comprise the composition of parent claim 1, and is not measurable once the composition begins to gel and solidify. The Examiner will therefore interpret this claim as referring to the surface tension of the composition before any solidification occurs, wherein the composition’s liquid phase can include components other than pure solvent, e.g., surfactants and solutes.
Claim 34 recites the in-mold coating composition as comprising prescribed amounts of each component, but the maximum amounts of each component add up to only 80 wt.%. However, since the composition is recited as comprising the components, it is still open to the inclusion of other, unrecited components. The coating composition is therefore interpreted as requiring at least 20 wt.% of other, unrecited components.
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 1, 3, 6, 11, 13, 15, 19, 20, 24, 28, 30, 32, and 34 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.
The term “low energy solvent” in claims 1, 15, 19, 20, 30, 32 and 34 is a relative term which renders the claim indefinite. The term “low energy solvent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicants do recite the low energy solvent as having a surface tension of less than 35 dynes/cm, but it is unclear if this is the metric by which they are defining the energy of the solvent, or if this is merely a property of the low-energy solvents that are encompassed by their invention. For purposes of examination, the Examiner will herein interpret any solvent having the claimed surface tension as also meeting the “low energy” limitation.
Claims 3, 6, 11, 13, 24 and 28, being dependent on claim 1, inherit its deficiencies, and are rejected on the same grounds.
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 and 11 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Lutz (US 6,019,921 A, hereinafter “Lutz”).
Evidentiary support for the surface tension of ortho-, meta-, and para-xylene are provided by Wikipedia (“o-Xylene”, “m-Xylene”, and “p-Xylene” Data Pages, <Wikipedia.com>, 2025, hereinafter “Wiki Xylene”), and is applied to claim 1 and all claims dependent thereon.
Regarding claim 1, Lutz teaches an in-mold coating composition (see generally abstract), wherein the composition is formed by combining (i.e., reacting) a first compound and a second compound (see col. 4, ll. 18–22 teaching the first compound as at least one polyol and the second compound as an isocyanate, which react to form polyurethane). Lutz further teaches the use of fillers including fumed alumina (see col. 5, l. 58–col. 6, l. 11), which is well-understood in the art to be a rheology modifier (although Lutz teaches fumed alumina as a pigment, MPEP 2112.02 states that a chemical composition is inseparable from its properties; if fumed alumina is present, it is inherently acting as a rheology modifier). Lutz further teaches the use of a solvent, wherein the solvent comprises a low energy solvent having a surface tension less than 35 dynes/cm at 20 °C (see col. 5, ll. 48–57 teaching solvents including xylene; xylene can exist as ortho--, meta-, or para-xylene, each of which has a slightly different surface tension at 20 °C; Wiki Xylene teaches the surface tensions as 30.10 dyn/cm, 28.90 dyn/cm, and 28.27 dyn/cm at 20 °C for o-, m-, and p-xylene, respectively, each of which fall below the claimed “less than 35 dynes/cm”. Therefore, Lutz teaches each and every limitation of claim 1.
Regarding claim 11, Lutz teaches the in-mold coating composition of claim 1, and further teaches the limitation wherein the rheology modifier is an inorganic filler (see col. 5, l. 58–col. 6, l. 11 teaching at least fumed alumina, which is inorganic).
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3, 6, 13 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz, with evidentiary support applied to claim 1 by Wiki Xylene. Wiki Xylene is further applied to claim 30 and all claims dependent thereon.
Regarding claim 3, Lutz teaches the in-mold coating composition of claim 1, and further teaches the limitation wherein the second compound comprises a polyol (see col. 4, ll. 18–22 teaching a polyol). Lutz teaches the first compound as being an isocyanate prepolymer, which is a genus that includes polyisocyanates. A polyisocyanate is a polymer containing multiple isocyanate groups along the backbone, whereas an isocyanate prepolymer is a partially reacted mixture of diisocyanates or polyisocyanates with polyols, designed to be further reacted with polyol to form polyurethane. As such, an isocyanate prepolymer could be formed from a polyisocyanate (e.g., polymeric methylene diphenyl diisocyanate, PMDI), or it could be formed from a monomeric diisocyanate (e.g., methylene diphenyl diisocyanate, MDI). Lutz therefore fails to explicitly teach polyisocyanate, but teaches a genus that encompasses only polymeric and monomeric isocyanates. A person having ordinary skill in the art before the effective filing date of the claimed invention seeking to practice the disclosure of Lutz could have reasonably arrived at the use of polyisocyanate. KSR Rationale E states it is prima facie obvious to choose from a finite number of known, predictable solutions (monomeric vs. polymeric isocyanates) with a reasonable expectation of success (both types of isocyanates are well-known in the art and routinely used to form polyurethane, so one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success). Claim 3 is therefore rendered prima facie obvious.
Regarding claim 6, Lutz teaches the in-mold coating composition, and further teaches the limitation wherein the composition comprises from 25 wt.% to 40 wt.% of a combination of the first compound and the second compound, wherein wt.% is based on the total solids weight of the in-mold coating composition (see col. 5, ll. 52–57 teaching that for every 100 weight parts of resin in the composition, 0–100 weight parts of pigments, fillers, opacifiers, antioxidants, ultraviolet absorbers, or other additives may be added; if the solids content is taken to consist of resin and rheology modifier, the content of the first and second compounds would be 50–100 wt.% [100 wt. parts resin, 0–100 wt. parts pigment], which slightly exceeds the claimed range but is still sufficiently close; if the solids content comprises resin and all other additives recited by Lutz, the first and second compounds comprise 16.6–100 wt.%, which does overlap with the claimed range; because the claim recites the composition as comprising, Lutz’s lower concentration of 16.6 wt.% is considered to read on claim 6; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claim 6 is therefore rendered prima facie obvious.
Regarding claim 13, Lutz further teaches the limitation wherein the composition comprises from 1 wt.% to 10 wt.% of the rheology modifier, wherein wt.% is based on the total solids weight of the composition (see col. 5, ll. 52–57 teaching that for every 100 weight parts of resin in the composition, 0–100 weight parts of pigments and other additives may be added; if the solids content is taken to consist of resin and rheology modifier, the content of the resin would be 50–100 wt.%, and thus the content of the rheology modifier [referred to as a pigment by Lutz] would therefore be 0–50 wt.%, which overlaps with the claimed range; furthermore, as discussed in the above rejection of claim 6, the concentration can further decrease, depending on how many other additives are included, which further approaches the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claim 13 is therefore rendered prima facie obvious.
Regarding claim 30, Lutz teaches an in-mold composition (see generally abstract), comprising:
a first compound and a second compound, wherein the first compound comprises an isocyanate and the second compound comprises a polyol (see col. 4, ll. 18–22);
a rheology modifier, wherein the rheology modifier comprises an inorganic filler (see col. 5, l. 58–col. 6, l. 11 teaching at least fumed alumina, which is an inorganic rheology modifier); and
a solvent, wherein the solvent comprises a low energy solvent having a surface tension less than 35 dynes/cm at 20 °C (see col. 5, ll. 48–57 teaching at least xylene; see Wiki Xylene teaching the surface tension of all three constitutional isomers as being below the claimed “less than 35 dynes/cm”).
Lutz fails to explicitly teach the limitation wherein the first compound is a polyisocyanate. Lutz teaches the first compound as being an isocyanate prepolymer, which is a genus that includes polyisocyanates. A polyisocyanate is a polymer containing multiple isocyanate groups along the backbone, whereas an isocyanate prepolymer is a partially reacted mixture of diisocyanates or polyisocyanates with polyols, designed to be further reacted with polyol to form polyurethane. As such, an isocyanate prepolymer could be formed from a polyisocyanate (e.g., polymeric methylene diphenyl diisocyanate, PMDI), or it could be formed from a monomeric diisocyanate (e.g., methylene diphenyl diisocyanate, MDI). Lutz therefore fails to explicitly teach polyisocyanate, but teaches a genus that encompasses only polymeric and monomeric isocyanates. A person having ordinary skill in the art before the effective filing date of the claimed invention seeking to practice the disclosure of Lutz could have reasonably arrived at the use of polyisocyanate. KSR Rationale E states it is prima facie obvious to choose from a finite number of known, predictable solutions (monomeric vs. polymeric isocyanates) with a reasonable expectation of success (both types of isocyanates are well-known in the art and routinely used to form polyurethane, so one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success). Claim 3 is therefore rendered prima facie obvious.
Claims 15, 19, 24, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz as applied to claim 1 above, and further in view of Cappelle (US 2021/0179767 A1, hereinafter “Cappelle”), with evidentiary support applied to claim 1 by Wiki Xylene.
Evidentiary support for the composition of Solvesso™ 100 and 150 is provided by ExxonMobile (“Solvesso™ 100 Aromatic Fluid” and “Solvesso™ 150 Aromatic Fluid”, Sales Specifications, 2023, hereinafter “ExxonMobile”), and is applied only to claim 15.
Evidentiary support for the surface tension of butyl acetate is provided by Eastman (“Technical Data Sheet, Eastman™ Butyl Acetate”, 2018, hereinafter “Eastman”), and is applied only to claims 19 and 24.
Evidentiary support for the composition and properties of Modaflow® 9200 is provided by Allnex (“Modaflow® 9200 Technical Data Sheet”, 2025, hereinafter “Allnex”), and is applied only to claims 24 and 28.
Evidentiary support for the effect of surfactants on surface tension is provided by Wikipedia (“Surfactant”, <Wikipedia.com>, 2026, hereinafter “Wiki Surfactant”), and is applied only to claims 24 and 28.
Regarding claim 15, Lutz teaches the in-mold coating composition of claim 1, but fails to explicitly teach the limitation wherein the low energy solvent comprises an aromatic hydrocarbon, wherein the aromatic hydrocarbon comprises a combination of C9-11 hydrocarbons. Cappelle teaches a composition comprising two reactive components (see generally abstract), wherein the composition is taught to be useful as an in-mold composition (see paragraph 0101), and wherein the solvent for said composition can include xylene, as taught by Lutz, and can also include Solvesso™ 100 and Solvesso™ 150, which are mixtures of aromatic hydrocarbons (see paragraph 0050). ExxonMobile teaches Solvesso™ 100 as being a C9 aromatic fluid, and Solvesso™ 150 as being a C10 aromatic fluid, meaning Cappelle teaches solvents that are mixtures of aromatic C9 and C-10 hydrocarbons. A person having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lutz according to Cappelle to use Solvesso™ solvents in lieu of xylene. This motivation is supported by the compositional similarity of both references, wherein Lutz teaches a polyol and isocyanate as reacting to form a polyurethane-based in-mold coating, and wherein Cappelle teaches a polyol and isocyanate as reacting to form a polyurethane methacrylate in-mold coating (see paragraph 0032 teaching dihydroxy compound A2 reacting with a diisocyanate-functional compound A3; see paragraph 0046 teaching the dihydroxy A2 as including polyols; see paragraph 0101 teaching the use of the composition for in-mold coatings). The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lutz’s xylene solvent) for another (Cappelle’s Solvesso™ 100 or Solvesso™ 150) to obtain predictable results (both references teach substantially similar compositions, and there is no teaching that would suggest the Solvesso™ solvents are incompatible with Lutz’s composition, so the results of the proposed modification are predictable). The modification arrives at the composition of claim 15, and thus claim 15 is rendered prima facie obvious.
Regarding claim 19, Lutz fails to teach the limitation wherein the in-mold coating composition comprises from 1 wt.% to 15 wt.% of the low energy solvent, wherein wt.% is based on the total weight of the in-mold coating composition. Cappelle teaches the use of butyl acetate as a solvent (see paragraph 0124 and Table 3, wherein butyl acetate is abbreviated “BAC”). Eastman teaches BAC as having a surface tension of 25.1 dyn/cm at 20 °C, which means it is a low energy solvent as defined in claim 1. Cappelle teaches a number of embodiments using BAC (see Table 3), including sample F1, wherein 5 g of BAC is used out of 109.32 g total (=4.6 wt.%), and sample F5, wherein 10 g of BAC is used out of 114.32 g total (=8.7 wt.%). Cappelle therefore teaches the limitation wherein the composition comprises 1–15 wt.% low-energy solvent, based on the total weight of the composition. A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Lutz can be modified according to Cappelle to utilize BAC in the recited amounts. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lutz’s unspecified amount of low-energy solvent) for another (Cappelle’s disclosed amounts of low-energy BAC, relative to the total composition weight) to obtain predictable results (both references teach substantially similar compositions, and there is no teaching that would suggest BAC is incompatible with Lutz’s composition, so the results of the proposed modification are predictable). The modification arrives at the composition of claim 19, and thus claim 19 is rendered prima facie obvious.
Regarding claim 24, Lutz fails to teach the limitation wherein the in-mold coating composition has a surface tension less than 30 dynes/cm at 20 °C. Lutz does teach the use of xylene as a low-energy solvent, which can have a surface tension at or below 30 dyn/cm (see the above rejection of claim 1 and Wiki Xylene), but this does not mean the overall composition has a comparable surface tension. Cappelle teaches the use of low-energy BAC as a solvent (see paragraph 0124), and further teaches the inclusion of Modaflow® 9200 as an acrylic flow modifier (see paragraph 0141). Allnex teaches Modaflow® 9200 as improving flow, leveling, and substrate wetting. These three improvements indicate the effect of lowering surface tension, and so Cappelle’s composition, which combines low-energy BAC with Modaflow® 9200 would be reasonably expected to display a surface tension below 30 dyn/cm as claimed (see Eastman teaching the surface tension of pure BAC as 25.1 dyn/cm; Wiki Surfactant teaches a surfactant to be a compound that decreases surface tension). This teaching is sufficient to establish a prima facie case of obviousness based on scientific theory (see MPEP 2144.02). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Lutz can be modified according to Cappelle to use BAC and Modaflow® 9200 as a solvent and surfactant, respectively. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lutz’s low-energy solvent) for another (Cappelle’s lower-energy solvent/surfactant mix) to obtain predictable results (both references teach substantially similar compositions, and there is no teaching that would suggest BAC is incompatible with Lutz’s composition, so the results of the proposed modification are predictable). The proposed modification arrives at the composition of claim 24, and thus claim 24 is rendered prima facie obvious.
Regarding claim 28, Lutz fails to explicitly teach the limitation wherein the in-mold coating composition comprises from 0.1 wt.% to 10 wt.% of a surfactant, wherein wt.% is based on the total solids weight of the in-mold coating composition. Cappelle teaches the use of Modaflow® 9200 (see paragraph 0141), which is a surfactant (see Allnex). Cappelle further teaches an embodiment comprising 0.5 g of Modaflow® 9200 out of 113.5 g total (=0.44 wt.%; see Table 11, Ex F12, wherein BAC is excluded from the total mass because it is not a solid). This concentration falls within the claimed range. A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Lutz can be modified according to Cappelle to use Modaflow® 9200 as a surfactant. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Lutz’s composition and Cappelle’s surfactant) according to known methods (inclusion of a surfactant does not require any specialized methods) to yield predictable results (the use of a surfactant in combination with a solvent is well-understood in the art, and there is no teaching to suggest that Lutz’s composition is incompatible with Cappelle’s surfactant, so the results of the proposed modification are predictable). This modification arrives at the composition of claim 28, and thus claim 28 is rendered prima facie obvious.
Claims 32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz as applied to claim 30 above, and further in view of Cappelle, with evidentiary support applied to claim 30 by Wiki Xylene.
Evidentiary support for the composition of Solvesso™ 100 and 150 is provided by ExxonMobile, and is applied only to claim 32.
Regarding claim 32, Lutz fails to explicitly teach the limitations wherein the low energy solvent comprises a combination of C9–11 aromatic hydrocarbons, and wherein the inorganic filler comprises fumed silica. Cappelle teaches solvents including Solvesso™ 100 and Solvesso™ 150, which are taught to be mixtures of aromatic hydrocarbons (see paragraph 0050), and which comprise C9 and C10 aromatic hydrocarbons (see ExxonMobile). Cappelle further teaches the inclusion of fumed silica (see paragraph 0083). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Lutz can be modified according to Cappelle to use Solvesso™ solvents and fumed silica. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lutz’s xylene solvent and fumed alumina) for another (Cappelle’s Solvesso™ 100 or Solvesso™ 150, and fumed silica) to obtain predictable results (both references teach substantially similar compositions, and there is no teaching that would suggest the Solvesso™ solvents or fumed silica are incompatible with Lutz’s composition, so the results of the proposed modification are predictable). The proposed modification arrives at the composition of claim 32, and thus claim 32 is rendered prima facie obvious.
Regarding claim 34, Lutz teaches the in-mold coating composition of claim 30, but fails to explicitly teach the limitation wherein the composition comprises:
from 10 wt.% to 30 wt.% of the first compound;
from 10 wt.% to 30 wt.% of the second compound;
from 0.5 wt.% to 5 wt.% of the rheology modifier; and
from 1 wt.% to 15 wt.% of the low energy solvent,
wherein wt.% is based on the total weight of the in-mold coating composition.
Cappelle teaches an embodiment (see Table 11, Example F12), comprising Synth Ex 3 (see Table 1, wherein Ex 3 comprises 486.3 g of the first component [epoxy acrylate, A1], and 114.5 g of the second component [HDI, hexamethylene diisocyanate], which together represent 80.9 wt.% and 19.1 wt.%, respectively, of the first and second components together), wherein Example F12 comprises 100 g Synth Ex 3, 5 g BAC, and 13.5 g of other additives, for a total of 118.5 g. Therefore, Example F12 includes 68.3 wt.% of the first component (80.9 g ÷ 118.5 g), 16.1 wt.% of the second component (19.1 g ÷ 118.5 g), 4.2 wt.% solvent (5 g ÷ 118.5 g), and 11.4 wt.% of other additives (13.5 g ÷ 118.5 g). Cappelle further teaches “other additives” as including at least rheology modifiers (see paragraph 0081). Cappelle’s F12 exceeds the claimed amount of the first component and the rheology modifier, but the concentrations of second component and solvent fall within the claimed ranges. However, absent any evidence of criticality, differences in concentration will not support the patentability of subject matter encompassed by the prior art (see MPEP 2144.05(I) and (II) regarding the obviousness of overlapping ranges and optimization of ranges). A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the composition of Lutz can be modified according to Cappelle’s compositional amounts. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Lutz’s and Cappelle’s compositions, with Cappelle’s disclosed amounts) according to known methods (choosing relative proportions of each component) to yield predictable results (both references teach substantially similar compositions, including polyols, isocyanates, low energy solvents, and rheology modifying agents, so the results of the proposed modification are predictable). The proposed modification arrives at the composition of claim 34, and thus claim 34 is rendered prima facie obvious.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lutz as applied to claim 1 above, and further in view of Yuasa (US 2017/0298231 A1, hereinafter “Yuasa”), with evidentiary support applied to claim 1 by Wiki Xylene.
Regarding claim 20, Lutz teaches the in-mold coating composition of claim 1, but fails to explicitly teach the limitation wherein the solvent comprises from 10 wt.% to 50 wt.% of the low energy solvent, wherein wt.% is based on the total weight of the solvent. Lutz does teach the use of “one or more solvent” (see claim 12), which indicates the total solvent mass can comprise the low energy solvent along with another solvent, but there is no teaching of proportions of different solvents. Yuasa teaches a resin-coated metal sheet (see generally abstract), wherein the resin is polyurethane (see paragraph 0077) and further contains fumed silica (see paragraph 0118). Yuasa further teaches a water-based solvent comprising at least 50 wt.% water (see paragraph 0063), wherein the water-based solvent can further comprise organic solvent (see paragraph 0064); if the solvent comprises at least 50 wt.% water, a cosolvent comprises up to 50 wt.%. Therefore, Yuasa teaches from 0 to 50 wt.% organic solvent. Furthermore, Yuasa teaches the type and amount of organic solvent as enabling the adjustment of viscosity (see paragraph 0138), which aligns with Lutz’s teaching of solvents being used to reduce viscosity and dilute the coating composition (see col. 5, ll. 48–52). A lower viscosity allows for the coating to be applied by known coating methods including roll coating, curtain flow coating, roller curtain coating, etc. (see Yuasa, paragraph 0065), which require a low-viscosity composition to achieve proper coverage. A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the solvent system of Lutz, which is already taught to include more than one solvent, can be modified according to Yuasa to use specific proportions of organic solvent (such as the low-energy xylene taught by Lutz) to optimize the viscosity for typical coating methods. The motivation supporting this combination most closely aligns with KSR Rationale C, which states it is prima facie obvious to use a known technique (combining solvents in specific proportions to control viscosity, as taught by Yuasa) to improve similar devices, methods or products (Lutz’s multi-solvent system with undisclosed proportions) in the same way (both references teach a polyurethane-based resinous coating system with multiple solvents, and there is no teaching to suggest that the solvent proportions taught by Yuasa would be incompatible with Lutz’s disclosure, so the results of the proposed modification are predictable). The proposed modification arrives at the composition of claim 20, and thus claim 20 is rendered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached Tue, Thu, Sat, Sun from 7 AM to 5 PM.
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/R.P.L./Examiner, Art Unit 1731 /ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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