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 .
Summary
The Applicant’s arguments and claim amendments received on November 18, 2025 are entered into the file. Currently, claims 1-44 are cancelled; claims 45, 48-51, 53, 56-58, 60, and 65 are amended; claims 63 and 64 are withdrawn; claims 66 and 67 are new; resulting in claims 45-62 and 65-67 pending for examination.
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.
(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 45, 47, 53-55, 57, 61, and 62 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Krusemann et al. (US 2006/0048675, previously cited).
Regarding claim 45, Krusemann et al. teaches a colorant preparation (mixture) containing (A) at least one pigment, (B) at least one dye, (C) at least one dispersant, and (D) water or a mixture of water and at least one water retainer [0012]. The pigment may include a titanate such as nickel titanium yellow or chromium titanium yellow, wherein exemplary pigments include C.I. Pigment Yellow 53 (nickel antimony titanate), C.I. Pigment Yellow 157 (nickel barium titanate), C.I. Pigment Yellow 161 (nickel niobium titanate), C.I. Pigment Yellow 162 (chromium niobium titanate), C.I. Pigment Yellow 163 (chromium tungsten titanate), C.I. Pigment Yellow 164 (manganese antimony titanate), and C.I. Pigment Yellow 189 (nickel tungsten titanate) [0104]. The dispersant may be a polyalkylene oxide (hydrophobic polymer) prepared by polyaddition of alkylene oxides to starter molecules, including aliphatic alcohols containing 6 to 26 carbon atoms (aliphatic hydrocarbon group) ([0120]-[0124]).
Krusemann et al. teaches that the liquid phase of the colorant preparation is either water or a mixture of water and a water retainer, wherein the water retainers used are in particular organic solvents ([0157]-[0158]). Therefore, the colorant preparation may be either a solvent-based mixture or a water-based mixture.
It is noted that the preamble limitation reciting “for producing a coating or treatment on one or more surfaces of decorative panels” is directed to the purpose or intended use of the claimed mixture and is interpreted as being satisfied by any mixture which is capable of performing the intended use. The colorant preparation taught by Krusemann et al. is capable of being used in the manner claimed, thus meeting the claimed functional limitation.
Regarding claim 47, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that the aliphatic alcohols containing 6 to 26 carbon atoms can have an unbranched, branched, or cyclic structure [0124].
Regarding claim 53, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that the colorant preparation may be used in the form of a dispersion containing further addition agents, such as paraffin dispersions [0165].
Regarding claim 54, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that the amount of liquid phase (D) present in the colorant preparation is generally in the range of 10% to 80% by weight [0160].
Regarding claim 55, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that examples of suitable water retainers include polyhydric alcohols, such as ethylene glycol, 1,2-propylene glycol, 1,3-propylene glycol, etc. ([0159]), each of which has a flash point of 55°C or more.
Regarding claim 57, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that examples of suitable water retainers include alkylene glycols and their monoalkyl (especially C1-C4 alkyl) ethers, such as di-, tri-, and tetra-1,2- and -1,3-propylene glycol monomethyl ether ([0159]), which is a propylene glycol methyl ether.
Regarding claim 61, Krusemann et al. teaches all of the limitations of claim 45 above. As noted above, Krusemann et al. teaches that the colorant preparation contains a dispersant ([0120]), which is a surface tension lowering agent.
Regarding claim 62, Krusemann et al. teaches all of the limitations of claim 45 above. As noted above Krusemann et al. teaches that the colorant preparation contains at least one pigment and at least one dye ([0062]), which each correspond to the claimed colorant.
Claims 45-47, 50, 55, 57, and 61 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Schieferstein et al. (US 2008/0108775, previously cited).
Regarding claims 45-47 and 50, Schieferstein et al. teaches a thickener (mixture) based on an aqueous preparation of a water-dispersible or water-soluble polyurethane, wherein the polyurethane is obtained by reacting: (a) one or more hydrophilic polyols, (b) one or more hydrophobic compounds containing at least one linear or branched alkyl chain having at least 5 consecutive carbon atoms, and (c) one or more at least difunctional isocyanates (Abstract).
Schieferstein et al. teaches that the compound (b) preferably contains 6 to 24 carbon atoms per molecule, including linear or branched alcohols ([0050]-[0052]), thus corresponding to the claimed aliphatic hydrocarbon group in the hydrophobic polyurethane having a structure that satisfies the formula set forth in claim 50. Given the significant proportion of long nonpolar alkyl groups present in the polyurethane, the polyurethane corresponds to the claimed hydrophobic polymer. Schieferstein et al. further teaches that the reaction is carried out in the presence of a catalyst, wherein the catalyst may be tetra-(2-ethylhexyl)-titanate [0067].
It is noted that the preamble limitation reciting “for producing a coating or treatment on one or more surfaces of decorative panels” is directed to the purpose or intended use of the claimed mixture and is interpreted as being satisfied by any mixture which is capable of performing the intended use. Schieferstein et al. teaches that the thickener may be used for thickening aqueous systems, such as water-based automotive and industrial paints, printing and textile inks, pigment printing pastes, and the like [0082]. The thickener composition taught by Schieferstein et al. is capable of being used in the manner claimed, thus meeting the claimed functional limitation.
Regarding claim 55, Schieferstein et al. teaches all of the limitations of claim 45 above and further teaches that a solvent or diluent may be added to the system, wherein suitable solvents include dialkyl ethers of ethylene glycol, diethylene glycol, and the like ([0065]), which are solvents that have a flash point of 55°C or more.
Regarding claim 57, Schieferstein et al. teaches all of the limitations of claim 45 above and further teaches that a solvent or diluent may be added to the system, wherein suitable solvents include butyl acetate [0065].
Regarding claim 61, Schieferstein et al. teaches all of the limitations of claim 45 above and further teaches that one or more surfactants (surface tension lowering agent) may be present in the thickener composition [0078].
Claim Rejections - 35 USC § 103
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 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.
Claim 48 is rejected under 35 U.S.C. 103 as being unpatentable over Krusemann et al. (US 2006/0048675, previously cited) as applied to claim 45 above.
Regarding claim 48, Krusemann et al. teaches all of the limitations of claim 45 above and further teaches that the amount of dispersant (C) in the colorant preparation is typically in the range from 1 to 40% by weight ([0156]), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claims 53 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Schieferstein et al. (US 2008/0108775, previously cited) as applied to claim 45 above, and further in view of Ishii et al. (US 2002/0094738, previously cited).
Regarding claims 53 and 58, Schieferstein et al. teaches all of the limitations of claim 45 above. Although Schieferstein et al. further teaches that the thickener can be used for thickening aqueous systems, such as automotive or industrial paints, waxes, and polishes ([0082]), the reference does not specifically teach that the thickener composition comprises paraffin or an alkyd polymer and/or alkyd resin.
However, in the analogous art of water-repellent coating compositions, Ishii et al. teaches a paintwork coating composition used to coat a paintwork in a vehicle and to impart a good water-repellent property thereto (Abstract, [0002]-[0004]). The coating composition comprises a water dispersion of a hydrophobic polymer such as polytetrafluoroethylene and/or perfluoropolyether, wherein wax, resin, and thickening agent may preferably be mixed depending on the intended purpose and application of the coating ([0013], [0045]). Ishii et al. teaches that waxes that may be used include paraffin, wherein the wax can produce improved coating or polishing of the paintwork [0046]. The resins that may be used include alkyd resin, which can provide improved grab [0047].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickener composition taught by Shieferstein et al. by including a paraffin wax and an alkyd resin along with the hydrophobic polymer, as taught by Ishii et al., in order to adjust the properties of the aqueous systems to be suitable for use with automotive paints, waxes, or polishes, for example, to provide improved polishing and grab.
Claims 65-67 are rejected under 35 U.S.C. 103 as being unpatentable over Schieferstein et al. (US 2008/0108775, previously cited) as applied to claim 45 above, and further in view of Stengel et al. (US 2006/0189478, newly cited).
Regarding claims 65-67, Schieferstein et al. teaches all of the limitations of claim 45 above. Although Schieferstein et al. teaches that the polyurethane is produced in the presence of a catalyst, such as tetra-(2-ethylhexyl)-titanate ([0067]), the reference does not teach that the titanate catalyst is tetra-n-butyl titanate and does not expressly teach an amount of the titanate catalyst included in the mixture.
However, in the analogous art of coating compositions, Stengel et al. teaches a process for the manufacture of polyurethane materials using a catalyst, wherein the polyurethane materials can be used in coatings, adhesives, sealants, binders, etc. (Abstract, [0052]-[0053]). Stengel et al. teaches that the catalyst may be a reaction product of an alkoxide or condensed alkoxide of titanium, an alcohol containing at least two hydroxyl groups, a 2-hydroxy carboxylic acid, and a base, wherein examples include tetra-n-butoxy titanium (tetra-n-butyl titanate) [0037]. Stengel et al. further teaches that the catalysts are typically present in the isocyanate and/or alcohol mixture at a concentration in the range of 1x104 to 10% by weight, preferably up to about 4% by weight based on the total weight of the reaction system, i.e., the total weight of the polyisocyanate and polyol components [0054]. Stengel et al. therefore teaches an amount of the titanate which overlaps the ranges of claims 65 and 67. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickener composition taught by Schieferstein et al. by including tetra-n-butyl titanate as the catalyst at an amount within the claimed range, as taught by Stengel et al., given its art-recognized suitability for use as a catalyst for producing a polyurethane.
Claims 45-47, 51, 52, 57, and 60-62 are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. (DE 102009000570, machine translation previously provided) in view of Raghavanpillai et al. (US 2018/0112097, newly cited).
Regarding claims 45, 46, and 60, Neumann et al. teaches copolymers of long-chain alkyl esters of (meth)acrylic acid and their use as binders for coating compositions [0001]. The copolymer (hydrophobic acrylate or methacrylate polymer) comprises:
a1) 20-40 wt% of at least one (meth) acrylic acid ester of formula (1):
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39
215
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(1)
wherein R1 is H or CH3 and n is an integer from 10 to 55;
a2) 5-20 wt% of at least one (meth) acrylic acid ester of formula (2):
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30
172
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(2)
wherein R1 is H or CH3 and R2 is a linear or branched C1-C6 alkyl;
a3) 30-50 wt% of at least one (meth) acrylic acid ester of formula (3):
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28
168
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(3)
wherein R1 is H or CH3 and R3 is a hydroxy-(C2-C10)-alkyl;
a4) 2-10 wt% (meth)acrylic acid; and
a5) 0-15 wt% of at least one (meth) acrylic acid ester of formula (4):
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26
164
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(4)
wherein R1 is H or CH3 and R4 is a C4-C12 cycloalkyl group ([0022]-[0026]).
Neumann et al. teaches that examples of the a1) (meth) acrylic acid esters with long linear and branched alkyl chains (LACE monomers) include iso-tridecyl (meth)acrylate ([0029]), which includes an aliphatic hydrocarbon group with 12 carbon atoms. Given the significant proportion of long nonpolar alkyl groups, the copolymer is a hydrophobic polymer. Neumann et al. teaches that the copolymers may be used as binders for the production of paint formulations for solvent-containing, solvent-free, or aqueous paint and coating systems ([0047]), thus corresponding to the claimed solvent-based or water-based mixture.
It is noted that the preamble limitation reciting “for producing a coating or treatment on one or more surfaces of decorative panels” is directed to the purpose or intended use of the claimed mixture and is interpreted as being satisfied by any mixture which is capable of performing the intended use. Neumann et al. teaches that the coating compositions are suitable for coating, painting, or sealing substrates such as industrial floor coverings [0059]. The coating composition taught by Neumann et al. is capable of being used in the manner claimed, thus meeting the claimed functional limitation.
Although Neumann et al. teaches that the coating may contain various auxiliaries and/or additives, including pigments such as iron oxides, lead oxides, lead silicates, titanium dioxide, barium sulfate, zinc sulfide, or phthalocyanine complexes ([0056]), the reference does not expressly teach that the coating contains a titanate.
However, in the analogous art of coating compositions, Raghavanpillai et al. teaches a coating composition for providing a protective and/or decorative coating to a wide variety of substrates, including construction materials and hard surfaces [0054]. Similar to Neumann et al., Raghavanpillai et al. teaches that the coating compositions may include a pigment, wherein examples of pigments that can be used include TiO2, barium sulfate, zinc sulfide, iron oxide, nickel titanate, and the like ([0048]-[0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating composition taught by Neumann et al. by using nickel titanate as the pigment, as taught by Raghavanpillai et al., in order to impart the desired color to the coating composition. Raghavanpillai et al. recognizes the equivalence of the pigments taught by Neumann et al. and nickel titanate, such that it would have been obvious to one of ordinary skill in the art to substitute equivalent pigments for the same purpose of imparting a desired color.
Regarding claim 47, Neumann et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Neumann et al. further teaches that the
-CnH2n+1 group (aliphatic hydrocarbon group) in the (meth) acrylic acid ester of formula 1 may be linear or branched [0024].
Regarding claims 51, 52, 61, and 62, Neumann et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Neumann et al. further teaches that the auxiliaries and additives that may be contained in the coating (mixture) include silicone oils (silicones), wetting agents, and pigments (colorants) [0056].
Regarding claim 57, Neumann et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Neumann et al. further teaches that the organic solvent used in the coating composition may include butyl acetate ([0039], [0053], [0055]).
Claims 53 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. (DE 102009000570, machine translation previously provided) in view of Raghavanpillai et al. (US 2018/0112097, newly cited) as applied to claim 45 above, and further in view of Ishii et al. (US 2002/0094738, previously cited).
Regarding claims 53 and 58, Neumann et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above. Although Neumann et al. further teaches that the auxiliaries and additives that may be contained in the coating (mixture) include meltable organic compounds such as waxes, and that the coating compositions can be used, for example, as automotive refinish paints ([0056], [0059]), the reference does not specifically teach that the waxes comprise paraffin or that the coating comprises an alkyd polymer or alkyd resin.
However, in the analogous art of water-repellent coating compositions, Ishii et al. teaches a paintwork coating composition used to coat a paintwork in a vehicle and to impart a good water-repellent property thereto (Abstract, [0002]-[0004]). The coating composition comprises a water dispersion of a hydrophobic polymer such as polytetrafluoroethylene and/or perfluoropolyether, wherein wax, resin, and thickening agent may preferably be mixed depending on the intended purpose and application of the coating ([0013], [0045]). Ishii et al. teaches that waxes that may be used include paraffin, wherein the wax can produce improved coating or polishing of the paintwork [0046]. The resins that may be used include alkyd resin, which can provide improved grab [0047].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating composition taught by Neumann et al. in view of Raghavanpillai et al. by selecting paraffin as the wax and by including an alkyd resin, along with the hydrophobic polymer, as taught by Ishii et al., in order to adjust the properties of the coating to be suitable for use with automotive paints, for example, to provide improved polishing and grab.
Claims 56, 58, and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Neumann et al. (DE 102009000570, machine translation previously provided) in view of Raghavanpillai et al. (US 2018/0112097, newly cited) as applied to claim 45 above, and further in view of Segaert (WO 2021/124042, previously cited).
Regarding claims 56, 58, and 59, Neumann et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above. Although Neumann et al. teaches that the copolymer can be used as a binder for solvent-containing paint and coating systems ([0047]), the reference does not expressly teach that the solvent-based mixture comprises alkanes or that the mixture comprises an alkyd polymer or alkyd resin.
However, in the analogous art of coating materials for decorative panels, Segaert teaches a treatment for laminate flooring panels to obtain a water-repellent or water-resistant effect (p. 2, Ln 19-21). The coating material may include a fluoroacrylate polymer to achieve high contact angle and water resistance, and may be a solvent-based or water-based mixture to which an alkyd polymer is added in order to adjust the viscosity so that the coating can be applied by a conventional transfer technique (p. 2, Ln 23-p. 3, Ln 17; p. 4, Ln 25-32). Segaert teaches that the alkyd polymer may be urethane or isocyanate modified to promote water resistance and may be dissolved in a non-aromatic solvent, wherein solvents based on isoalkanes are non-toxic and may be present in the mixture (p. 4, Ln 20-p. 5, Ln 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating composition taught by Neumann et al. in view of Raghavanpillai et al. by including an alkyd resin, e.g., a urethane or isocyanate modified alkyd resin, dissolved in an isoalkane solvent, along with the hydrophobic copolymer, as taught by Segaert, in order to adjust the viscosity of the coating composition to ensure its suitability for use with conventional coating techniques and to improve the water resistance thereof.
Claims 45-49, 51-54, 61, 65, and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Coppens et al. (US 2018/0016738, previously cited) in view of Raghavanpillai et al. (US 2018/0112097, newly cited).
Regarding claims 45, 46, and 49, Coppens et al. teaches a fluorine-free treating composition (mixture) for treating a fibrous substrate to enhance the water-repellency of the substrate [0003]. The composition includes at least one polycarbodiimide compound (hydrophobic polycarbodiimide) derived from a carbodiimidization reaction mixture comprising at least one oligomer having an isocyanate end group and at least two repeating units, wherein each of the at least two repeating units comprises at least one hydrocarbon group having at least 16 carbon atoms [0003].
The polycarbodiimide compound may have the following formula IX:
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23
559
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(IX)
wherein A1 and A2 are independently the residue of an organic diisocyanate compound; r is an integer from 2 to 10; and Q2 and Q3 are independently selected from a hydrocarbon group (aliphatic hydrocarbon group) having at least 2 carbon atoms, with examples of such hydrocarbon groups including an octadecyl (C18) group ([0128]-[0141]). The polycarbodiimide of formula IX therefore satisfies the formula set forth in claim 49.
Coppens et al. further teaches that the treating composition is preferably used as an aqueous composition (water-based mixture), in particular, an aqueous dispersion in water [0155]. It is noted that the preamble limitation reciting “for producing a coating or treatment on one or more surfaces of decorative panels” is directed to the purpose or intended use of the claimed mixture and is interpreted as being satisfied by any mixture which is capable of performing the intended use. The treating composition taught by Coppens et al. is capable of being used in the manner claimed, thus meeting the claimed functional limitation.
Coppens et al. differs from the claimed invention in that the reference does not expressly teach that the composition comprises a titanate. However, in the analogous art of coating compositions, Raghavanpillai et al. teaches a coating composition for providing a protective and/or decorative coating to a wide variety of substrates, such as fiberboard or paper [0054]. Raghavanpillai et al. teaches that the coating compositions may include a pigment, wherein examples of pigments that can be used include TiO2, barium sulfate, zinc sulfide, iron oxide, nickel titanate, and the like ([0048]-[0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composition taught by Coppens et al. by including a pigment such as nickel titanate in the treatment composition, as taught by Raghavanpillai et al., in order to enable the composition to impart a desired color to a substrate to which it is applied.
Regarding claim 47, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Coppens et al. further teaches that the hydrocarbon groups of Q2 and Q3 may be linear hydrocarbon chains such as an octadecyl (C18) group, or branched hydrocarbon chains such as a 2-dodecylhexadecyl (C28 branched) group [0141].
Regarding claim 48, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Coppens et al. further teaches that the total amount of the one or more polycarbodiimide compounds is 30 wt% to 50 wt% based on the total weight of solids in the treating composition [0033]. Treating compositions may be in the form of a concentrate, which may include up to 80 wt% water based on the total weight of the treating composition, or may be in the form of a ready-to-use formulation, which may include more than 80% water [0031]. In the case where the treating composition includes 80 wt% water, the amount of polycarbodiimide is calculated as 6 wt% to 10 wt% (i.e., 30% to 50% of 20% solids) based on the total weight of the composition, which falls within the claimed range.
Regarding claims 51 and 52, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above. Although Coppens et al. does not expressly teach that the composition further comprises silicon-containing compounds, Raghavanpillai et al. does further teach that the pigment included in the coating composition can include silicas, silicon dioxide, and the like ([0048]-[0049]).
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mixture taught by Coppens et al. in view of Raghavanpillai et al. by including an SiO2-containing compound such as a silica or silicon dioxide pigment, as taught by Raghavanpillai et al., in order to impart a desired color to the mixture.
Regarding claim 53, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Coppens et al. further teaches that the composition includes at least one paraffin wax [0026].
Regarding claim 54, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Coppens et al. further teaches that the treating composition may be in the form of a concentrate, which may include up to 80 wt% water based on the total weight of the treating composition [0031]. Coppens et al. therefore teaches an amount of water that overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 61, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above, and Coppens et al. further teaches that the polycarbodiimide may be dispersed in water using a surfactant (surface tension lowering agent) in an amount sufficient to stabilize the dispersion [0156].
Regarding claims 65 and 67, Coppens et al. in view of Raghavanpillai et al. teaches all of the limitations of claim 45 above. Although Raghavanpillai et al. teaches that the coating composition can include from 0.1 to 80% by weight of functional additives such as pigments, fillers, and other additives ([0046]), the combination of references does not specifically teach an amount of the titanate pigment included in the composition. It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an appropriate amount of the pigment, such as within the range of 2 to 5 wt%, in order to achieve the desired color saturation or vibrancy while ensuring that an excessive amount of pigment does not inhibit the desired physical properties (e.g., flexibility) of the substrate to which it is applied.
Response to Arguments
Response-Claim Objections
The previous objections to claims 48, 49, 51, 58, and 60 are overcome by the Applicant’s amendments to the claims in the response filed November 18, 2025.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 49, 50, 53, 56, and 57 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are overcome by the Applicant’s amendments to the claims in the response filed November 18, 2025.
Response-Claim Rejections - 35 USC § 102 and 103
In light of the amendments to claim 45 narrowing the limitation requiring that the mixture comprises a “titanium-containing compound” to specifically a titanate, the previous rejections under 35 U.S.C. 102 based on Neumann et al. and under 35 U.S.C. 103 based on Coppens et al. in view of Tanaka et al. are withdrawn.
In order to address the new limitation directed to the mixture comprising a titanate, Neumann et al. and Coppens et al. are each applied as primary references under 35 U.S.C. 103 in combination with a secondary reference to Raghavanpillai et al. The Applicant’s arguments directed to the previous rejections based on Neumann et al. and based on Coppens et al. in view of Tanaka et al. are therefore moot.
With respect to the previous rejections under 35 U.S.C. 102 based on Krusemann et al. Schieferstein et al., the Applicant’s arguments, see pages 12-15 of the remarks filed November 18, 2025 have been fully considered but they are not persuasive.
The Applicant argues on page 12 of the remarks that Krusemann was relied on for finding a teaching of a water-based mixture including a pigment such as titanium dioxide, nickel titanium yellow, or chromium titanium yellow ([0094], [0104]), but that titanium dioxide, nickel titanium yellow, and chromium titanium yellow are not titanates.
This argument is not persuasive. The prior art rejections based on Krusemann et al. have been modified in the office action above to more clearly address the amended feature of claim 45 directed to the mixture comprising a titanate. In particular, it is noted that the nickel titanium yellow and chromium titanium yellow pigments taught by Krusemann et al. read on the claimed titanate compound. Krusemann et al. additionally teaches various exemplary C.I. Pigment Yellow compounds that are titanates, thus satisfying the claimed limitation.
The Applicant further argues on pages 13-14 that the referenced teaching of Shieferstein only describes the presence of a titanate catalyst in a reaction for forming a polyurethane, not in the thickener based on an aqueous preparation of a water-dispersible or water-soluble polyurethane. In particular, the Applicant argues that a catalyst is a substance that increases the rate of a chemical reaction without itself undergoing any permanent change, and that catalysts are generally recovered and reused because they are not consumed in the reaction. Thus, the Applicant asserts that if tetra-(2-ethylhexyl)-titanate is used in the reaction of Schieferstein, it would not be part of the final polyurethane or thickener composition.
This argument is not persuasive. Although it is acknowledged that Schieferstein et al. teaches that the reaction which produces the polyurethane may be carried out in the presence of a catalyst, such as tetra-(2-ethylhexyl)-titanate ([0065]-[0067]), the reference does not expressly disclose whether the catalyst remains as part of the final product or is recovered and reused, as asserted by the Applicant. However, even in the case where a catalyst recovery step is performed, one of ordinary skill in the art would recognize that the recovery process does not remove 100.0% of the catalyst from the final product, such that at least some catalyst would remain in the polyurethane solution and thus would be present in the final thickener composition. Given that independent claim 45 does not set forth an amount of the titanate compound included in the claimed mixture, any infinitesimally small amount of a titanate catalyst present in the mixture is considered to satisfy the claimed limitation directed to the mixture comprising a titanate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kaneda et al. (JP H08239570, machine translation via EPO provided) is cited as additional evidence that catalysts used in the production of polyurethanes may remain in the final polymer product. Kaneda et al. teaches that a titanium-based catalyst used in the production of a polyurethane is preferably deactivated after completion of the polycondensation reaction, and further recognizes tetra-n-butyl titanate and tetra-2-ethylhexyl titanate as equivalents for use as such ([0009]-[0012]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Rebecca L Grusby/Examiner, Art Unit 1785