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 .
Status of Claims
Claims 1-4, 7, and 9-13 are pending in the current application.
Claims 1, 4, and 7 are amended in the current application.
Claims 5, 6, and 8 are canceled in the current application.
Election/Restrictions
Applicant's election with traverse of Group I (Claims 1-10) and the recited Species in the reply filed on June 24, 2026 is acknowledged. The traversal is considered persuasive. The Restriction Requirement and Species Restriction are both hereby withdrawn. Claims 1-4, 7, and 9-13 are being fully considered for examination on the merits.
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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 is indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 2 is interpreted as instead reciting “the polyamine is selected from the group consisting of ethylenediamine, …, and amine-terminated polyether polyols.” Alternatively, claim 2 could be amended to recite “the polyamine is selected from ethylenediamine, …, or amine-terminated polyether polyols” to overcome the aforementioned deficiency.
Correction is required.
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.
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 1-4, 7, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO 2022/002679 A1) in view of Laas et al. (US 2015/0158966 A1).
Regarding Claim 1, Yang teaches a polyaspartic composition comprising a component A comprising a polyaspartic ester formed from a polyamine and a Michael addition receptor such as a maleate or a fumarate, and a component B comprising a polyisocyanate and a catalyst (Yang, Pgs 2, 4-15). Yang teaches the catalyst is included in an amount of 0-0.02 wt% relative to the total weight of the composition (Yang, Pg 15). Yang’s catalyst content range overlaps the claimed range of 0.0001 to 1 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). Yang teaches the catalyst includes metal catalysts such as zirconium-based catalysts (Yang, Pgs 13-15).
Yang remains silent regarding a zirconium metal catalyst from the group recited in claim 1.
Laas, however, teaches zirconium-based metal catalysts for reacting isocyanate components, where the zirconium-based metal catalysts have a structure of any of general formulae (I)-(III) that can include zirconium tetra-n-propylate (i.e., zirconium tetra-n-propanolate) (Laas, Abstract, [0009]-[0022], general formulae (I)-(III)).
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Laas – General Formulae (I), (II), & (III)
Since Yang and Laas both disclose isocyanate-based compositions and Yang teaches utilizing zirconium-based catalysts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Laas’s zirconium-based catalysts (such as zirconium tetra-n-propylate) as a catalyst in Yang’s polyaspartic composition, because the catalysts are simple to produce, can be employed in bulk to reduce solvent impurities, are nonhazardous compounds, and are easy to handle as taught by Laas (Laas, [0009], [0022]).
Regarding Claim 2, modified Yang teaches the polyamine includes ethylene diamine (Yang, Pgs 5-6).
Regarding Claim 3, modified Yang teaches the Michael addition receptor includes dimethyl maleate (Yang, Pg 7).
Regarding Claim 4, modified Yang teaches the polyisocyanate includes 1,4-diisocyanatobutane (i.e., 1,4-tetramethylene diisocyanate) (Yang, Pgs 10-11).
Regarding Claim 7, modified Yang teaches the zirconium-based metal catalysts can include a phosphorous, phosphoric, phosphine and/or phosphate constituent (Laas, [0049]-[0050]; Yang, Pgs 13-14).
Regarding Claim 9, modified Yang teaches the zirconium-based metal catalysts include zirconium tetra-n-propylate (i.e., zirconium tetra-n-propanolate) (Laas, [0009]-[0022]).
Regarding Claim 10, modified Yang teaches a coating composition comprising the polyaspartic composition discussed above for claim 1 (Yang, Abstract, Pgs 1, 18).
Regarding Claim 11, modified Yang teaches a substrate having applied thereto the coating discussed above for claim 10 (Yang, Abstract, Pgs 1, 18).
Regarding Claim 12, modified Yang teaches the substrate includes metal, plastic, wood, cement, or glass (Yang, Pg 18).
Regarding Claim 13, modified Yang teaches the substrate is a floor (Yang, Pg 18).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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