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 .
DETAILED ACTION
Claim Objections
Claim 20 is objected to because of the following informalities: In line 2, the word “plush” should be “plus”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 and 19-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "an aliphatic polyisocyanate which is different to the at least one aliphatic polyisocyanate….” It is not clear in what way this additional aliphatic polyisocyanate is different than the at least one aliphatic polyisocyanate, especially since the composition may already contain more than one aliphatic polyisocyanate, and these two or more aliphatic polyisocyanate must differ in some manner.
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 7-8, 11-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ness and Partington (EP 3601785 B1, published 27 Oct. 2021, hereinafter Ness).
Regarding claims 1-4, 7-8, 11-17, and 19-21, Ness teaches a polyurea protective coating for a wind turbine blade (paragraph 0001). Ness teaches his coating composition comprises a polyamine resin and a polyisocyanate resin that comprises one or more aliphatic isocyanates (paragraph 0011), and the polyamine resin comprises one or more polyaspartic ester amines (paragraph 0050). Ness teaches an isocyanate prepolymer by reacting isophorone diisocyanate with a primary diamine and a primary triamine, and Ness teaches the inclusion of difunctional and trifunctional isocyanates (paragraphs 0021-0022 and 0160); thus, his isocyanate prepolymer has a functionality between 2 and 3 and contains an isophorone diisocyanate trimer. Ness teaches a ratio of polyisocyanate resin to polyamine (polyaspartic ester amine) 10:90 to 50:50 (paragraph 0063), and the ratio of isocyanate groups to amine groups of 0.8:1.0 to 2.0:1.0 (paragraph 0064). Ness teaches the inclusion of a cycloaliphatic isophorone diamine aldimine (paragraph 0084). Ness teaches the inclusion of a hindered amine as a UV absorber (paragraph 0071), that is, a HALS compound.
It is the examiner’s position that Ness’s isocyanate prepolymer described in paragraph 0160 would also result in at least two different aliphatic isocyanate moieties.
Ness does not disclose the tensile strain nor tensile stress of his cured composition. However, given that the coating for a wind turbine as taught by Ness has the same composition as the claimed coating for a wind turbine blade, the coating taught by Ness would inherently have the same tensile strain and tensile stress as the claimed invention, and therefore, would fall within the claimed ranges for tensile strain and tensile stress.
In light of the overlap between the claimed wind turbine blade and that disclosed by Ness, it would have been obvious to one of ordinary skill in the art to use a wind turbine blade that is both disclosed by Ness and is encompassed within the scope of the present claims, and thereby, arrive at the claimed invention.
Claims 1, 3-7, 10-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bernad et al. (US Patent Application 2022/0259456 A1, priority 28 Jun. 2019, published 18 Aug. 2022, hereinafter Bernad).
Regarding claims 1, 3-7, 11-17, and 19-21, Bernad teaches a coating composition for wind turbine blades, in which the coating comprises a polyetheraspartic ester and a curing agent (Abstract). Bernad teaches the curing agent is one or more polyisocyanates with an average functionality of 2-4 (claims 7-8). Bernad teaches the use of isocyanates with three isocyanate groups (paragraph 0038) and with two isocyanate groups (paragraph 0039). Bernad teaches coating composition comprising both a polyaspartic ester and a polyether aspartic ester at weight ratios of 1:3.9 (6.3:24.4) to 4.2:1 (24.9:6) (Table 4b), and the ratio of isocyanate to amine groups is 1.01:1.0 to 1.11:1.0 (Tables 4a and 4b), and the ratio of polyaspartic ester to polyisocyanate is about 44:31 (Table 4b). Bernad teaches the polyisocyanate is a derivative of an isophorone diisocyante (paragraph 0036). Bernda teaches the inclusion of a hindered amine light stabilizer (HALS) (paragraph 0049).
Bernad does not disclose the tensile strain nor tensile stress of his cured composition. However, given that the coating for a wind turbine as taught by Bernad has the same composition as the claimed coating for a wind turbine blade, the coating taught by Bernad would inherently have the same tensile strain and tensile stress as the claimed invention, and therefore, would fall within the claimed ranges for tensile strain and tensile stress.
In light of the overlap between the claimed wind turbine blade and that disclosed by Bernad, it would have been obvious to one of ordinary skill in the art to use a wind turbine blade that is both disclosed by Bernad and is encompassed within the scope of the present claims, and thereby, arrive at the claimed invention.
Regarding claim 10, Bernad teaches the elements of claim 1, and Bernad teaches the curing agent is one or more polyisocyanates with an average functionality of 2-4 (claims 7-8).
Bernad does not disclose the relative amounts of multiple polyisocyanates; however, Bernad teaches (paragraph 0045):
“The choice of the one or more polyisocyanates to be comprised in the curing agent may be based on the desired properties of the coating composition, such as the preferred degree of viscosity of the coating composition and flexibility of the coating layer. The term “one or more polyisocyanates” indicates that a blend of polyisocyanates can be used.”
It is the examiner’s position that one of ordinary skill in the art would use this teaching by Bernad to optimize the coating properties by varying the relative amounts of the multiple polyisocyanates, including the amount of a second polyisocyanate, and thereby arrive at the claimed relative amount of the second polyisocyanate.
Claims 1-6, 8-9, 11-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Squiller et al. (US Patent Application 2016/0024339 A1, published 28 Jan. 2016, hereinafter Squiller).
Regarding claims 1-6, 8-9, 11-17, and 19-21, Squiller teaches a coating composition comprising a polyisocyanate, a polyaspertic ester, and a polyetheraspertic ester (Abstract). Squiller teaches the use of a combination of aliphatic diisocyanates, including isophorone diisocyanate and trimers (paragraphs 0035, 0036, and 0038). Squiller teaches the inclusion of a polyaldimine with a cyclic ring and is a rection product of an isobutyraldehyde and an isophorone diamine (claims 18 and 19). Squiller teaches the ratio of both polyaspertic and polyetheraspertic esters to polyaldimine is 99:1 to 5:95 (paragraph 0106), which corresponds to the polyaldimine being 1 to 95% of the total of three components. Squiller teaches a composition comprising 6.31 parts of a polyaspertic ester, 47.30 parts of a polyetheraspertic ester, and 36.24 parts of an isocyanate, and this composition has a NCO:NH ratio of 1.1:1 (Table 1); thus, Squiller teaches an A:B ratio of 1.48:1 ((6.31+47.3):36.24). SquillerSquiller teaches his composition may comprise conventional additives appropriate to the system (paragraph 0107).
Squiller does not disclose the tensile strain nor tensile stress of his cured composition. However, given that the coating as taught by Bernad has the same composition as the claimed coating, the coating taught by Bernad would inherently have the same tensile strain and tensile stress as the claimed invention, and therefore, would fall within the claimed ranges for tensile strain and tensile stress.
Squiller teaches his coating compositions can be applied onto any compatible substrate, including metals, plastics, ceramics, glass, and natural materials (paragraph 0112).
Squiller does not disclose the use of his coating composition as a coating on a wind turbine blade. However, given that the composition taught by Squiller is the same as the claimed composition, it is the examiner’s position that one of ordinary skill in the art would have an expectation of success in using his coating on a wind turbine blade. Further, Squiller teaches that the reaction of polyisocyanates with polyamines results in polymers with excellent mechanical and chemical resistance properties, such as abrasion, solvent, and weathering resistance (paragraph 0003), and it is the examiner’s position that one of ordinary skill in the art would recognize that these properties are relevant for the coatings on wind turbine blades.
In light of the overlap between the claimed wind turbine blade and that disclosed by Bernad, it would have been obvious to one of ordinary skill in the art to use a wind turbine blade that is both disclosed by Bernad and is encompassed within the scope of the present claims, and thereby, arrive at the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4-14, 16, and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 17-21 of copending Application No. 18/879,619. As shown in Table 1, the claims and their interdependencies are identical or not patently distinct to corresponding claims in co-pending Application 18/879,619.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Table 1: Listing of corresponding claims for double patenting rejections
Application 18/879,660
Co-Pending Application 18/879,619
1. A wind turbine blade, preferably the leading edge of a wind turbine blade, coated with a coating composition comprising: (A) at least one polyaspartic selected from the group consisting of polyaspartic esters, polyetheraspartic esters and mixtures thereof; and (B) at least one aliphatic polyisocyanate prepolymer curing agent with a functionality of 1.2 to 3.5; wherein component (B) further comprises an aliphatic polyisocyanate which is different to the at least one aliphatic polyisocyanate prepolymer curing agent.
2. The wind turbine blade of claim 1, wherein the component (A) further comprises a cycloaliphatic diamine
aldimine.
1. A wind turbine blade, preferably the leading edge of a wind turbine blade, coated with a coating composition comprising: (A) at least one polyaspartic selected from the group consisting of polyaspartic esters, polyetheraspartic esters and mixtures thereof; and (B) at least one aliphatic polyisocyanate prepolymer curing agent; wherein the component (A) further comprises a cycloaliphatic diamine aldimine.
2. The wind turbine blade of claim 1, wherein component (B) further comprises an aliphatic polyisocyanate which is different to the at least one aliphatic polyisocyanate prepolymer curing agent.
10. The wind turbine blade as claimed of claim 2, wherein the aliphatic polyisocyanate is an isocyanate trimer or biuret.
11. The wind turbine blade of claims 2, wherein the least one aliphatic polyisocyanate prepolymer curing agent has a functionality of 2.
4. The wind turbine blade of claim 1, wherein the polyaspartic in component (A) is a polyaspartic ester or a polyetheraspartic ester.
3. The wind turbine blade of claim 1, wherein the polyaspartic in component (A) is a polyaspartic ester or a polyetheraspartic ester.
5. The wind turbine blade of claim 1, wherein component (A) comprises a mixture of at least one polyaspartic ester and at least one polyetheraspartic ester.
4. The wind turbine blade of claim 1, wherein component (A) comprises a mixture of at least one polyaspartic ester and at least one polyetheraspartic ester.
6. The wind turbine blade of claim 1, wherein the weight ratio of the at least one polyaspartic ester to the at least one polyetheraspartic ester is in the range 99:1 to 1:99.
5. The wind turbine blade of claim 1, wherein the weight ratio of the at least one polyaspartic ester to the at least one polyetheraspartic ester is in the range 99:1 to 1:99.
7. The wind turbine blade of claim 1, wherein component (A) further comprises a UV stabilizer and/or a UV absorber.
6. The wind turbine blade claim 1, wherein component (A) further comprises a UV stabiliser stabilizer and/or a UV absorber.
8. The wind turbine blade of claims 2, wherein said cycloaliphatic diamine aldimine is an isophorone diamine aldimine.
7. The wind turbine blade of claim 1, wherein said cycloaliphatic diamine aldimine is an isophorone diamine aldimine
9. The wind turbine blade of claim 2, wherein component (A) further comprises a cycloaliphatic diamine aldimine in an amount of 3 to 30 wt%, relative to the total weight of the at least one polyaspartic and aldimine combined.
8. The wind turbine blade of claim 1, wherein component (A) further comprises a cycloaliphatic diamine aldimine in an amount of 3 to 30 wt%, relative to the total weight of the at least one polyaspartic and aldimine combined.
10. The wind turbine blade of claim 1, wherein component (B) comprises an aliphatic isocyanate, which is different to the at least one aliphatic polyisocyanate prepolymer curing agent, in an amount of 2.5 to 30 wt%, relative to the total weight of the at least one aliphatic polyisocyanate prepolymer curing agent and aliphatic polyisocyanate combined.
9. The wind turbine blade of claim 1, wherein component (B) further comprises an aliphatic isocyanate, which is different to the at least one aliphatic polyisocyanate prepolymer curing agent, in an amount of 2.5 to 30 wt%, relative to the total weight of the at least one aliphatic polyisocyanate prepolymer curing agent and aliphatic polyisocyanate combined.
11. The wind turbine blade of claim 1, wherein the aliphatic polyisocyanate is an isocyanate trimer.
10. The wind turbine blade of claim 2, wherein the aliphatic polyisocyanate is an isocyanate trimer or biuret.
12. The wind turbine blade of claim 1, wherein the least one aliphatic polyisocyanate prepolymer curing agent has a functionality of 2.
11. The wind turbine blade of claim 2, wherein the least one aliphatic polyisocyanate prepolymer curing agent has a functionality of 2.
13. The wind turbine blade of claim 1, wherein the at least one polyaspartic, plus optional aldimine, and the at least one aliphatic polyisocyanate prepolymer, plus aliphatic polyisocyanate, are present in amounts corresponding to a ratio of equivalents of isocyanate (NCO) groups to the total number of NH groups of from 0.75-1.25:1.
12. The wind turbine blade of claim 1, wherein the at least one polyaspartic, and aldimine, and the at least one aliphatic polyisocyanate prepolymer, plus optional aliphatic polyisocyanate, are present in amounts corresponding to a ratio of equivalents of isocyanate (NCO) groups to the total
number of NH groups of from 0.75-1.25:1.
14. The wind turbine blade f claim 1, wherein the weight ratio of component (A) to component (B) is in the range 1:5 to 5:1.
13. The wind turbine blade of claim 1, wherein the weight ratio of component (A) to component (B) is in the range 1:5 to 5:1.
16. The wind turbine blade of claim 1, wherein said coating composition, after curing, has a tensile stress of greater than 20 MPa, when measured using a modified procedure based on ISO 527 at 23°C as described under "Test Methods".
14. The wind turbine blade of claim 1, wherein said coating composition, after curing, has a tensile stress of greater than 20 MPa, when measured using a modified procedure based on ISO 527 at 23 °C as described under "Test Methods".
21. The wind turbine blade of claim 1, wherein said coating composition, after curing, has a tensile stress of greater than 25 MPa when measured using a modified procedure based on ISO 527 at 23 °C as described under "Test Methods".
19. The wind turbine blade of claim 1, wherein component (A) further
comprises a hindered amine light stabiliser (HALS).
17. The wind turbine blade of claim 1, wherein component (A) further comprises a hindered amine light stabiliser (HALS).
20. The wind turbine blade of claim 1, wherein the at least one polyaspartic, plush optional aldimine, and the at least one aliphatic polyisocyanate prepolymer, plus aliphatic polyisocyanate, are present in amounts corresponding to a ratio of equivalents of isocyanate (NCO) groups to the total number of NH groups of from 0.9-1.1:1.
18. The wind turbine blade of claim 1, wherein the at least one polyaspartic, and aldimine, and the at least one aliphatic polyisocyanate prepolymer, plus optional aliphatic polyisocyanate, are present in amounts corresponding to a ratio of equivalents of isocyanate (NCO) groups to the total number of NH groups of from 0.9-1.1: 1.
21. The wind turbine blade of claim 1, wherein the weight ratio of component (A) to component (B) is in the range 1:3 to 3:1.
19. The wind turbine blade of claim 1, wherein the weight ratio of component (A) to component (B) is in the range 1:3 to 3:1.
20. The wind turbine blade of claim 1, wherein the weight ratio of component (A) to
component (B) is in the range 1:2 to 2:1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Best et al. (US Patent Application 2013/0203934 A1, published 08 Aug 2013) teaches a two-component coating comprising an aliphatic isocyanate, a cycloaliphatic isocyanate, and at least one polyaspartic ester compound (Abstract). Covestro (EP 3626755 A1, published 25 Mar. 2020) teaches a coating comprising and two or more isocyanates, at least one polyaspartic ester, and a polyetheraspartic ester (Abstract). Greszta-Franz et al. (US Patent Application 2022/0145121 A1, published 12 May 2022) teaches a two-component outer coating comprising polyaspartic esters (Abstract). Kopp and Schweigert (US Patent Application 2021/0171702 A1, published 10 Jun. 2021) teaches a two-component polyurea composition comprising polyisocyanate and derivatives of polyaspartic esters (Abstract). Laas et al. (US Patent Application 2016/0060380 A1, published 03 Mar. 2016) teaches a two-component coating comprising polyaspartic esters and at least one isocyanate (Abstract). Lincker et al. (US Patent Application 2023/0121036 A1, priority 04 Mar. 2020, published 20 Apr. 2023) teaches a three-component kit for producing a coating comprising a polyaspartic ester, an isocyanate, a HALS additive, and a solvent (Abstract). Liu et al. (CN 106519937 A, published 22 Mar. 2017) teaches a wind turbine blade leading edge protective paint comprising a polyaspartic ester, a polyisocyanate, and a UV light absorber (Abstract). Luo et al. (CN 107541107 A, published 05 Jan. 2018) teaches a polyurea aspartate coating for fan blades comprising polyaspartic ester resin and a curing agent. Mager et al. (US Patent Application 2007/0078255 A1, published 05 Apr. 2007) teaches a two-component coating comprising a polyurethane prepolymer and amino-functional polyaspartic esters (Abstract). Yonggang et al. (CN 102391771 A, published 28 Mar. 2012) teaches a coating for wind turbine blades comprising a polyaspartic ester and an aliphatic isocyanate (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
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