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
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, in the reply filed on 7/6/26 is acknowledged. Claims 5-7 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The specification identifies several Trademark names used in commerce, The term should be accompanied by the generic terminology; furthermore each letter of the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term See MPEP 608.01(v).
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada et al. (WO 2021159300A1).
As to claim 1, Okada discloses a coating composition (para 15), comprising (A) an isocyanate-reactive group- containing compound (para 30-35, para 8-12), (B) a polyisocyanate compound (para 19-25), and (C) a carbodiimide group-containing compound and having a solid content concentration of 90 mass% or greater (para 56).
As to claims 2-3 Okada discloses the carbodiimide group-containing compound (C) has an isocyanate group and an aromatic ring structure (para 56, carbodiimide disclosed - CARBODILITE V-05 – same as disclosed by applicant having isocyanate and aromatic ring, para 119-121 of Publication). When the claimed composition and prior art composition are identical or substantially identical, a case of anticipation exists. MPEP 2112.
As to claim 4, Okada discloses a number average molecular weight of the carbodiimide group-containing compound (C) is within a range of 500 to 5000 (para 55). See MPEP 2131.03 and 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sanson et al. US 2020/0377758, drawn to an isocyanate carbodiimide coating composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
Prosecution Insights