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
Claims 1-24 were cancelled in the preliminary amendment so the restriction requirement dated 4/16/2026 is withdrawn.
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 25-26, 28, 31, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Hurley US 20160208111A1.
Regarding claim 25 and 31, Hurley teaches a polyurethane coating (Paragraph [0007]). Hurley also teaches that a primer added to the substrate improves the performance of the coating (Paragraph [0179]). Hurley teaches the composition is a two component polyurethane composition (Paragraph [0052]). Hurley teaches the two component composition comprises an isocyanate like hexamethylenediisocyanate (Paragraph [0053-0054]). Hurley also teaches the polyol can be an acrylic polyol (Paragraph [0062]). It would have been obvious to select the acrylic polyol as the polyol because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Hurley teaches the polyurethane binder composition comprises solvent (Paragraph [0084]). This reads on the claimed “diluent.”
Hurley also teaches the polyurethane coating comprises a surfactant (Paragraph [0049]). This reads on the claimed “surface tension reducing agent.”
Hurley teaches the 2K composition has each component lack at least one of a polyisocyanate, a polyalcohol or a necessary catalyst (Paragraph [0048]). Therefore, Hurley teaches a first component which comprises a solvent, a surfactant, a polyol, and a second component comprising an isocyanate. It would have been obvious to select this makeup of the 2K composition because Hurley teaches this as a suitable makeup of the polyurethane composition. See MPEP 2144.07.
Hurley teaches the polyurethane binder is added after a primer composition to promote binding. (Paragraph [0179]). Hurley also teaches the substrate is clean before application of a primer (Paragraph [0179]. Hurley also teaches the surface can be cleaned to prepare the surface before adding the coating (Paragraph [0190]). This reads on the limitations of “preparing a surface for mechanical adhesion.”
Hurley teaches the primer is compatible with both the case coating and the substrate and improves adherence to coating and substrate (Paragraph [0179-180]).
Hurley also teaches the primer is an epoxy functional primer coating (Paragraph [0180]). This reads on the limitations of the claimed “applying an adhesion promoter.” This also reads on the claimed “epoxy based adhesion promoter.”
Regarding claim 26, Hurley teaches the substrate is a metal tape (Paragraph [0191]). This reads on the claimed “metal.”
Regarding claim 28, Hurley teaches that the substrate can be treated by abrasion with sandblasting (Paragraph [0190]). This reads on the limitations of the claimed “abrasive media.”
Regarding claim 36, Hurley teaches the coating is applied with brushing (Paragraph [0185]).
Claims 27, 29, and 30, are rejected under 35 U.S.C. 103 as being unpatentable over US Hurley 20160208111A1 in view of Prochaska, S., (Investigating Phosphoric Acid Pretreatments and Additives to Improve Polyurethane Adhesion, Reclamation, Managing Water in the West, September 2018).
Regarding claim 27 and 30, Hurley teaches the surfaces can be treated with abrasion using with chemical treatments (Paragraph [0190]). Hurley is silent on the composition of the chemical treatment.
Prochaska teaches that pretreating a surface with phosphoric acid increases the adhesion of polyurethane compositions to surfaces (Title, Abstract). It would have been obvious to use phosphoric acid of Prochaska as the chemical pretreatment of Hurley because phosphoric acid represents a suitable chemical treatment identified by Prochaska as being suitable for increasing the adhesion of polyurethane compositions to surfaces. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Phosphoric acid reads on the claimed “phosphoric acid” and the claimed “inorganic acid.”
Regarding claim 29, claim 29 teaches the components of an optional component of the acid pretreatment, therefore, Hurley in view of Prochaska reads on the limitations of claim 29.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over US Hurley 20160208111A1 in view of Huybrechts US 20120237688A1.
Regarding claim 34, Hurley is silent on the pot life of the coating composition and the cure time of the coating composition. Huybrechts teaches a two component polyurethane coating composition (Title). Huybrechts teaches the isocyanate component is hexamethylene diisocyanate (Paragraph [0035]). Huybrechts also teaches the composition comprises wetting agents (Paragraph [0085]). This reads on the claimed “surface tension reducing agent.” Huybrechts also teaches the composition is a low VOC composition (Paragraph [0107]).
Huybrechts teaches the composition is used as a coating in automotive applications (Paragraph [0104]). Hurley teaches the composition is used in automotive applications (Paragraph [0234]).
Huybrechts teaches the pot life of the composition ranges from 10 min to 6 hours (Paragraph [0026]). Huybrechts also teaches the curing time of the application is 30 minutes (Paragraph [0125]). Huybrechts also teaches the dry film thickness is 50-60 microns which correlates to 1.97-2.36 mils. This overlaps with the claimed range of 180 minutes or less for pot-life and a cure time of 48 hours of less, and a dry film thickness of 1-6 mils.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ Huybrechts’ pot life and curing time as a guideline or target when forming the composition of Hurley as these ranges are shown to be suitable for similar polyurethane coatings used in similar applications. This represents the use of a suitable pot life and curing time range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim 32 is are rejected under 35 U.S.C. 103 as being unpatentable over US Hurley 20160208111A1 in view of Ho US 20100032082A1.
Regarding claim 32, Hurley is silent on the viscosity of the coating composition. Ho teaches a polyurethane coating compositions (Paragraph [0021]). Ho teaches the polyol is an acrylate polyol (Paragraph [0046]). Ho also teaches the polyurethane coating is used in automobile applications (Paragraph [0001]). Ho also teaches the polyurethane compositions are two part compositions (Paragraph [0104]). Ho also teaches the composition comprises a surfactant (Paragraph [0103] and Paragraph [0092]).Ho also teaches the polyurethane composition has a viscosity of 70-180 mPas (Paragraph [0097]).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ Ho’s viscosity of 70-180 mPas as a guideline or target when forming Hurley’s polyurethane coating composition as this range is shown to be suitable for similar compositions used in similar applications. This represents the use of a suitable viscosity range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claims 33 and 35, are rejected under 35 U.S.C. 103 as being unpatentable over US Hurley 20160208111A1 in view of O’Brien US 20200347176A1.
Regarding claim 33, Hurley teaches there is low amounts of VOC in the composition (Paragraph [0004]). However, Hurley is silent on the exact amount of VOCs in the composition.
O’Brien teaches an polyurethane composition (Abstract). O’Brien teaches a two part polyurethane composition (Paragraph [0033]). O’Brien teaches the “B-side” comprises an acrylic polyol (Paragraph [0036]). It would have been obvious to select the acrylic polyol as the additional polyol of the B-side because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
O’Brien also teaches that the “B-side” also comprises a wetting agent and a reactive diluent (Paragraph [0037]). It would have been obvious to select wetting agent and reactive diluent as the B-side additives because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed diluent and “surface tension reducing agent.” O’Brien teaches the composition is used as a topcoat (Paragraph [0040]). O’Brien also teaches the composition is a low VOC composition. O’Brien teaches the polyurethane composition can be used in various coating applications (Paragraph [0003], [0005], and [00010]). O’Brien teaches a similar composition for a similar application.
O’Brien teaches the low VOC content of the resulting composition is less than 150g/L (Paragraph [0041]). This overlaps with the claimed range of less than 150 g/L.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ O’Brien’s VOC content as a guideline or target when forming the polyurethane composition of Hurley, as this range is shown to be suitable for similar polyurethane compositions used in similar applications. This represents the use of a suitable VOC range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 35, Hurley is silent on the hardness of the curing composition. However, O’Brien teaches the resulting polyurethane composition has a hardness of B-HB (Paragraph [0062]). This overlaps with the claimed range of 2B-5H.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ O’Brien’s pencil hardness as a guideline or target when forming the polyurethane composition of Hurley, as this range is shown to be suitable for similar polyurethane compositions used in similar applications. This represents the use of a pencil hardness range in a similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over US Hurley 20160208111A1 in view of Screen captures from YouTube video clip entitled “Apply Adhesion Promoter for Plastic, Self Etch, and Other Auto Primers with Dupli-Color® [HOW-TO]” 2 pages, uploaded on January 23, 2015 by user "Duplicolortv". Retrieved from Internet: <https://www.youtube.com/watch?v=jJgFqyziPNM&t=39s>.
Regarding claim 41, Hurley teaches that an primer coating is added to improve adhesion to the binder and the surface (Paragraph [0180]). This reads on the claimed “Adhesion promoter.” Hurley also teaches the primer has other functions including providing surface texture to the top coat and minimizing the impact of differences in thermal expansion of the coatings and the substrates, thereby to prevent cracking, pealing, and chipping of the coatings at different temperatures (Paragraph [0180]). Therefore, Hurley teaches that the adhesion promoting layer and primer layer are interchangeable terms where the primer component and adhesion promoting component can be added simultaneously.
However, Hurley is silent about the addition of a “primer layer” after the adhesion promoting layer and before the polyurethane binder. Hurley also teaches the polyurethane composition is used for coating automotive components (Paragraph [0234])
However, Duplicolortv teaches adhesion promoters can be added to automotive parts prior to adding a primer component (Duplicolortv, Pages 1-2, minutes 0:35, 1:35, 1:53). It would have been obvious to one of ordinary skill in the art to use the process of a two part addition of adhesion promoter then the primer component taught by Duplicolortv in the process taught by Hurley because this represents a suitable commercially available adhesion promoter, primer and coating composition and a suitable process for applying these components to an automotive part. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07 Therefore it would have been obvious to add the adhesion promoter and other components of the primer separately as taught by Duplicolortv where the adhesion promoter is added first and the primer layer is added second.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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