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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Dziczkowski et al. (US 2017/0240768 A1, “Dziczkowski”) in view of Swift et al. (US 4,076,917, “Swift”).
With respect to claims 1 and 6, Dziczkowski discloses a thermosetting composition comprising an aqueous polyester emulsion and a cross-linker ([0006-0010], [0078-0080]). The cross-linker includes a hydroxyalkylamide compound ([0080]). The polyester has an acid value of less than 50 mg KOH/g ([0060]) and a glass transition temperature (Tg) of 35-60°C ([0062]). The polyester resin includes carboxyl functional polyesters ([0085]) (i.e., the polyester has carboxyl (COOH) groups). The coating is applied to metal substrates ([0092]).
However, Dziczkowski does not disclose wherein the hydroxyalkylamide compound is a β-hydroxyalkylamide compound, nor wherein the β-hydroxyalkylamide compound contains a hydroxyl group at an equivalent ratio (OH group/COOH group molar ratio) in a range of 1.61 to 2.10 to a carboxyl group of the polyester resin.
Swift teaches reacting β-hydroxyalkylamides with any carboxy containing polymers in a ratio of 0.5-2 parts of the hydroxy functions per one part carboxy functions (Col. 1, lines 10-13; Col. 3, lines 30-34; Col. 4, lines 5-6). Having a ratio in that range allows for efficient crosslinking (Col. 3, lines 36-37). Given that the molar weight of a hydroxyl group is 17 and the molecular weight of a carboxyl group is 45, and given that there is present 33% (0.5*100/[0.5 + 1] ≈ 33%) to 67% (2*100/[2+3] ≈ 67%) of hydroxy functions and 67% (1*100/[0.5+1] ≈ 67%) to 33% (1*100/[1+2] ≈ 33%) of carboxyl functions, there is therefore 1.94 (33/17 ≈ 1.94) to 3.94 (67/17 ≈ 3.94) moles of hydroxyl and 1.49 (67/45 ≈ 1.49) to 0.73 (33/45 ≈ 0.73) of carboxyl, resulting in a molar ratio of 1.3 (1.94/1.49 ≈ 1.3) to 5.40 (3.94/0.73 ≈ 5.40). The β-hydroxyalkylamides are used in aqueous emulsions (Abstract).
Dziczkowski and Swift are analogous inventions in the field of aqueous emulsions containing hydroxyalkylamides and carboxyl functional polymers.
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 of Dziczkowski to contain a β-hydroxyalkylamide with a hydroxyl group in a molar ratio with the carboxyl functional polyester, including ratios presently claimed, as taught by Swift in order to provide for a coating having efficient crosslinking (Swift, Col. 3, lines 36-37).
Regarding the aqueous coating composition being “for a beverage metal can or metal lid”, while there may be no disclosure from Dziczkowski in view of Swift regarding the coating being “for a beverage metal can or metal lid” limitation, this limitation is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Dziczkowski in view of Swift discloses an aqueous coating composition as presently claimed, it is clear that the aqueous coating composition of Dziczkowski in view of Swift would be capable of performing the intended use (i.e., be used for a coating for a beverage metal can or a metal lid) presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
With respect to claim 3, Dziczkowski discloses the cross-linker, which is a β-hydroxyalkylamide as set forth in the above rejection of claim 1, is present in an amount of 5-50 wt% based on the weight of the polyester solids ([0086]), which overlaps the presently claimed amount of 1-20 parts by mass relative to 100 parts by mass of a solid content of the polyester resin (i.e., about 1% (100*1/[1+100] ≈ 1%) to about 17% (100*20/[20+100] ≈ 17%)).
With respect to claim 4, Dziczkowski discloses the polyester is made from a polyhydroxyl compound and a polycarboxyl compound ([0032]), where the polycarboxyl compound includes aromatic dicarboxylic acids ([0037-0038], [0057]) (i.e., the polycarboxyl compound can be entirely (100 mol%) aromatic dicarboxylic acid). Further, Table 1 exemplifies a polyester made completely from isophthalic acid and terephthalic acid ([0095]).
With respect to claim 5, given that Dziczkowski does not require the use of aliphatic dicarboxylic acid, then there is 0 mol% and thus the claim is satisfied.
With respect to claim 7, Dziczkowski discloses the coating has a thickness of about 0.1 to about 4 mils ([0092]) (i.e., about 2.54 µm to about 101.6 µm), which overlaps the presently claimed range.
Response to Arguments
Due to the amendment to claim 1, the 35 U.S.C. 112(a) rejections of claims 1 and 3-7 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections of claims 1 and 3-7 over Retsch in view of Merritt and the 35 U.S.C. 103 rejections of claims 1 and 3-7 over Seneker in view of Merritt are withdrawn. This is because Merritt teaches the equivalent ratio of β-hydroxyalkylamide (hydroxy equivalents) to carboxy-containing polyester (carboxylic acid equivalents) is in the range of 0.6:1 to 1.6:1, and that ratios outside that range are undesirable (Col. 3, lines 36-42), and thus the claimed range of 1.61:1 to 2.10:1 would not have been obvious to one of ordinary skill in the art based on the teachings of Merritt because Merritt teaches away from the claimed range. However, upon further search and consideration, claims 1 and 3-7 are now rejected under 35 U.S.C. 103 as being unpatentable over Dziczkowski in view of Swift as set forth above.
Applicant’s arguments filed 25 March 2025 have been fully considered, but they are not persuasive.
Applicant argues they have demonstrated unexpectedly superior results based on the data found in the Examples of the specification as originally filed. The examiner respectfully disagrees because the data is not commensurate in scope with the claims for at least the following reasons.
The data is not commensurate in scope with the present claims because the data relates to specific polyester resins A-E, G-I, and P being acrylic unmodified polyester resins (specification, page 27, [0048], lines 10-13). The polyester resin A has an acid value of 23 mg KOH/g, a glass transition temperature (Tg) of 80°C, and a number average molecular weight (Mn) of 8,000, made from monomers comprising: terephthalic acid/ethylene glycol/propylene glycol in a mol amount of 50/10/40 mol% and having a β-hydroxyalkylamide compound as a curing agent being N,N,N’,N’-tetrakis(2-hydroxypropyl)adipoamide having a hydroxyl value of 596 mg KOH/g, where the coating composition is made from 333 parts (100 parts solid content) of an aqueous dispersion liquid of the polyester resin A having a solid content of 30% by mass and isopropyl alcohol content of 18% by mass, and 16.7 parts (5 parts solid content) of an aqueous solution of the β-hydroxyalkylamide having a solid content of 30% by mass where a solid content blend ratio of polyester resin A/curing agent is 100/5 as a mass ratio (specification, page 31, [0058], line 21-page 32, line 8); a polyester resin B having a Tg of 67°C, Mn of 9,000, acid value of 18 mg KOH/g, and a monomer composition of terephthalic acid/isophthalic acid/ethylene glycol/neopentyl glycol in a mol amount of 36/14/24/26 mol%; a polyester resin C having a Tg of 40°C, Mn of 9,000, acid value of 17 mg KOH/g, and monomer composition of terephthalic acid/isophthalic acid/adipic acid/ethylene glycol/neopentyl glycol in a mol amount of 28/15/7/25/25 mol%; a polyester resin D having a Tg of 80°C, Mn of 5,000, and acid value of 36 mg KOH/g; a polyester resin E having an acid value of 50 mg KOH/g, Tg of 46°C; and Mn of 3,000; a polyester resin G having a Tg of -25°C, Mn of 17,000, acid value of 11 mg KOH/g, and monomer composition of terephthalic acid/isophthalic acid/sebacic acid/1,4-butanediol in mol amount of 14/17/19/50 mol%; a polyester resin H having a Tg of 8°C, Mn of 19,000, acid value of 8 mg KOH/g, and a monomer composition of terephthalic acid/isophthalic acid/sebacic acid/ethylene glycol/neopentyl glycol in mol amount of 30/5/15/22/28 mol%; a polyester resin I having a Tg of 20°C, Mn of 17,000, acid value of 8 mg KOH/g, and monomer composition of terephthalic acid/isophthalic acid/sebacic acid/ethylene glycol/neopentyl glycol in mol amount of 31/7/12/30/20 mol%; and a polyester resin P having Tg of 38°C, Mn of 6,000, and acid value of 31 mg KOH/g; where Examples 2 and 21 use polyester resin B; Examples 3 and 16-18 use polyester resin C; Example 4 uses polyester resin E; Example 8 used 70 parts by mass polyester resin A and 30 parts by mass polyester resin G, resulting in a polyester mixture having a Tg of 40.2°C and acid value of 19.4 mg KOH/g; Example 9 uses 70 parts by mass polyester resin A and 30 parts by mass polyester resin H, resulting in a polyester mixture having a Tg of 54.8°C and an acid value of 18.5 mg KOH/g; Example 10 uses 80 parts by mass polyester resin A and 20 parts by mass polyester resin I, resulting in a polyester mixture having a Tg of 65.6°C and an acid value of 20 mg KOH/g; Example 11 uses 60 parts by mass polyester resin A and 40 parts by mass polyester resin I, resulting in a polyester mixture having a Tg of 52.3°C and an acid value of 17 mg KOH/g; Examples 22-23 use polyester resin A; Example 24 uses polyester resin P; and Example 26 uses polyester resin D.
However, the present claims broadly allow for any polyester resin not modified with an acrylic resin and having an acid value of 17-50 mg KOH/g and a glass transition temperature of at least 35°C. Further, the Examples relate to a specific β-hydroxyalkylamide curing agent being N,N,N’,N’-tetrakis(2-hydroxypropyl)adipoamide having a hydroxyl value of 596 mg KOH/g, whereas the present claims broadly allow for any β-hydroxyalkylamide having any hydroxyl value.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Yabuta et al. (US 2006/0173113 A1) discloses a coating composition made from a thermosetting resin that is a polyester resin and a β-hydroxyalkylamide curing agent ([0022-0023], [0027]). The mixing ratio, on a weight basis, is COOH/OH being 0.6/1 to 1/0.6 in order to provide a coating having sufficient functional strength and water resistance ([0028]) (i.e., a weight ratio of OH/COOH is 0.6/1 to 1/0.6 (1.667/1)). However, this ratio is on a weight basis and not a molar basis as presently claimed.
Noura (JP 2011-252050 A, disclosure based off machine translation included with this action) discloses a ratio of COOH from a polyester resin and OH groups from a β-hydroxyalkylamide being 1/0.7 (i.e., an OH/COOH ratio of 0.7/1) ([0019]); however, this range does not fall within the claimed range.
Kashiwakura et al. (JP 2020-079393 A, disclosure based off machine translation included with this action) discloses an aqueous coating composition made from a polyester resin having an acid value of 10-70 mg KOH/g and a β-hydroxyalkylamide compound having an equivalent ratio of hydroxyl groups of the β-hydroxyalkylamide to carboxyl groups of the polyester resin (OH/COOH molar ratio) being 0.8 to 3.0 ([0008], [0012]). However, this reference was published after the earliest effective filing date of the present application and is therefore not eligible as prior art.
Kaplan et al. (EP 0 839 884 A2, disclosure based off machine translation of the reference included with this action) discloses a coating consisting of a carboxyl-functional polyester having a Tg of 30-80°C and acid number of about 20-100 mg KOH/g and a β-hydroxyalkylamide, wherein the equivalent ratio of β-hydroxyalkylamide equivalents to carboxylic acid equivalents is in the range of 0.6:1 to 1.6:1 ([0008]).
Yokoi et al. (JP 2003-026992 A, disclosure based off machine translation of the reference included with this action) discloses an aqueous coating composition containing an acrylic modified polyester resin (C) and a β-hydroxyalkylamide crosslinking agent (D) ([0011]). The compounding ratio of the acrylic-modified polyester resin (C) to the β-hydroxyalkylamide crosslinking agent (D) is such that the equivalent ratio of the hydroxyl groups of the β-hydroxyalkylamide to the acid of the acrylic-modified polyester resin is in the range of 0.7:1 to 1.4:1 ([0043]). However, the present claims require the polyester resin be a polyester resin that is not modified with an acrylic resin (claim 1, line 5).
Hammerton et al. (US 5,266,657) discloses a thermosetting powder coating composition made from a carboxylic acid group-containing polyester, a monocarboxylic acid group-containing material, and a β-hydroxyalkylamide curing agent (Abstract). To ensure effective cure, the equivalent ratio of the β-hydroxyalkylamide (hydroxy equivalents) to the carboxy-containing polyester (carboxylic acid equivalents) is 0.6:1 to 1.6:1 and discloses that ratios outside that range are undesirable because of poor cure (Col. 4, lines 3-9).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 08:30-17:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (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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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787