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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 September 2025 and 22 October 2025 has been entered.
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, 3, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakada (JP 2003-301137 A) in view of Swift et al. (US 4,076,917, “Swift”) and the evidence provided by Knowde (Eutomer® 552). The disclosure of Nakada is based off a machine translation of the reference included with this action.
With respect to claims 1, 3, and 6-7, Nakada discloses a coating composition used on metal cans ([0001], [0003]). The coating composition comprises two polyester resins that include: a polyester A having a glass transition temperature (Tg) of 65°C or higher, and a polyester B having a Tg of 40°C or higher and an acid value of 40-60 mg KOH/g, where the polyester B has a dicarboxylic acid component comprising 80-100 mol% aromatic dicarboxylic acid and 0-20 mol% aliphatic dicarboxylic acid ([0009]). The aliphatic dicarboxylic acid includes succinic acid (i.e., an aliphatic dicarboxylic acid having 4 carbon atoms), glutaric acid (i.e., an aliphatic dicarboxylic acid having 5 carbon atoms), and adipic acid (i.e., an aliphatic dicarboxylic acid having 6 carbon atoms) ([0014]). There is no requirement in Nakada to use an aliphatic dicarboxylic acid with more than 6 carbon atoms, and therefore the amount of an aliphatic dicarboxylic acid having more than 6 carbon atoms is 0 mol%. Further, there is no disclosure that the polyester is modified with an acrylic resin, and therefore the polyester resin is not modified with an acrylic resin as presently claimed. The coating composition also comprises 2-20 parts curing agent per 100 parts polyester resin ([0023]). The composition is applied to a metal plate where the coating has a thickness of 0.2-100 µm ([0029]).
However, Nakada does not disclose wherein the curing agent is a β-hydroxyalkylamide compound, nor wherein the β-hydroxyalkylamide compound is N,N,N’,N’-tetrakis(2-hydroxyethyl)adipoamide, nor wherein the β-hydroxyalkylamide compound contains a hydroxyl group at an equivalent ratio (OH group/COOH group molar ratio) in a range of 1.61-2.10 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). Swift further teaches bis[N,N-di(β-hydroxyethyl)]adipamide (Col. 2, lines 29-30) is an appropriate β-hydroxyalkylamide because of its excellent water solubility and fast reactivity with carboxy group (Col. 2, lines 34-39). As evidenced by Knowde, bis[N,N-di(β-hydroxyethyl)]adipamide is a synonym of N,N,N’,N’-tetrakis(2-hydroxyethyl)adipamide (Knowde, page 1, “Synonyms”).
Nakada and Swift are analogous inventions in the field of coatings for metals including cans.
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 curing agent of Nakada to be the N,N,N’,N’-tetrakis(2-hydroxyethyl)adipamide 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).
Response to Arguments
Due to the cancellation of claims 4-5, the 35 U.S.C. 103 rejections of claims 4-5 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections of claims 1, 3, and 6-7 over Dziczkowski et al. (US 2017/0240768 A1, “Dziczkowski”) in view of Swift et al. (US 4,076,917, “Swift”) are withdrawn. This is because Dziczkowski in view of Swift fails to disclose a polyester resin comprising a polyvalent carboxylic acid component comprising 80 mol% or more of an aromatic dicarboxylic acid and 20 mol% or less (exclusive of 0 mol%) of an aliphatic dicarboxylic acid. While Dziczkowski discloses the polyester is made from a polyhydroxyl compound and a polycarboxyl compound ([0032]), where the polycarboxyl compound includes aromatic and aliphatic dicarboxylic acids ([0037-0038], [0057]), Dziczkowski is silent regarding the mol% of the aromatic and aliphatic dicarboxylic acids. Further, neither Dziczkowski nor Swift disclose the polyester resin is a blend of two kinds of polyester resins with different glass transition temperatures. However, upon further search and consideration, claims 1, 3, and 6-7 are newly rejected under 35 U.S.C. 103 as being unpatentable over Nakada in view of Swift as set forth above.
Applicant’s arguments filed 25 September 2025 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the claims and the data are commensurate in scope such that the Examples found in the instant specification demonstrate novelty and non-obviousness. The examiner respectfully disagrees because the data is not commensurate in scope with the claims for 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, wherein the polyester resin comprises a polyvalent carboxylic acid component comprising 80 mol% or more of any aromatic dicarboxylic acid and 20 mol% or less (exclusive of 0 mol%) of any aliphatic dicarboxylic acid, and wherein a molar ratio of any aliphatic dicarboxylic acid having more than 6 carbon atoms is less than 10 mol% in the polyvalent carboxylic acid component constituting the polyester resin, and wherein the polyester resin is a blend of two kinds of any polyester resins different from each other in glass transition temperature in any amount.
It is not the examiner’s position that each and every embodiment falling within in the scope of the claims be tested but rather that the data be commensurate in scope with the claims. 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
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 07:30-16:00 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
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