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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/9/26 has been entered.
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 8-10 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Smets et al. (US PG Pub 2017/0137665; hereafter ‘665) in view of Joseph (Ron Joseph, Solvent Entrapment on Paint Coatings, March, 2005, found at https://www.paintcenter.org/rj/mar05v.php; hereafter Joseph).
Claim 8: ‘665 is directed to a method for applying at least two coatings layers on a substrate (the coating system is comprised of an undercoat and an overcoat, abstract), comprising:
step 1: applying an undercoat coating composition to the substrate (abstract), the undercoat composition comprising at least 20% by weight of a polyester resin (¶s 153-159), 8-40 %wt of a guanamine formaldehyde resin having no polyester groups (Uramex BF891, a butylated benzoguanamine formaldehyde resin, Table 1, ¶s 103-110 & 153-159), 30-70 wt% of an organic solvent with a boiling point of 50-98ºC (selected from benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC); ¶s 134-136), a curing catalyst (¶s 126-128), and a pigment (¶s 128-130);
step 2.5: heating the coated substrate to a peak metal temperature of 200ºC (¶ 188);
step 3: applying an overcoat composition to the substrate (abstract), the overcoat composition comprising 5-80% by weight of a polyester resin (¶s 153-159), 2-30 %wt of a guanamine formaldehyde resin having no polyester groups (Uramex BF891, a butylated benzoguanamine formaldehyde resin, Table 1, ¶s 103-111 & 153-159), selecting one solvent from the group of benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) at 30-70 wt% (i.e. an organic solvent with a boiling point of 50-98ºC; ¶s 134-136), a curing catalyst (¶s 126-128);
step 4: heating the coated substrate to a peak metal temperature of 200ºC (¶s 188-189).
Although the taught ranges are not explicitly the claimed ranges, they do overlap the claimed ranges. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed ranges since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
‘665 teaches that the one or more solvent is used from the list (see ¶ 134)
It would have been obvious to one of ordinary skill in the art at the time of filing to use a single solvent because ‘665 teaches that it is an art recognized option and it would have simplified the process and the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
It would have been obvious to one of ordinary skill in the art at the time of filing to select one of benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
Thus, it is apparent that ‘665 teaches using a single solvent selected from benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) and therefore teaches a coating composition which comprises less than 8 wt% solvents with an atmospheric pressure boiling point of > 120ºC because it renders obvious using only the solvents with a boiling point between 77.1-97ºC.
‘665 does not teach a step 2 of heating the first layer (undercoat) to a peak metal temperature of at most 100ºC.
However, Joseph, which is directed towards solvent-borne heat curable coating, teaches performing a solvent-flash prior to the thermal curing step to remove all of the solvents in the coating prior to curing and avoid solvent entrapment by flashing the solvent at room temperature or a slightly elevated temperature (see pg 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Joseph into the process of ‘665 which is a solvent borne thermally cured coating to first do a solvent-flash prior to thermally curing because it is an art recognized step in solvent based coating systems and would have predictably avoided solvent entrapment in the coatings of ‘665.
Although the taught range of slightly elevated temperature explicitly the claimed range of a PMT of at most 100ºC, it does overlap the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the slightly elevated temperature used for the flash-off because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 9: The substrate can be a metal can (i.e. a metal foil; ¶ 2).
Claim 10: The overcoat optionally comprises a pigment (¶ 128). I.e. ‘665 teaches that the overcoat can optionally be pigmented and thus teaches that the overcoat may be a clearcoat.
Claim 18: ‘665 is directed to a method for applying at least two coatings layers on a substrate (the coating system is comprised of an undercoat and an overcoat, abstract), comprising:
step 1: applying an undercoat coating composition to the substrate (abstract), the undercoat composition consisting of at least 20% by weight of a polyester resin (¶s 153-159), 8-40 %wt of a guanamine formaldehyde resin having no polyester groups (Uramex BF891, a butylated benzoguanamine formaldehyde resin, Table 1, ¶s 103-110 & 153-159), 30-70 wt% of an organic solvent with a boiling point of 50-98ºC (selected from benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC); ¶s 134-136), a curing catalyst (¶s 126-128), and a pigment (¶s 128-130), wherein the rest of the components of ‘665 read on the optional pigments, fillers, and rheology modifiers;
step 2.5: heating the coated substrate to a peak metal temperature of 200ºC (¶ 188);
step 3: applying an overcoat composition to the substrate (abstract), the overcoat composition consisting of 5-80% by weight of a polyester resin (¶s 153-159), 2-30 %wt of a guanamine formaldehyde resin having no polyester groups (Uramex BF891, a butylated benzoguanamine formaldehyde resin, Table 1, ¶s 103-111 & 153-159), selecting one solvent from the group of benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) at 30-70 wt% (i.e. an organic solvent with a boiling point of 50-98ºC; ¶s 134-136), a curing catalyst (¶s 126-128), wherein the rest of the components of ‘665 read on the optional pigments, fillers, and rheology modifiers;
step 4: heating the coated substrate to a peak metal temperature of 200ºC (¶s 188-189).
Although the taught ranges are not explicitly the claimed ranges, they do overlap the claimed ranges. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed ranges since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
‘665 teaches that the one or more solvent is used from the list (see ¶ 134)
It would have been obvious to one of ordinary skill in the art at the time of filing to use a single solvent because ‘665 teaches that it is an art recognized option and it would have simplified the process and the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
It would have been obvious to one of ordinary skill in the art at the time of filing to select one of benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
Thus, it is apparent that ‘665 teaches using a single solvent selected from benzene (Tbp=80.1ºC), ethanol (Tbp=78.4ºC), ethyl acetate (Tbp=77.1ºC), or n-propanol (Tbp=97ºC) and therefore teaches a coating composition which comprises less than 8 wt% solvents with an atmospheric pressure boiling point of > 120ºC because it renders obvious using only the solvents with a boiling point between 77.1-97ºC.
‘665 does not teach a step 2 of heating the first layer (undercoat) to a peak metal temperature of at most 100ºC.
However, Joseph, which is directed towards solvent-borne heat curable coating, teaches performing a solvent-flash prior to the thermal curing step to remove all of the solvents in the coating prior to curing and avoid solvent entrapment by flashing the solvent at room temperature or a slightly elevated temperature (see pg 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Joseph into the process of ‘665 which is a solvent borne thermally cured coating to first do a solvent-flash prior to thermally curing because it is an art recognized step in solvent based coating systems and would have predictably avoided solvent entrapment in the coatings of ‘665.
Although the taught range of slightly elevated temperature explicitly the claimed range of a PMT of at most 100ºC, it does overlap the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the slightly elevated temperature used for the flash-off because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over ‘665 in view of Joseph as applied above, and further in view of Selepack et al. (US PG Pub 2013/0098928; hereafter ‘928).
Claim 11: As discussed above, the combination teaches performing a solvent-flash prior to performing the curing step.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Joseph into the process of ‘665 which is a solvent borne thermally cured coating to first do a solvent-flash prior to thermally curing because it is an art recognized step in solvent based coating systems and would have predictably avoided solvent entrapment in the coatings of ‘665.
Although the taught range of slightly elevated temperature explicitly the claimed range of a PMT of at most 100ºC, it does overlap the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the slightly elevated temperature used for the flash-off because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
The combination does not teach that the coated substrate is further mechanically treated by coiling.
However, ‘928, which is directed towards applying coatings to metal cans (see title & abstract) teaches that after applying the coatings the metal substrate can be rolled back into a coil for easy transportation to the next processing stage (¶ 17).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘928 into the combination and recoil the coated metal because it is an art recognized step in the metal can coating process which would have further improved the process of the combination by making it easier to transport the coated metal substrates to the next processing step.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over ‘665 in view of Joseph as applied above, and further in view of The Garage Journal (Rattle Can Paint Cure Question, The Garage Journal, found at https://www.garagejournal.com/forum/threads/rattle-can-paint-cure-question.318737/, 1/31/2016; hereafter The Garage Journal).
Claim 12: The combination teaches applying an undercoat and an overcoat which reads on the composition of claim 1 as discussed above and further teaches that the coatings can be applied by spraying (¶ 148) and can be applied to any suitable thickness (¶ 149).
The combination does not teach applying a second layer of the undercoat between the undercoat and the overcoat.
However, The Garage Journal, which is directed towards spraying on curing coatings (title & Post #1) discloses that it is known in the art to apply multiple thinner coats with a flash-off and full cure between each coating to obtain a desired thickness instead of a single thick coating in one pass because of improved curing time (see Post #10).
It would have been obvious to one of ordinary skill in the art at the time of filing to repeat the application process of the undercoat multiple times to obtain the desired coating thickness because as discussed above, it is recognized in the art to use multiple thinner coats with full curing between coat to obtain the desired thick coating thickness as a suitable alternative to applying a single thick coat and the use of multiple thin coats with full cure would predictably reduce the total cure time and produce a better film.
Thus, the combination of ‘665, Joseph, and The Garage Journal renders obvious a step after step 3 and before step 4 of applying a further pigmented composition of claim 1 with the flash off temperature of at most 100ºC.
Response to Arguments
Applicant's arguments filed 2/9/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that the currently recited claim limitation of step 2 precludes any heat treatment greater than 100ºC prior to applying the second layer in step 3; after further consideration the Office does not find this argument convincing because the claims are “comprising” claims and use of the term “a treated first layer” in steps 2 & 3 of claims 8 & 18 does not preclude any steps between steps 2 & 3 nor would an additional heating step greater than 100ºC necessarily change the identification of the “a treated first layer” because said “treated first layer” would still be a treated first layer which has undergone a heat treatment less than 100ºC and a heat treatment greater than 100ºC of which the less than 100ºC heat treatment reads on the claimed step 2 and the second heat treatment has not be precluded by the claims as recited.
In regards to applicant’s argument that ‘665 does not provide any reasons for using a single solvent; the Office does not find this argument convincing because ‘665 teaches one or more solvents can be used and thus teaches a single solvent system and the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
In regards to applicant’s discussion that the list of solvents in ‘665 includes solvents having a boiling point of 50-98ºC and solvents that have a boiling point > 120ºC; applicant is advised that the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
In regards to applicant’s argument directed towards the statement that choosing a single solvent reduces complexity; applicant has not provided any evidence that it does not reduce complexity and given that ‘665 teaches a single solvent it is apparent that it recognizes that each and every listed solvent is suitable as the only solvent in the system because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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