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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 3, 2025 has been entered.
Status of Claims
Claims 1-20 are pending in the current application.
Claims 13-15 are withdrawn from consideration in the current application.
Claims 1, 2, and 20 are amended in the current application.
Response to Arguments
Applicant’s amendments and remarks filed on November 3, 2025 have been fully considered.
Applicant argues that the previously applied prior art of record does not disclose a metal salt of a carboxylic acid in an amount of at least 2 to up to 20 wt%.
Examiner acknowledges. All grounds of rejection previously set forth are withdrawn. However, new grounds of rejection are set forth below as necessitated by the present claim amendments.
Claim Interpretation
Claim 2 recites the term “substantially free.” The term "substantially" is often used in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). See MPEP 2173.05(b) III D. The specification as originally filed on Page 9 defines the term “substantially free.” For the purposes of examination, limitations preceded by the term “substantially free” are interpreted as including up to 2 percent by weight according to the broadest definition provided by the specification.
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 1-12, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Udding et al. (EP 0879856 A1) in view of Adams et al. (US 2018/0016435 A1).
Regarding Claim 1, Udding teaches a composition comprising (A) an unsaturated polyester resin comprising an unsaturated α,β-unsaturated ester group such as maleic acid (Udding, Abstract, Pg 3 Lines 10-44); (B) monomers that include (meth)acrylate compounds (acrylates or methacrylates) and vinyl esters (such as vinyl acetate, vinyl propionate, and vinyl pivalate that satisfy the formula of claim 1) (Udding, Abstract, Pg 4 Lines 1-16); (C) accelerators that include metal salts (such as zirconium carboxylates, manganese carboxylates, cobalt naphthalate, i.e., metal salts of carboxylic acids) (Udding, Abstract, Pg 4 Lines 17-25); (D) fillers; and (E) initiators (Udding, Pg 4 Line 31-58). Udding teaches (C) the accelerator metal salts are included in an amount of 0.01 to 2 wt% based on total weight of the composition (Udding, Pg 4 Lines 18-20). Udding’s range overlaps the claimed range of 2 to 20 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art to have selected and to have tried a combination of (meth)acrylate compounds (acrylates or methacrylates) and vinyl esters (such as vinyl acetate, vinyl propionate, and vinyl pivalate) as (B) the monomers from the finite listing of options disclosed by Udding with a predictable and reasonable expectation of success (MPEP 2143).
Additionally, Adams teaches a composition comprising a polyester resin comprising an unsaturated ester group such as maleic acid (Adams, Abstract, [0002], [0015]-[0016]); a reactive diluent such as acrylates and methacrylates that include trimethylolpropane tri(meth)acrylate (Adams, [0025]-[0026]); an inhibitor such as a metal naphthenate like copper naphthenate (i.e., a metal salt of a carboxylic acid) (Adams, [0037], Tables 1, 4); and vinyl molecules and additives (Adams, [0021], [0028]). Adams teaches the reactive diluent is formed of non-styrenic monomers (such as the acrylates and methacrylates) to yield a body filler formulation that reduces the risk of environmental contamination and employee exposure to styrene (Adams, [0025]-[0027]).
Since Udding and Adams both disclose polyester resin compositions and Adams suggests using non-styrenic monomers (such as the acrylates and methacrylates), it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected and tried a combination of (meth)acrylate compounds (such as those disclosed by both Adams and Udding) and vinyl esters (such as vinyl acetate, vinyl propionate, and vinyl pivalate; i.e., non-styrenic monomers) as (B) the monomers for Udding’s composition to yield a composition suitable for a body filler formulation that is able to strongly adhere to metal substrates without resorting to using styrene monomers and reduces the risk of environmental contamination and employee exposure to styrene as taught by Adams (Adams, [0002], [0006], [0009]-[0012], [0025]-[0027]).
Regarding Claim 2, modified Udding teaches the composition is able to strongly adhere to metal substrates without resorting to using styrene monomers (i.e., a vinyl aromatic compound having one vinyl substituent on an aromatic ring), and the composition is free of styrene (Adams, [0002], [0006], [0009]-[0012], [0027]).
Regarding Claim 3, modified Udding teaches the composition comprises as least one (A) dicyclopentadiene modified unsaturated polyester resin (Udding, Pg 3 Lines 19-41).
Regarding Claim 4, modified Udding teaches the acrylates and methacrylates include multifunctional (meth)acrylates that include trimethylolpropane tri(meth)acrylate (Udding, Pg 4 Lines 7-13; Adams, [0025]-[0027]).
Regarding Claim 5, modified Udding teaches the metal salt includes a cobalt naphthenate (i.e., a cobalt (II) salt of a carboxylic acid of naphthenic acid) (Udding, Pg 4 Line 18-21).
Regarding Claim 6, modified Udding teaches the composition can include a free-radical inhibitor such as a hydroquinone (Udding, Pg 4 Lines 26-30).
Regarding Claims 7 and 8, modified Udding the composition comprises an inorganic filler such as talcum (Udding, Pg 4 Lines 31-42).
Regarding Claim 9, modified Udding teaches the composition comprises a tertiary amine (Udding, Pg 4 Lines 17-25).
Regarding Claim 10, modified Udding teaches the tertiary amine includes N,N-dimethyl para-toluidine (Udding, Pg 4 Lines 21-25).
Regarding Claim 11, modified Udding teaches the composition discussed above for claim 1. Modified Udding teaches the composition is for filling and repairing car body parts (Udding, Pg 2 Lines 1-12). Modified Udding teaches the composition can include organic peroxide and/or an hydroperoxide initiators (Udding, Pg 4 Lines 43-49).
Modified Udding remains silent regarding a two-part body repair composition.
Adams, however, teaches a resin composition for autobody repairs that is stored as part of a two-part formulation having a part A that includes all components except for an initiator package and part B that includes the initiator package, where the part B initiator package comprises an organic peroxide and/or an hydroperoxide (Adams, [0002]-[0006], [0038]-[0041]). Adams teaches the resin composition comprises a polyester resin comprising an unsaturated ester group such as maleic acid (Adams, Abstract, [0002], [0015]-[0016]); a reactive diluent such as acrylates and methacrylates that include trimethylolpropane tri(meth)acrylate (Adams, [0025]-[0026]); an inhibitor such as a metal naphthenate like copper naphthenate (i.e., a metal salt of a carboxylic acid) (Adams, [0037], Tables 1, 4); and vinyl molecules and additives (Adams, [0021], [0028]).
Since Udding and Adams both disclose similar polyester resin compositions for repairing car body parts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted Udding’s composition according to Adams’ storage guidance to yield a two-part body repair composition that is able to strongly adhere to metal substrates without resorting to using styrene monomers, reduces the risk of environmental contamination and employee exposure to styrene, and exhibits sufficient bond strength without tearing or chipping at perimeter edges as taught by Adams (Adams, [0002], [0006], [0009]-[0012], [0025], [0027], [0041]).
Regarding Claim 12, modified Udding teaches an article prepared from the composition of claim 11 by combining the part A and the part B (Adams, [0038]-[0041]).
Regarding Claim 19, modified Udding teaches the metal salt includes cobalt naphthenate that is a metal salt of a carboxylic acid that is a 2+ transition metal (Udding, Pg 4 Line 18-21).
Regarding Claim 20, modified Udding teaches the composition comprises the acrylates and methacrylates in an amount of 20 to 100 wt% relative to a total weight of the unsaturated polyester (Udding, Pg 4 Lines 7-13; Adams, [0025]-[0027]). Modified Udding’s range overlaps the claimed range of 10 to 50 wt% relative to a total weight of the composition, and therefore, renders obvious the claimed range (MPEP 2144.05).
Claims 3, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Udding et al. (EP 0879856 A1) in view of Adams et al. (US 2018/0016435 A1) as applied to claim 1 above, and further in view of Ruggeberg (WO 95/19379 A1).
Regarding Claims 3, 17, and 18, modified Udding teaches the composition as discussed above for claim 1. Modified Udding teaches the unsaturated polyester formed from an unsaturated acid such as maleic acid (Udding Pg 3 Lines 10-44). Modified Udding teaches the unsaturated polyester can be prepared by using dicyclopentadiene (Udding, Pg 3 Lines 19-41). Modified Udding teaches the composition is for automobile body repair and adhesion to metal substrates (Udding Pg 2 Lines 1-20; Adams, [0003]-[0008], [0011], [0038]).
Modified Udding remains silent regarding an unsaturated polyester being modified with dicyclopentadiene end-caps as required by claims 3, 17, and 18.
Ruggeberg, however, teaches a resin composition for automobile body repair and adhesion to metal substrates comprising an unsaturated polyester formed with an unsaturated dibasic acid such as maleic acid, where the unsaturated polyester is modified with dicyclopentadiene end-capped moieties (Ruggeberg, Abstract, Pgs 1-4, 6-7). Ruggeberg teaches the resin composition also comprises acrylates and other additives and fillers (Ruggeberg, Pg 8).
Since modified Udding and Ruggeberg both disclose compositions for automobile body repair and adhesion to metal substrates comprising unsaturated polyesters formed with maleic acid and (meth)acrylate compounds and modified Udding suggests using dicyclopentadiene to prepare unsaturated polyester, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have terminally functionalized modified Udding’s unsaturated polyester with Ruggeberg’s dicyclopentadiene end-capped moieties to yield a composition that has improved adherence to metal surfaces, provides improved flexibility, provides rapid sand-ability, and reduces likelihood of disengaging from an automobile surface as taught by Ruggeberg (Ruggeberg, Pgs 3, 10).
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Udding et al. (EP 0879856 A1) in view of Adams et al. (US 2018/0016435 A1) as applied to claim 1 above, and further in view of Miller (US 2005/0209358 A1).
Regarding Claims 6 and 16, modified Udding teaches the composition as discussed above for claim 1. Modified Udding teaches the composition can include additives to improve substrate adhesion (Udding, Pg 2 Lines 15-16; Adams, [0028]).
Modified Udding remains silent regarding an adhesion promoter comprising at least one acid group and at least one carbon-carbon double or triple bond.
Miller, however, teaches a curable composition comprising a thermoplastic such as a polyester and an ethylenically unsaturated adhesion promoting monomer that includes acrylic acid or methacrylic acid (Miller, Abstract, [0002]-[0011], [0013]-[0015]).
Since modified Udding and Miller both disclose compositions comprising polyesters and modified Udding suggests including additives to improve adhesion, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Miller’s adhesion promoting monomer into modified Udding’s composition to achieve excellent curing, excellent sand-ability, excellent adhesion, and enhanced coating performance as taught by Miller (Miller, [0002], [0008], [0014]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782