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
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.
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 1-6, 8, 11-14, 16, 17, 19, 20, 28 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan (US20190085200, herein Jordan), in the view of Hensel (US20180305579, herein Hensel).
Regarding Claims 1, 3, 4, 11, 28, Jordan teaches coating composition as chemical barrier [0013-14], in the latex formation of core-shell particles [0090], with core comprising acrylic polymer [0088]; polymeric shell comprising urethane linkages [0078], core-shell particle in the range of 5-40% [0104], overlaps the claimed range. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have optimize and utilize the core-shell particles [0090], with core comprising acrylic polymer [0088]; polymeric shell comprising urethane linkages [0078], in the range of 5-40% [0104], into the coating composition formation. Doing so would further lead to the desired property of improving the elastomeric properties of the final cured coating while maintaining good barrier properties [0105] as taught by Jordan.
Jordan teaches the polyurethane shell can be prepared using, polyols such as polyester polyols, polyisocyanates [0078] which reads on the reaction mixture. Jordan does not explicitly teach the polyol is formed from monomers comprising a monomer content including at least 25 wt% polyol and/or polyacid containing cyclic content, based on the total weight of the monomers forming the polyol. However, Hensel teaches at least 25 weight %, based on the total weight of the reactants used to prepare the polyester polyol [0017] lie in the claimed range, wherein the polyol comprising 3 or more hydroxyl groups can include various types of polyols such as cyclic polyols [0016] reads on the substituted polyol. Hensel further teaches a polyol component that also contains at least 10 wt% of a diol such as neopentyl glycol [0014-15], which has two pendant methyl groups. Jordan and Hensel are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyester polyol-based coating composition for metallic or non-metallic substrates surface protection. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jordan to substitute at least 25 weight %, based on the total weight of the reactants used to prepare the polyester polyol [0017]; wherein The polyol comprising 3 or more hydroxyl groups can include various types of polyols such as cyclic polyols [0016]; polyol component that also contains at least 10 wt% of a diol such as neopentyl glycol [0014-15], into the coating composition formation. Doing so would further lead to the desired property of good stain resistance and soft touch properties [0026] as taught by Hensel.
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). See MPEP § 2144.05.
Regarding Claim 2, Jordan teaches the suitable aqueous dispersible resins include acrylic resins [0123] matches the claimed second resin.
Regarding Claims 5, 16, Jordan and Hensel teach the composition of claim 1 as shown above. Jordan does not teach the specific polyester polyol preparation. However, Hensel teaches polyester polyol formed via 2-methyl-1,3-propanediol, hydroxypivalyl hydroxypivalate glycol, and 1,4-cyclohexanedicarboxylic acid [0014], which can further lead to the as-formed polyester polyol match the claimed Hansen solubility owing to the selection of the claimed specific reactants for specific the polyester polyol formation. Jordan and Hensel are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyester polyol-based coating composition for metallic or non-metallic substrates surface protecion. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jordan to substitute the specific polyester polyol formed via 2-methyl-1,3-propanediol, hydroxypivalyl hydroxypivalate glycol, and 1,4-cyclohexanedicarboxylic acid [0014], into the coating composition formation. Doing so would further lead to the desired property of good stain resistance and soft touch properties [0026] as taught by Hensel.
Regarding Claim 6, Jordan teaches polymers comprising the barrier and elastomeric segments can also be comprised by core-shell particles present in the coating composition of the present invention [0106], wherein, barrier segment of the final polymer can have a glass transition temperature (Tg) of greater than 0° C [0031] and The elastomeric segment(s) of the final polymer can have a glass transition temperature (Tg) of less than 0° C. [0038], hence, collectively overlap the claimed range.
Regarding Claims 8, 14, 17, 19, 20, Jordan and Hensel collectively teach the coating composition as set forth in claim 1 above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Jordan and Hensel teach all of the claimed ingredients, in the claimed amounts, and Jordan teaches the composition as being made by a substantially similar process as of the coating compositions of the present invention can be prepared by mixing [0126]; drying [0151]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses mixing [Instant App. US20220162471; 0121], and final dry paint film with the desired properties [Instant App. US20220162471; 0072]. Therefore, the claimed effects and physical properties, i.e., volatile organic content (VOC), dirt pickup resistance, stain rating for grape juice; stain rating for lipstick, would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 12, Jordan teaches the coating composition of the present invention can also be at least partially applied to an elastomeric substrate [0147].
Regarding Claim 13, Jordan teaches specific non-limiting examples of suitable substrates include architectural needs, such as windows, roofing, siding [0128].
Claims 7, 9, 10 are rejected 35 U.S.C. 103 as being unpatentable over Jordan (US20190085200, herein Jordan) and Hensel (US20180305579, herein Hensel) as applied to claim 2, and in the further view of Hiroshi (US20110300389, herein Hiroshi).
Regarding Claims 7, 9, 10, Jordan and Hensel teach the composition of claim 2 as shown above. Jordan teaches the suitable aqueous dispersible resins include acrylic resins [0123], but does not explicitly teach wherein the acrylic resin particles having a Mw of at least 100,000; wherein the second resin comprises acrylic resin particles having a z-average particle size at least 10% greater than the urethane acrylate core-shell particles. However, Hiroshi teaches “multilayer coating film having an excellent finished appearance can be formed by using an aqueous coating composition containing an acrylic resin (A)” [0014], which is “acrylic resin particles” [0052] with “molecular weight of the hydroxy-containing acrylic resin (A1) is preferably 2,000 to 5,000,000” [0050] which overlaps the claimed range; Hiroshi further teaches “acrylic resin particle may have an average particle size of 10 to 500 nm” [0092], hence, take acrylic resin particle size 500 nm, and core-shell particle 300 nm, wherein (500-300)/300=66.67% times larger, hence, lie in the claimed range. Jordan and Hiroshi are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of polyester polyol-based coating composition for metallic or non-metallic substrates surface protection in automotive parts manufacturing, that of the core-shell acrylic resin-based coating composition and apply onto the metallic or non-metallic substrates. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Jordan to substitute the “multilayer coating film having an excellent finished appearance can be formed by using an aqueous coating composition containing an acrylic resin (A)” [0014], which is “acrylic resin particles” [0052] with “molecular weight of the hydroxy-containing acrylic resin (A1) is preferably 2,000 to 5,000,000” [0050]; “acrylic resin particle may have an average particle size of 10 to 500 nm” [0092] into the coating composition formation. Doing so would further lead to the desired property as of “coating composition with excellent removability in bell cleaning and a multilayer coating film with excellent smoothness” [0019], therefore, the modification in view of Hiroshi represents selecting a known material based on its art-recognized suitability for its intended use (i.e. as a hydroxyl-functional acrylic resin in a coating formulation). See MPEP 2144.07.
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). See MPEP § 2144.05.
Response to Arguments
Applicant’s arguments, filed 3/3/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jordan (US20190085200, herein Jordan), and Hensel (US20180305579, herein Hensel).
In this case, the applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above.
In response to applicant's argument that Hansel is not analogous art without the limitations of the claimed crosslinker, aqueous coating and latex feature, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the rejection applied previously and above, Hensel is not being relied upon for the limitations of crosslinker, aqueous coating and latex feature, in contrast, Hensel is relied upon merely for teaching that at least 25 weight %, based on the total weight of the reactants used to prepare the polyester polyol [0017], wherein the polyol comprising 3 or more hydroxyl groups can include various types of polyols such as cyclic polyols [0016] and the polyol component that also contains at least 10 wt% of a diol such as neopentyl glycol [0014-15]. Hensel provides clear teaching that the polyester polyol is suitable for composition similar to those of Jordan comprising polyester polyols apply to metallic or non-metallic substrates for surface protection, and therefore one having ordinary skill in the art would be motivated to substitute the specific polyester polyol into the composition of Jordan. This motivation would not require the complete adoption of every teaching of Hensel with respect to the limitations of crosslinker, aqueous coating and latex feature, but would merely indicate to one having ordinary skill in the art that said specific polyester polyol is suitable for the intended purpose. The incorporation therefore would have been obvious. Hence, Hensel does not teach away the instant application.
In response to applicant's argument that “Jordan, however, is directed to coatings having good elasticity and gas barrier properties; the Office has not supported its comment that such coatings would be considered chemically resistant”, the argument is not persuasive.
First, Jordan not only teaches coatings having good elasticity and gas barrier properties as applicant pointed out, but also expressly identifies barrier coatings formed from the coating compositions [0001], wherein, the “Chemical barrier” refers to a barrier and/or low permeability to the migration of a molecule from one substrate to another, and/or from within a substrate, e.g. from its interior to its surface or vice versa. Any resistance to permeation of vapor, gas, and/or chemical(s) is sufficient to qualify a coating as a “barrier coating” according to the present invention [0014], which indicates Jordan’s composition can lead to the chemical resistance. Second, Jordan teaches the substrates selection including: metallic or non-metallic substrates surface protection [0127], to achieve surface protection. As analogous art, Hensel teaches the composition including polyester polyol toward metallic or non-metallic substrates surface protection [0053], further collectively match the suitable substrates over which the coating compositions apply to metallic or non-metallic substrates [Instant App. US20220162471; 0073], which indicates the composition as taught by Jordan and Hansel can collectively lead to the specific substrates surface protection. Hence, neither Jordan nor Hensel teaches away the instant application.
In response to applicant's argument that “Applicants had previously argued that one skilled in the art would not characterize the present coating compositions as polyurethane based coatings, which the Office deemed not persuasive. (Office Action at page 12). The reasons provided in support, however, do not seem to be germane”, the argument is not persuasive.
In the rejection applied previously and above, first, the claims of instant application are not directed to polyurethane, but latex based coating with the polymeric shell which is formed from a reaction mixture comprising an isocyanate and a polyol; the polyol is specifically polyester polyol [Instant App. US20220162471; 0022, 0024], moreover, Jordan teaches polymeric shell comprising urethane linkages [0078], the polyurethane shell can be prepared using, polyols such as polyester polyols, polyisocyanates [0078] which read on the reaction mixture. As analogous art to Jordan, Hensel teaches coating composition with reactive mixture of polyester polyol and crosslinker comprising isocyanate groups [0038], hence, the reactive mixture of Hensel is similar to the polymeric shell of Jordan, and collectively meet the polymeric shell of the instant application specification.
Second, Hensel is not being relied upon for the limitations of polyurethane based coating, in contrast, Hensel is relied upon merely for teaching that at least 25 weight %, based on the total weight of the reactants used to prepare the polyester polyol [0017], wherein the polyol comprising 3 or more hydroxyl groups can include various types of polyols such as cyclic polyols [0016] and the polyol component that also contains at least 10 wt% of a diol such as neopentyl glycol [0014-15]. Hensel provides clear teaching that the polyester polyol is suitable for composition similar to those of Jordan comprising polyester polyols apply to metallic or non-metallic substrates for surface protection, and therefore one having ordinary skill in the art would be motivated to substitute the specific polyester polyol into the composition of Jordan. This motivation would not require the complete adoption of every teaching of Hensel with respect to the limitations of polyurethane based coating, but would merely indicate to one having ordinary skill in the art that said specific polyester polyol is suitable for the intended purpose. The incorporation therefore would have been obvious. Hence, Hensel does not teach away the instant application.
In response to applicant's argument that “the core shell particles taught by Jordan and relied on by the Office in the rejection are an adhesion promoter. When used, Jordan teaches the maximum amount of the particle is 10 wt% based on total solids weight of the coating composition. (Jordan at [0094])”, the argument is not persuasive.
In this case, applicant apparently overlooked the different core-shell particles as taught by Jordan. In fact, Jordan not only teaches the maximum amount of the particle is 10 wt% based on total solids weight of the coating composition [0094], which are only certain core-shell particles are used as adhesion promoter such as core-shell rubber particles [0062], as applicant pointed out, but Jordan also expressly teaches the core-shell particles [0090], with core comprising acrylic polymer [0088]; polymeric shell comprising urethane linkages [0078], core-shell particle in the range of 5-40% of the coating composition [0104]. Hence, Jordan does not teach away the instant application.
Conclusion
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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