DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
2. The amendments dated 10 December 2025 have been entered into the record. Claims 1, 4, 5, 6, 7, and 8 are currently pending. The applicant has previously cancelled Claims 2 and 3. The examiners finds that the amendments (and new claims) did not add any new subject matter as per the applicant’s response on page 4. The applicant’s response is considered fully responsive. The affidavit dated 10 December 2025 is acknowledged by the examiner and discussed in the Response to Arguments later in this Office action.
Claim Rejections - 35 USC § 103
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.
3. Claims 1, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gam et al. in view of Miyame et al. TEGO Wet 265 SDS and SILWET L-7280 SDS are used as evidence of inherency.
Gam et al. (US Pub. No. 2018/0282557 A1 – previously presented) is directed toward an electrodeposition coating composition comprising an anti-cratering agent (title and abstract). Miyame et al. (EP3354701A1 – previously presented) is directed toward an electrodepositable composition (title). TEGO Wet 265 SDS (previously presented) and SILWET L-7280 SDS (previously presented) are both used as evidence of the compositions of the anti-cratering agents. The active ingredient in both products has the CAS#134180-76-0.
Regarding Claim 1, Gam et al. discloses a cationic electrodeposition coating composition (title and abstract) comprising a film forming binder (analogous to the film-forming resin of the present application) (title, abstract, ¶39, and ¶41) and a pigment paste (¶56-7). In ¶55-57, Gam et al. teaches the pigment paste further comprises a pigment grinding vehicle (i.e.: pigment dispersion resin in ¶42 and ¶55-7), pigments (such as titanium dioxide, aluminum silicate, carbon black, and barium sulfate as per ¶57), and bismuth oxide (i.e.: metal compound). Bismuth oxide contains a trivalent metal element (e.g.: Bi3+) at a level of 1.3 parts metal element per 100 parts film forming resin (equivalent to 1.3 wt. %) as calculated in Table I below from the example in Gam et al. (¶55-57).
Additionally, Gam et al. teaches the incorporation of a supplementary anti-cratering agent in the electrodeposition composition in ¶38 specifically polyether modified polysiloxanes, such as COATOSIL 7604 (in the examples) or SILWET L-7280 from MOMENTIVE. Gam et al. teaches the silicone content of 0.37 parts silicone for 100 parts film forming resin for Bath 4 with the calculation shown in Table II below using COATOSIL 7604 (equivalent to 0.37 wt.% silicone). It has been held that a prima facie case of obviousness exists when the claimed range contains an example disclosed in the prior art (i.e.: metal element content and silicone content). See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
Table I. Calculation of content of metal (Bi) element in Bath 4 from Gam et al. (¶58: Table 2)
Let 1 part mass = 1 g
¶53 – Resin/Cross-linking Emulsion: 38 wt. % non-volatile content
¶56 – Pigment Paste: Bismuth oxide is 87.06 g per 3000 g total mass
¶58 – Electrocoat Bath 4 (containing silicone compound): 1650 g emulsion; 1983 g water; 314 g pigment paste; 53 g mixture D (silicone containing)
Mass of resins solid content of film-forming resin in Bath 4 = (38 wt.%)(1650 g) = 627 g resin solids
Bismuth oxide content in Bath 4 = (87.06 g Bi2O3)/3000 g total = 2.9 wt. % Bi2O3
Weight % bismuth in bismuth oxide = (2 Bi x 208.98)/(1 Bi2O3 x 465.96) = 89.7% Bi in Bi2O3
Mass of Bi in Bath 4 = (2.9 wt. % Bi2O3)( 89.7% Bi/Bi2O3)(314 g) = 8.17 g Bi in Bath 4
Content of the metal compound = (8.17 g Bi)/(627 g resin solids) = 1.3 wt.% Bi
Table II. Calculation of silicone content in Bath 4 (Gam et al. ¶51: Table 1 and ¶58: Table 2
Let 1 part mass = 1 g
¶53 – Resin/Cross-linking Emulsion: 38 wt. % non-volatile content
¶56 – Pigment Paste: Bismuth oxide is 87.06 g per 3000 g total mass
¶ 51 and ¶58 – Electrocoat Bath 4 (containing silicone compound): 1650 g emulsion; 1983 g water; 314 g pigment paste; 53 g anti-cratering mixture D (silicone-containing)
Mass of resins solid content of film-forming resin in Bath 4 = (38 wt.%)(1650 g) = 627 g resin solids
Mass of silicone in Mixture D = (46 g COATOSIL 7604)/(46 g + 1000 g Agent II) = 4.4 wt.% silicone
Mass of silicone in Bath 4 = (4.4 wt. % silicone)(53 g mixture D) = 2.32 g silicone in Bath 4
Content of silicone = (2.32 g silicone)/(627 g resin solids) = 0.37 wt.% silicone
Gam et al. does not explicitly disclose the SP values of COATOSIL 7604 (in the examples) or SILWET L-7280 taught in Gam et al. (¶38-39). In the instant application, the use of TEGO Wet 265 is disclosed in the examples and the present application reports TEGO Wet 265 has an SP value of 12.7 (pg. 45 in ¶123). According to the SDS, the active ingredient in TEGO Wet 265 is a polyether siloxane with the CAS#134180-76-0 (section 3: composition/information on ingredients). Similarly, the SDS of SILWET L-7280 indicates that the active ingredient is a polyalkyleneoxide modified heptamethyltrisiloxane and has the CAS#134180-76-0 (section 3: composition/information on ingredients). Since the active ingredients in both anti-cratering products are identical, the SP value of both products are also identical. See MPEP 2112.01(II) - COMPOSITION CLAIMS — IF THE COMPOSITION IS PHYSICALLY THE SAME, IT MUST HAVE THE SAME PROPERTIES
Therefore, Gam et al. discloses a silicone with an SP value that is more than 10.5 and less than 15.0 as per the limitation of Claim 1 of the instant application.
Gam et al. does not disclose the use of a capping agent comprised of a resin and/or a polyvalent acid in the pigment paste. Miyamae et al. discloses a cationic electrodeposition coating composition (Title and Abstract). The composition comprises a resin emulsion (¶12) and a pigment dispersion paste (¶35), which are combined to prepare an electrocoat bath (¶98). Miyamae et al. further discloses that the resin emulsion comprises an aminated resin (Abstract, ¶9, ¶13-¶23) and a blocked isocyanate curing agent (Abstract and ¶9, ¶12, ¶24-¶30). Miyamae et al. teaches the pigment paste comprises: a bismuth compound (¶9, ¶95-7), a metal oxide (Abstract, ¶9, ¶11, ¶39-43), a monocarboxylic acid (¶59-62), pigment dispersion resin (Abstract; ¶9, ¶36-38; ¶44-55), a sequestrant (¶67-75), a polyvalent acid (¶9, ¶36-38, ¶76-81, and pigments (Abstract, ¶9, ¶36-38 ¶56-7 all in a solvent (e.g.: water in ¶63). The metal compound can be oxides or hydroxides of La, Nd, Y, Pr, Yb, and Ce (Miyamae et al. ¶39). The sequestrant in Miyamae et al. is analogous to the capping agent of the present application. Miyamae et al. indicates an example of the sequestrant is an amine-modified epoxy resin having a hydroxyl value is 150 to 650 mg KOH/g and an amine value is 30 to 190 mg KOH/g and a polyvalent acid (¶70 and ¶80). Miyamae et al. teaches that the sequestrant provides improved dispersion stability of the pigment dispersion paste (¶70). Therefore, the electrodeposition coating composition has excellent storage stability and edge portion rust prevention properties. It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrocoat composition of Gam et al. with the sequestrant disclosed in Miyamae et al. with the reasonable expectation of preparing an electrocoat composition with improved properties including: storage stability (¶70), edge corrosion protection (¶70), and excellent curability (¶80).
Regarding Claim 4, Gam et al. in view of Miyamae et al. discloses the cationic electrodeposition coating composition as per Claim 1 above, wherein the silicone compound is a polyether modified silicone compound (¶38-9 and ¶51).
Regarding Claim 6, Gam et al. in view of Miyame et al. discloses a method for forming a cured electrodeposition coating film on a coated article using the composition as per Claim 1 (¶6, ¶59 and ¶60 in Gam et al). Specifically, Gam et al. teaches the following steps: (a) immersing a phosphate cold rolled steel panel (analogous to the “article” in the present application) in the prepared electrodeposition composition (¶60); (b) applying 240 to 280 volts to obtain a film thickness of 0.8 to 1.0 mils (¶ 59); (c) rinsing the panel with deionized water (¶6); and (d) baking the uncured panel for 10 minutes at 360 °F (¶60) resulting in an article with a cured electrodeposited coating.
Regarding Claim 7, Gam et al. in view of Miyame et al. discloses a method for forming a cured electrodeposition coating film on a coated article using the composition as per Claim 4 (¶6, ¶59 and ¶60 in Gam et al). Specifically, Gam et al. teaches the following steps: (a) immersing a phosphate cold rolled steel panel (analogous to the “article” in the present application) in the prepared electrodeposition composition (¶60); (b) applying 240 to 280 volts to obtain a film thickness of 0.8 to 1.0 mils (¶59); (c) rinsing the panel with deionized water (¶6); and (d) baking the uncured panel for 10 minutes at 360 °F (¶60) resulting in an article with a cured electrodeposited coating.
4. Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gam et al. in view of Miyamae et al. as applied to Claim 1. TEGO Wet 265 SDS, SILWET L-7280 SDS, and Momentive Technical Document titled “Release Solutions for Molding Challenges” are all used as evidence of inherency.
Gam et al. (US Pub. No. 2018/0282557 A1 – previously presented) is directed toward an electrodeposition coating composition comprising an anti-cratering agent (title and abstract). Miyame et al. (EP3354701A1) is directed toward an electrodepositable composition (title). TEGO Wet 265 SDS (previously presented) and SILWET L-7280 SDS (previously presented) are both used as evidence of the compositions of the anti-cratering agents. The active ingredient in both products has the CAS#134180-76-0. Momentive Technical Document titled “Release Solutions for Molding Challenges” (previously presented) which provides physical properties for SILWET L-7280, is used for evidence of inherency that the material is a silicone and more specifically a polyether modified siloxane.
Regarding Claim 5, Gam et al. in view of Miyame et al. with evidentiary support from Momentive Technical Document titled “Release Solutions for Molding Challenges” teaches the cationic electrodeposition coating composition per Claim 1 above, wherein the silicone compound (i.e.: polyether modified siloxane in ¶38 of Gam et al.) is water dilutable meaning SILWET L-7280 is either soluble or dispersible in an aqueous solvent (“Water Dilutable Column” in the Momentive Technical Document).
Regarding Claim 8, Gam et al. in view of Miyame et al. discloses a method for forming a cured electrodeposition coating film on a coated article using the composition as per Claim 5 (¶6, ¶59 and ¶60 in Gam et al). Specifically, Gam et al. teaches the following steps: (a) immersing a phosphate cold rolled steel panel (analogous to the “article” in the present application) in the prepared electrodeposition composition (¶60); (b) applying 240 to 280 volts to obtain a film thickness of 0.8 to 1.0 mils (¶59); (c) rinsing the panel with deionized water (¶6); and (d) baking the uncured panel for 10 minutes at 360 °F (¶60) resulting in an article with a cured electrodeposited coating.
5. Claims 1, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gam et al., Fukushima et al., and Miyame et al.
Gam et al. (US Pub. No. 2018/0282557 A1 – previously presented) is directed toward an electrodeposition coating composition comprising an anti-cratering agent (title and abstract). Miyame et al. (EP3354701A1 – previously presented) is directed toward an electrodepositable composition (title). Fukushima et al. (JPH05140489A) is directed toward the addition of polyether silicones to electrocoat compositions to improve the appearance (¶1-5).
Regarding Claim 1, Gam et al. discloses a cationic electrodeposition coating composition (title and abstract) comprising a film forming binder (analogous to the film-forming resin of the present application) (title, abstract, ¶39, and ¶41) and a pigment paste (¶56-7). In ¶55-57, Gam et al. teaches the pigment paste further comprises a pigment grinding vehicle (i.e.: pigment dispersion resin in ¶42 and ¶55-7), pigments (such as titanium dioxide, aluminum silicate, carbon black, and barium sulfate as per ¶57), and bismuth oxide (i.e.: metal compound). Bismuth oxide contains a trivalent metal element (e.g.: Bi3+) at a level of 1.3 parts metal element per 100 parts film forming resin (equivalent to 1.3 wt. %) as calculated in Table I above from the example in Gam et al. (¶55-57).
Additionally, Gam et al. teaches the incorporation of a supplementary anti-cratering agent in the electrodeposition composition in ¶38 specifically polyether modified polysiloxanes, such as COATOSIL 7604 (in the examples) or SILWET L-7280 from MOMENTIVE. Gam et al. teaches the silicone content of 0.37 parts silicone for 100 parts film forming resin for Bath 4 with the calculation shown in Table II above using COATOSIL 7604 (equivalent to 0.37 wt.% silicone). It has been held that a prima facie case of obviousness exists when the claimed range contains an example disclosed in the prior art (i.e.: metal element content and silicone content). See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
However, Gam et al. does not explicitly disclose the SP values of the silicones listed in ¶38-39. Fukushima et al. is directed toward cationic electrodeposition paints that include silicones to improve the electrocoat defect resistance (¶1-5). Since both Gam et al. and Fukushima et al. are directed toward electrodepositable compositions with silicone additives to reduce cratering in electrocoated composition, they are analogous art.
Fukushima et al. further indicates that the polyether modified silicone should have an SP value that ranges from 8.5 to 10.5 to ensure good topcoat adhesion (¶4). The specific polyether modified silicone examples disclosed by Fukushima et al. have SP values of 9.5 and 10.0 (¶12). It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrocoat formulation with a polyether modified silicone with an SP value ranging from 8.5 to 10. 5 as disclosed by Fukushima with the reasonable expectation of preparing an electrocoat composition that is robust toward defects and has good topcoat adhesion. It has been held that a prima facie case of obviousness exists when the prior discloses a range (SP value of 8.5 to 10.5) that overlaps or approaches the claimed range (SP value of 10.5 to 15.0). See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
The combination of Gam et al. and Fukushima et al. does not disclose the use of a capping agent comprised of a resin and/or a polyvalent acid in the pigment paste. Miyamae et al. discloses a cationic electrodeposition coating composition (Title and Abstract). The composition comprises a resin emulsion (¶12) and a pigment dispersion paste (¶35), which are combined to prepare an electrocoat bath (¶98). Miyamae et al. further discloses that the resin emulsion comprises an aminated resin (Abstract, ¶9, ¶13-¶23) and a blocked isocyanate curing agent (Abstract and ¶9, ¶12, ¶24-¶30). Miyamae et al. teaches the pigment paste comprises: a bismuth compound (¶9, ¶95-7), a metal oxide (Abstract, ¶9, ¶11, ¶39-43), a monocarboxylic acid (¶59-62), pigment dispersion resin (Abstract; ¶9, ¶36-38; ¶44-55), a sequestrant (¶67-75), a polyvalent acid (¶9, ¶36-38, ¶76-81, and pigments (Abstract, ¶9, ¶36-38 ¶56-7 all in a solvent (e.g.: water in ¶63). The metal compound can be oxides or hydroxides of La, Nd, Y, Pr, Yb, and Ce (Miyamae et al. ¶39). The sequestrant in Miyamae et al. is analogous to the capping agent of the present application. Miyamae et al. indicates an example of the sequestrant is an amine-modified epoxy resin having a hydroxyl value is 150 to 650 mg KOH/g and an amine value is 30 to 190 mg KOH/g and a polyvalent acid (¶70 and ¶80). Miyamae et al. teaches that the sequestrant provides improved dispersion stability of the pigment dispersion paste (¶70). Therefore, the electrodeposition coating composition has excellent storage stability and edge portion rust prevention properties. It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrocoat composition of Gam et al. and Fukushima et al. with the sequestrant disclosed in Miyamae et al. with the reasonable expectation of preparing an electrocoat composition with improved properties including: storage stability (¶70), edge corrosion protection (¶70), and excellent curability (¶80).
Regarding Claim 4, the combination of Gam et al., Fukushima et al. and Miyamae et al. discloses the cationic electrodeposition coating composition as per Claim 1 above, wherein the silicone compound is a polyether modified silicone compound (Gam et al. ¶38-9 and ¶51 and Fukushima et al. ¶4).
Regarding Claim 6, the combination of Gam et al., Fukushima et al. and Miyamae et al. discloses a method for forming a cured electrodeposition coating film on a coated article using the composition as per Claim 1 (¶6, ¶59 and ¶60 in Gam et al). Specifically, Gam et al. teaches the following steps: (a) immersing a phosphate cold rolled steel panel (analogous to the “article” in the present application) in the prepared electrodeposition composition (¶60); (b) applying 240 to 280 volts to obtain a film thickness of 0.8 to 1.0 mils (¶ 59); (c) rinsing the panel with deionized water (¶6); and (d) baking the uncured panel for 10 minutes at 360 °F (¶60) resulting in an article with a cured electrodeposited coating.
Regarding Claim 7, Gam et al. in view of Miyame et al. discloses a method for forming a cured electrodeposition coating film on a coated article using the composition as per Claim 4 (¶6, ¶59 and ¶60 in Gam et al). Specifically, Gam et al. teaches the following steps: (a) immersing a phosphate cold rolled steel panel (analogous to the “article” in the present application) in the prepared electrodeposition composition (¶60); (b) applying 240 to 280 volts to obtain a film thickness of 0.8 to 1.0 mils (¶59); (c) rinsing the panel with deionized water (¶6); and (d) baking the uncured panel for 10 minutes at 360 °F (¶60) resulting in an article with a cured electrodeposited coating.
Response to Arguments
6. Applicant’s arguments, see pages 4-7, filed with 10 December 2025, with respect to the rejections of Claims 1, and 4-6 under 103 have been fully considered, but are not persuasive. The reasons for the maintaining the rejection of Claims 1, 4, 5, and 6 as being obvious over Gam et al. and Miyamae et al. are discussed below.
7. The Declaration under 37 CFR 1.132 filed 10 December 2025 is insufficient to overcome the rejection of Claims 1, 4, 5, and 6 based upon as set forth in the last Office action. In the declaration presented by the applicant four different SP value materials have been presented along with the effect of two difference metal compounds (e.g.: Y and Bi) on the electrocoat performance properties. Comparing the silicone compound with an SP value of 12.7 (TEGO Wet 265) with yttrium (Ex. 1) and bismuth (Ex. 5) additives provides clear support that both metal species are equivalent in the electrocoat composition disclosed by the applicant as all performance metrics are equivalent (see Declaration pg. 3: Table and pg. 5: Table). The applicant has also provided three other SP value materials, that are all polyether modified silicones. The SP values include: 10.0 (New Comparative Example), 13.9 (Inventive Example B: TEGO Wet 250) and 15.3. The data for the SP values at 10.0 and 15.3 show that the performance properties for the electrocoat formulation are relatively poor.
Fukushima et al. (JPH05140489 with EPO translation) is directed toward an electrocoat composition that has the addition of a silicone oil (abstract) which improves oil cissing and surface smoothing without affecting other performance properties negatively. The preferred embodiments from Fukushima indicate that the preferred silicone oil materials are polyether modified silicone with an SP value between 8.5 and 10.5 (abstract and ¶4). The specific examples evaluated in Fukushima et al. have an SP value of 9.5 (SH-28PA from Toray Dow Corning) and SP value of 10.0 (KP-316 Shin-Etsu) in ¶12. As discussed above, Fukushima discloses a silicone with an SP value of 10.5, which overlaps with the lower end claimed range of the instant application.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
8. In the Examiner’s opinion, the data provided in the declaration support a narrower range of SP values (e.g.: 12.0 to 15.0) with polyether modified silicones rather than the broader limitations of Claim 1 (i.e.: a silicone compound with an SP value between 10.5 and 15). The applicant has support for a narrower SP value range in ¶52 of the instant application cited as US Pub. No. 2022/0332960 A1. Moreover, the alleged unexpected results discussed by the applicant are only for one class of silicone material, i.e., poly-ether modified silicones, as opposed to multiple classes (e.g.: polyester or polyacrylic modified silicones).
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tobinaga et al. (EP0255727) is directed toward a process for electrodeposition (title).
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794