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 .
This Office action is in response to amendment filed 2/16/2026. Claims 1, 20-21 are amended; claims 4, 7-11, 14, 16, 18, 22 are cancelled. Accordingly, claims 1-3, 5-6, 12-13, 15, 17, 19-21 and 23-25 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-6, 12-13, 15, 17, 19-21 and 23-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “any polyester polymer in the powder coating composition has a hydroxyl value less than 20 mg KOH/g” (lines 3-4). There is no support for including in the powder coating composition only polyester polymers having a hydroxyl value of less than 20 mg KOH/g, because said recitation excludes all polyester polymers having a hydroxyl value ≥ 20 mg KOH/g which is not explicitly stated in the originally filed disclosure.
Claims 2-3, 5-6, 12-13, 15, 17, 19-21 and 23-25 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites the limitation "the single layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. While there is a reference to “single coating layer” in claim 1 on which this claim is dependent indirectly, it is only when the powder coating composition is cured. However, claim 23 on which it is dependent directly does not require it to be cured.
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 1-3, 5-6, 12, 15, 17, 19, 21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al (EP 3 670 570 A1).
Regarding claims 1 and 12, Fukuyama et al disclose a resin composition for powder coatings (title) which reads on powder coating composition in present claim 1. The resin composition comprises a blend of fluoropolymer and semi-crystalline polyester resin (paragraph 0011). The semi-crystalline polyester resin has an acid value of at least 20 mg KOH/g and not more than 70 mg KOH/g (i.e., reads on the polyester polymer comprising carboxylic acid functional groups and overlaps with its acid value in present claim 1) and a hydroxyl value of no more than 10 mg KOH/g (paragraph 0070) which reads on hydroxyl value of polyester polymer in present claim 1. Semi-crystalline polyester resin may be based on aromatic polycarboxylic acids such as isophthalic acid (paragraph 0051) which reads on polyester polymer is prepared from isophthalic acid in present claim 1. Examples of crosslinkers include isocyanate crosslinking agents (i.e., reads on isocyanate functional crosslinker reactive with the fluoropolymer in present claim 1) and triglycidyl isocyanurate (paragraph 0089) which reads on the epoxy functional compound reactive with carboxylic acid functional groups of polyester polymer in present claim 1, and triglycidyl isocyanurate in present claim 12. In some embodiments, the fluoropolymer resin is a copolymer comprising vinylidene fluoride units and units from one or more other monomers. Examples of other monomers include trifluoroethylene, perfluoro(methyl vinyl)ether (PMVE), perfluoro(ethyl vinyl)ether (PEVE), and perfluoro(propyl vinyl)ether (PPVE) (paragraph 0081) which reads on fluoropolymer comprises hydroxyl group in present claim 1.
Fukuyama et al fails to disclose in a single embodiment as in present claims the ratio of polyester polymer to fluoropolymer, property of the cured product.
However, regarding the ratio of polyester polymer to fluoropolymer, Fukuyama et al in the general disclosure teach that the resin composition comprises a blend of 10 to 90% by weight of at least one fluoropolymer resin and 90 to 10% by weight of at least one semi-crystalline polyester resin, based on the total weight of fluoropolymer resin and semi-crystalline polymer resin (abstract) which overlaps with the weight ratio of polyester polymer to the fluoropolymer of from 80: 20 to 60:40 in present claim 1. Therefore, in light of the teachings in general disclosure of Fukuyama et al, would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping ratio for polyester polymer to the fluoropolymer of 80:20 to 60:40, because court held that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding property of the cured product, given that compositional limitations are met by the teachings in general disclosure of Fukuyama et al, one skilled in art prior to the filing of present application would have a reasonable basis to expect the powder coating composition, of Fukuyama et al, when cured to form a non-homogeneous single coating layer comprising the polyester polymer and the fluoropolymer, wherein a first phase comprising the fluoropolymer is distributed throughout a second phase comprising the polyester polymer, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 2 and 3, Fukuyama et al teach that the resin composition comprises a blend of 10 to 90% by weight of at least one fluoropolymer resin (i.e., overlaps with amount of fluoropolymer resin in present claim 3) and 90 to 10% by weight of at least one semi-crystalline polyester resin (i.e., overlaps with the amount of polyester polymer in present claim 2), based on the total weight of the fluoropolymer resin and the semi-crystalline polymer resin (abstract).
Regarding claim 5, Fukuyama et al teach that glass transition temperature of semi-crystalline polyester resin is lower than 550C (paragraph 0066) which overlaps with the glass transition temperature of polyester polymer in present claim 5. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 6, Fukuyama et al teach that semi-crystalline polyester resin has a melt viscosity of from 0.005 to 10 Pa.s at 1650C (paragraph 0075) which overlaps with the melt viscosity of polyester polymer in present claim 6. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05
Regarding claim 15, see example, wherein the composition includes TiO2 pigment (paragraph 0122) which reads on pigment in present claim 15.
Regarding claim 17, see example, wherein the composition does not include any organic ultraviolet absorber (paragraph 0122).
Regarding claim 19, examples of preferable crosslinking agents include isocyanate crosslinking agents (paragraph 0089). The crosslinking agent may be present in amounts of 2 to 8% by weight based on the total weight of the powder coating composition (paragraph 0090).
Regarding claim 21, examples of crosslinking agents include isocyanate crosslinking agents and triglycidyl isocyanurate (paragraph 0089). In some embodiments, the fluoropolymer resin is a copolymer comprising vinylidene fluoride units and units from one or more other monomers. Examples of other monomers include trifluoroethylene, perfluoro(methyl vinyl)ether (PMVE), perfluoro(ethyl vinyl)ether (PEVE), and perfluoro(propyl vinyl)ether (PPVE) (paragraph 0081).
Regarding claims 23 to 25, process of coating a substrate comprises a step of curing the powder resin composition or the powder coating composition applied to the substrate (paragraph 0116) which reads on substrate at least partially coated with a coating formed from the powder coating composition in present claim 23, single coating layer formed directly over a surface of the substrate in present claim 24; and both the polyester polymer and the fluoropolymer are in direct contact with the substrate in present claim 25
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al (EP 3 670 570 A1) in view of Grenda et al (US 2011/0224378 A1).
The discussion with respect to Fukuyama et al in paragraph 12 above is incorporated here by reference. Additionally, examples of crosslinkers in Fukuyama et al include β-hydroxyalkyl amide (paragraph 0089).
Fukuyama et al are silent with respect to species of epoxy functional compound.
However, Grenda et al teach a heat curing powder-lacquer compositions exhibiting a matte surface after curing of the coating (abstract). The coating composition comprises at least one carboxylate group-containing polymer having an acid number of 5 to 350 mg KOH/g and at least one β-hydroxyalkyl amide (paragraphs 0018-0021). Examples of carboxylate group-containing polymer include polyesters (paragraph 0128-0129). Epoxy resins may be used as co-crosslinking agents. Examples include glycidyl methacrylate and triglycidyl isocyanurate (paragraph 0142). Therefore, in light of the teachings in Grenda et al, it would have been obvious to one skilled in art prior to the filing of present application to include glycidyl methacrylate as a co-crosslinker for the carboxy functional polyester polymer, in the powder coating composition, of Fukuyama et al, for above mentioned advantages.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuyama et al (EP 3 670 570 A1) in view of Saito et al (US 2015/0072151 A1).
The discussion with respect to Fukuyama et al in paragraph 12 above is incorporated here by reference. Additionally, examples of crosslinking agents include isocyanate crosslinking agent (paragraph 0089).
Fukuyama et al are silent with respect to the ratio of total isocyanate equivalent to total hydroxyl group equivalents.
However, Saito et al teach a powder coating composition comprising a fluorinated resin, polyester resin and a curing agent (abstract). The fluorinated resin may be a fluorinated polymer having a reactive group such as hydroxyl group (paragraph 0034). When hydroxy group-containing fluorinated polymer is used as a fluorinated resin, an isocyanate curing agent is preferably used (paragraph 0090). The content of the isocyanate curing agent is preferably in an amount such that the molar ratio of isocyanate to hydroxyl groups would be from 0.05 to 1.5. If the molar ratio is less than 0.05, degree of curing of the coating material tends to be insufficient and the adhesion, hardness, and chemical resistance of a cured film tend to deteriorate. If the molar ratio exceeds 1.5, a cured film tends to be fragile, heat resistance, chemical resistance and moisture resistance of the cured film tends to deteriorate (paragraph 0098). Therefore, in light of the teachings in Saito et al, it would have been obvious to one skilled in art prior to the filing of present application to include isocyanate crosslinking agents, in the powder coating composition, of Fukuyama et al, such that the isocyanate equivalent to hydroxyl group equivalents falls within the presently claimed range, to prevent the above-mentioned deterioration of properties.
Response to Arguments
The rejections under 35 U.S.C. 112(b) and 103 as set forth in paragraphs 7 and 12-14, of office action mailed 10/1/2025 are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 16 below).
Applicant's arguments and Declaration under 35 U.S.C. 1.132, filed 2/16/2026, have been fully considered but they are not persuasive. Specifically, applicant argues that (A) polyester polymers used with the powder coating compositions of the present invention can have a hydroxyl value of less than 20 mg KOH/g. The polyester polymers can have a hydroxyl value within a range of from 0 to 20 mg KOH/g, from 0 to 10 mg KOH/g, from 0 to 5 mg KOH/g, from 0 to 2 mg KOH/g, from 2 to 10 mg KOH/g, or from 3 to 7 mg KOH/g (paragraph 0024). See examples 1 to 7 in the specification which use a polyester having a hydroxyl value less than 20 mg KOH/g (7.4 mg KOH/g). Therefore, examples in specification support the language that any polyester polymer in the powder coating composition has a hydroxyl value less than 20 mg KOH/g; (B) general thrust of Applicant argument is that Fukuyama teaches away from amorphous polyester polymer of present claims based on isophthalic acid and prefers that its semi-crystalline polyester be derived from at least a polycarboxylic acid chosen among a linear aliphatic dicarboxylic acid and/or a cycloaliphatic dicarboxylic acid to improve the compatibility between the fluoropolymer resin and the polyester resin and the blend is preferably homogenous. This is in direct contrast to the claimed powder coating compositions. When cured, the claimed powder coating compositions form a single coating layer comprising the polyester polymer and the fluoropolymer; a first phase comprising the fluoropolymer is distributed throughout a second phase comprising the polyester polymer; and (C) one would not be motivated to modify the Fukuyama composition, which prioritizes compatibility of the component polyester and fluoropolymer resins and homogeneity of the composition, with any teaching in Saito et al., which seeks to separate the coating composition into a fluoropolymer layer and a polyester layer. A semi-crystalline polyester polymer is necessary for this compatibility and using an amorphous polymer prepared from isophthalic acid would render Fukuyama inoperable for its intended purpose. It would not have been obvious to prepare a powder coating composition using a polyester polymer that is not semi-crystalline, prepared from isophthalic acid.
With respect to (A), as stated earlier, it is the Office’s position that the recitation “wherein any polyester polymer in the powder coating composition has a hydroxyl value less than 20 mg KOH/g” excludes any polyester with a hydroxyl value greater than 20 mg KOH/g. Case law holds that any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984), see MPEP 2173.05(i).
With respect to (B), Furukawa et al teach that semi-crystalline polymer preferably has a linear aliphatic and/or cycloaliphatic structure (paragraph 0011). Preferably, the semi-crystalline polyester does not comprise any unit derived from an aromatic polycarboxylic acid (paragraph 0053). The method comprises blending in a blender the fuoropolymer resin with the semi-crystalline polyester resin at a temperature higher that the melting temperature of semi-crystalline polyester resin, the semi-crystalline polyester resin being in molten state to form a blend, which is preferably homogeneous (paragraph 0093). Hence, it is clear that use of semi-crystalline polyester polymer comprising linear aliphatic and/or cycloaliphatic structure, not including aromatic polycarboxylic acid and resin blend is homogeneous are all in preferred embodiments in Furukawa. Furukawa et al also teach that the semi-crystalline polyester resin may be based on aromatic polycarboxylic acids such as isophthalic acid (paragraph 0051). In alternative and less-preferred embodiments, the semi-crystalline polymer has the presently claimed hydroxy and acid values (paragraph 0070). Additionally, there is no requirement in the present claims that polyester polymer be amorphous and that all polyesters prepared from isophthalic acid are amorphous. Case law holds that "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others. In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims." See In re Nehrenberg, 280 F.2d 161,126 USPQ 383 (CCPA 1960).
With respect to (C), primary reference of Furkawa teaches a resin composition comprising fluoropolymer and polyester polymer comprising isophthalic acid, and an isocyanate crosslinking agent. Graham v. Deere analysis was done, and the secondary reference of Saito provided the motivation to use isocyanate in amounts such that the ratio of isocyanate to hydroxyl groups fall within the presently claimed range.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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