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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/29/26 has been entered.
Response to Arguments
Applicant argues that the claims require optimal adhesion. This is not persuasive. Optimal is an indefinite term with no clear definition in the specification. The claims require that the cured coating demonstrates sufficient adhesion to the weld seam so that the coating does not peel off when pulled. This is not the same as the argued optimal adhesion and does not present issues under § 112(b) which would be presented by the language “optimal adhesion”.
Applicant argues that Martinoni fails to teach that the coating is applied over a BPA-free coating. This is not persuasive. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. MPEP § 2145(IV). In this case, the BPA-free coating is taught by Anderson.
Applicant further argues that because Martinoni does not teach this BPA-free coating, it cannot be said that the claimed adhesion is inherent in the process. This is not persuasive. The rejection does not rely solely upon Martinoni, but rather on Martinoni in light of Jung, Anderson and Mazza. This combination teaches the same process steps using the same materials to deposit the same coating on a BPA-free coating. Thus, it is inherent that the coating of modified Martinoni will have the same adhesion characteristics of the claimed coating.
Applicant argues that the teachings of Martinoni and Anderson does not necessarily lead to the same adhesion. This is not persuasive. As discussed above, the Office’s position is that the adhesion is inherent. Applicant has not provided any further arguments or evidence as to why this adhesion would not be inherent other than to say that conventional knowledge is that BPA-free coatings do not adhere well to BPA-free coatings. Further evidence is required to show why such adhesion is not inherent.
Applicant also argues that the asserted combination does not teach all the limitations of the present claims, specifically that the references do not teach the claimed adhesion. This is not persuasive. As explained above, the Office’s position remains that the claimed adhesion is inherent in the prior art teachings. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Martinoni et al. (WO2014/065858) in light of Jung et al. (US 6,270,855), Anderson (US 6,472,480) and Mazza et al. (US 6,916,874).
Claims 1-4: Martinoni discloses a method of forming a coating on a container (¶ 0005), the method comprising: providing a powder coating composition (¶ 0006) which is BPA-free (¶ 0058) comprising: at least one polyester having a weight-average molecular weight ranging from about 20,000 to about 50,000 (¶ 0007); applying the coating composition to at least one portion of the substrate (¶ 0025); melting the coating composition in an extruder on the at least one portion of the substrate (¶¶ 0006; 0069) at a temperature of 140-200˚C (¶ 0042); and solidifying the molten coating composition to form the coating adhered to the at least one portion of the substrate (¶¶ 0032, 0039).
Martinoni discloses that the powder composition can have blend of one or more polyester such as first and second polyesters (¶¶ 0010, 0007) but does not teach about 1-5% of a functional resin component. Martinoni also discloses that the powder composition is to be applied to the weld seam portion of a metal container (see above) suitable for food and beverage (¶ 0001). Jung teaches a process of applying a polyester powder coating to a metal beverage container (Abst.; 1:38-47) and explains that the coating composition should also include up to 25% by weight of a thermoplastic resin component having a molecular weight of 500-15,000 in order to improve the barrier properties of the polyester coating (4:10-32; 9:8-15), wherein the resin component does not crosslink during extrusion (3:12-22, e.g.). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have included 1-5% by weight of a resin component having a molecular weight of 4,000-8,000 in the process of Martinoni in order to have improved the barrier properties of the polyester coating.
Martinoni also teaches that the coating is applied along a region of the metal beverage container substrate including a weld seam and a sidewall coating (¶¶ 0001, 0032, 0039), but fails to discuss the composition of the sidewall coating. Anderson teaches a sidewall coating for the interior surface of a beverage can (Abst.) and explains that the sidewall coating is desirably BPA-free to avoid contamination of the foodstuff within the can (1:21-2:4). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have selected a sidewall coating in Martinoni which was free from BPA in order to have avoided contaminating the contents of the can.
Jung teaches that the resin component should be selected as a resin which is suitable for food and beverage containers (13:47-55), but fails to teach that the resin is formed from the claimed monomers. Mazza teaches a resin component designed for use in food and beverage coatings which reduces potential contamination (1:46-64), wherein the resin is a polymer derived from a first monomeric unit from a glycidyl ester of α,β-unsaturated acid, such as glycidyl methacrylate (2:52-3:8) and a monomer having the formula:
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(2:8-20). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have selected the resin component disclosed by Mazza as the resin component in Jung in order to have reduced the risk of contamination associated with the food or beverage container coating.
Martinoni also discloses that the coating thickness preferably has a thickness less than 40 micrometers (see ¶ 0071) but recognizes that conventionally, the coating thickness could be greater than about 50-70 micrometers (¶ 0033). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a thickness from 50-70 µm with the predictable expectation of success.
With respect to the coating demonstrating the claimed adhesion, this feature is considered inherent in the cited art as the cited art teaches the same process of forming the same coating on the same substrate as applicant discloses to have this characteristic.
Claim 5: Martinoni discloses that the blend can be compounded into pellets, crystallized and milled to attain desired fine particle sizes wherein the resulting composition may be sieved and packaged for subsequent use (¶ 0069). For example, 95-100% by weight of the particles can pass through a 63-micrometer sieve (¶ 0076).
Claim 6: Martinoni discloses that the powder coating composition can include colorants, flow control agents and inorganic fillers (¶ 0064).
Prior Art
Bariatinsky et al. (US 2005/0196629) is also cited for teaching a powder-coating for the sidewall of a beverage or food container (¶ 0102) and explaining that the coating is desirably BPA-free so that the coating does not have a deleterious effect on the contents of the container (¶¶ 0006, 0043).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
