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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/28/26 has been entered.
Response to Amendment
Applicant’s claim amendments and remarks filed 5/28/2026 are entered and have
been fully considered. Applicant has cancelled claims 1-20 and 27-32; claims 21-26 and 33-46 are the current pending claims.
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.
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 21-25 and 33-38 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al, US20090098386A1 in view of Swarup et al US6103816, further in view of Singer et al US4469832, and further in view of the Nacure 2500 Datasheet.
Regarding claims 21-25, 34-36, and 38, Martin teaches a process for preparing a waterborne curable film-forming composition comprising mixing the film-forming resin (binder resin), crosslinking agent (aminoplast), and other ingredients such as catalysts and neutralizing agents, ¶[0045], which reads on the process of claim 21. Martin also teaches the binder resins can be neutralized and mixed with the catalyst before mixing with the aminoplast (crosslinker) resin, as noted in the general process steps, ¶[0045], which details how the dispersion is prepared and in ¶[0024] which teaches neutralizing the acrylic polymer, which reads on claim 22 where the binder is neutralized prior to adding to the thermosetting resin. The film-forming resin comprises an acrylic polymer prepared from monomers containing hydroxyl and acid functional groups such as hydroxyalkyl acrylates and acrylic acid ¶[0019], and can further comprise polyester polyol ¶[0026], which reads on the binders of claims 21 and 34.
The crosslinking agent is an aminoplast ¶[0030]. While Martin teaches that the preferred and most common aminoplasts are based on condensation products from the reaction of alcohols and formaldehyde with melamine or urea, it is suggested that other similar condensation products can be made from aldehydes such as glyoxal, ¶[0030], which reads on claims 35-36 and 38. It is further taught that the aminoplasts often contain methylol or similar alkylol groups, and a portion is etherified by reaction with an alcohol, such as methanol or ethanol and many aminoplast resins are partially alkylated with methanol or butanol, ¶[0032]. Martin further explains the crosslinking agent often comprises 15-50 wt.% of the film-forming composition ¶[0036], which overlaps with the claimed range. 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).
Martin teaches the use of catalysts broadly in the general disclosure by listing catalysts as an ingredient and exemplifies Nacure 5076 in Example 4 ¶[0074], which is an alkylaromatic sulfonic acid catalyst.
Martin does not teach using a neutralized catalyst for the waterborne coating composition, nor does Martin disclose the exact pH of the film-forming (binder) resins, but states that the acrylic polymers can be prepared by any method known to those skilled in the art ¶[0024].
Swarup discloses a waterborne coating composition comprising acrylic polymers and aminoplast crosslinkers for automotive clear coats, abstract. Swarup discloses acrylic copolymers as film-forming resins comprising hydroxyethyl acrylate and (meth)acrylic acid, Col. 2 lines 56-60, 67 and further discloses neutralizing the polymers to disperse them in water, Col. 3 lines 1-2 and 60. Swarup exemplifies in example H, Col. 10 lines 25-55 a carbamate-acrylic latex which is polymerized and neutralized to a pH of 7.7 (line 53) and in example I, Col. 10 line 60-Col. 11 lines 1-26, a hydroxyl functional acrylic latex which is neutralized to a pH of 7.84 col. 11 line 23. Therefore a pH of 7.7 and 7.84 is taught to be a neutral pH for acrylic polymers in order to be easily dispersed in water for waterborne coatings.
Singer discloses an aminoplast coating composition that is curable with acid catalysts and further discloses that coating compositions containing free acid catalysts cure rapidly but cause problems with storage stability, Col. 1 lines 1-20. Therefore latent or blocked acid catalysts have been developed to delay the curing process and improve stability, such as p-toluenesulfonic acids blocked with an amine, Col. 1 lines 21-26. These sulfonate salts are less active than the free acid versions and are activated by heat, which liberates the sulfonic acid catalyst, Col. 1 lines 30-33. Singer does not disclose a blocked sulfonic acid catalyst for water-based systems.
The Nacure 2500 datasheet discloses a commercially available latent acid catalyst for water-based coatings, it is an amine neutralized p-toluenesulfonic acid (reads on claim 23), with a pH of 6.9, see typical properties. Also, the datasheet discloses advantages of excellent cure response, viscosity stability or waterborne or high solids coatings and exterior durability. The Nacure 2500 is soluble in water and alcohols and is supplied in isopropanol/n-propanol solvents, which reads on claims 24 and 25.
Martin and Swarup are analogous to the claimed invention because they are both in the field of waterborne coatings comprising acrylic binders and aminoplast crosslinkers.
Singer is analogous to the claimed invention because it is in the field of coating compositions utilizing aminoplast crosslinkers.
The Nacure 2500 datasheet is analogous to the claimed invention because it is in the field of raw materials for waterborne coating compositions.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Martin but neutralizing the binder resins to a pH of 7.7 or 7.84 because it allows acrylic acid functional polymers to be dispersed in water as disclosed by Swarup and further substituting the Nacure 5076 catalyst for the amine neutralized sulfonic acid catalyst Nacure 2500 because it has excellent cure response, viscosity stability for waterborne coatings, and exterior durability as disclosed by the Nacure 2500 datasheet with the motivation of producing a waterborne coating with improved storage stability compared to a free acid catalyst as disclosed by Singer.
Regarding claims 33 and 37, Martin teaches the aqueous medium is water, ¶[0046], the dispersion is prepared in water ¶[0045] and see example 4, ¶[0074] where the hydroxyl functional acrylics and the Mapernal MF (melamine formaldehyde resin) are dispersed in water.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Martin et al, US20090098386A1 in view of Swarup, further in view of Singer and further in view of Nacure2500 as evidenced by the web article “Understanding Amines and the Differences in pKa Values of Nitrogen-bound Protons”, by Franklin Veaux, at chemcafe.net (provided in previous office action).
Regarding claim 39, modified Martin teaches the waterborne resin composition of claim 21 as explained above. Martin, Swarup, Singer, and Nacure 2500 datasheet are silent as to the pKa of the amine-p-toluenesulfonic acid catalyst. When the p-TSA is neutralized, it forms a salt and protonates the amine. The protonated amine generally has a pKa between 9-10, as evidenced by the web article “Understanding Amines and the Differences in pKa Values of Nitrogen-bound Protons”, which also reads on the claimed range. Therefore the neutralized acid catalyst pKa reads on the claimed range.
Claims 21-25 and 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Swarup et al US6103816.
Regarding claims 21-25, Swarup teaches an aqueous aminoplast curable film-forming composition comprising carbamate or urea functional acrylic polymers, abstract and Col. 3 lines 56-67. Swarup teaches a process for preparing the waterborne coating in example 5, Col. 12 lines 55-65, where the composition is prepared by mixing the ingredients shown in the table. A carbamate functional acrylic latex example H is the film forming binder, and is produced in Col. 10 lines 24-55. The example H is prepared with a carbamate acrylic monomer, acrylates, and acrylic acid (imparts hydroxyl functionality) which is neutralized with diisopropanolamine to a pH of 7.7, Col. 10 line 53. Example H polymer reads on the neutralized binder resin of claims 21 and 34.
Example H is then combined with the other ingredients in the table for example 5 which include Cymel 303 at 30 wt.% and falls within the claimed amount, which is an etherified melamine formaldehyde aminoplast resin, Col. 12 line 7, and taught in Col. 6 line 8, and reads on the aminoplast of claims 21, 35, and 36. The combination of the Example H polymer and the Cymel 303 reads on the process of claims 21 and 22.
A catalyst of a p-tsa solution is included in the table of ingredients which is a 20% solution of p-toluenesulfonic acid neutralized with diisopropanolamine in water, Col. 13 line 8, and reads on the addition of the neutralized catalyst of claims 21-25. Similarly, example 6, Col. 13 lines 15-27, is produced with a hydroxyl functional acrylic polymer example I, 30% Cymel 303, and the p-TSA solution which is the neutralized catalyst.
Example I is produced from hydroxyethyl acrylate and acrylic acid, Col 11 lines 5-15, and is neutralized to a pH of 7.84, Col. 11 line 23, this also reads on the neutralized binder resin of claims 21, 22, and 34. Regarding the order of addition, Swarup does not explicitly state the order the ingredients are mixed, only that they are mixed together, but it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have mixed the neutralized binder resin with the Cymel 303 thermosetting resin before adding the neutralized catalyst because the selection of any order of steps has been held to be prima facie obvious. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) which states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
Regarding claims 33 and 37, Swarup disperses the neutralized binder resin and Cymel 303 thermosetting resin in water for both examples 5 and 6, Col. 13 line 6 and 26. And the acrylic latex binder resins H and I which are used in examples 5 and 6, are made in water, Col. 10 lines 30 and 65.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Swarup et al US6103816 in view of Martin et al, US20090098386A1.
Regarding claim 38, Swarup exemplifies the Cymel 303 aminoplast which is a melamine-formaldehyde, but also teaches other aldehydes such as acetaldehyde, benzaldehyde, and crotonaldehyde may be used, Col. 6 line 4. Swarup does not teach using glyoxal as one of the aldehydes for the aminoplast.
Martin teaches a waterborne curable composition comprising aminoplasts and acrylic polymers, abstract and ¶¶[0019, 0024]. Martin further teaches the aminoplasts are commonly formed from formaldehyde and melamine but may also be formed from other aldehydes such as acetaldehyde, crotonaldehyde, acrolein, benzaldehyde, furfural, glyoxal and the like ¶[0030]. Therefore glyoxal is a functionally equivalent to the same aldehydes listed by Swarup and is suitable for forming an aminoplast resin in place of formaldehyde.
Martin and Swarup are analogous to the claimed invention because both are in the field of waterborne coatings comprising acrylic polymers and aminoplast resins.
It is prima facie obvious to substitute one material for another to obtain predictable results when the materials fulfill the same use and function. “[I]t is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances.” In re Ruff 118 USPQ 343; In re Jezel 158 USPQ 99; “the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious.” In re Font, 213 USPQ 532.
Therefore it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to practice the invention of Swarup substituting the melamine-formaldehyde aminoplast for a melamine-glyoxal aminoplast in the coating composition with the motivation of obtaining the predictable result of a waterborne coating because it is a simple substitution of aldehydes in the aminoplast resin that have the same purpose and function.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Swarup et al US6103816 as evidenced by the SIDS Initial Assessment Profile on isopropanolamines.
Regarding claim 39, Swarup teaches the invention according to claim 21, but does not teach the pKa of the neutralized catalyst, the p-TSA solution used in the examples. The SIDS Initial assessment Profile shows that the pKa for the protonated form of diisopropanolamine is 9.1, page 1 paragraph under physical-chemical properties. Therefore the neutralized catalyst of Swarup which is p-TSA neutralized with DIPA, which becomes protonated, has the claimed pKa.
Allowable Subject Matter
Claims 26, 40-46 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Claims 26, 40-46 are allowable because the claim requires the pH of the binder resin/catalyst blend to be a pH of 1-7 and the cited references do not teach or suggest a pH within this range for the binder resin/catalyst mixture. While the pH of the acrylic binder resin is 7.7 or 7.84 as disclosed in Swarup and the p-TSA solution is neutralized, when mixed with the resin in the amounts given in the examples, it is not obvious, nor likely, it would affect it so much as to drop the pH to 1-7. Furthermore the skilled artisan reading the disclosure of Swarup would not be able to immediately discern the pH of the resin/catalyst blend, it is not inherently within the claimed range.
In the Nacure 2500 datasheet the pH of it is 6.9, it likewise cannot be held as obvious that the pH would drop enough to be within the claimed range when blended with the binder resin.
Response to Arguments
Applicant's arguments filed 5/28/26 have been fully considered and are persuasive regarding the argument that Martin does not teach adding an already neutralized catalyst. For this reason examiner has provided secondary references of Singer and the Nacure 2500 datasheet, and the reference of Swarup for the pH of the acrylic polymers. Latent acid catalysts are well known in the field of coatings, especially in aminoplast cured coatings and as disclosed in Singer, free acid catalysts can cause stability issues over time, latent acid catalysts such as blocked sulfonic acids, which are neutralized with an amine and are utilized to form a storage stable composition, where the sulfonic acid is released through heating of the coating. Nacure 2500 is a commercially available amine neutralized catalyst specifically for waterborne coatings and provides viscosity stability.
In response to applicant’s argument that Martin does not teach, suggest, or disclose the process of adding a neutralized binder resin to the neutralized catalyst or aminoplast, examiner points to ¶[0024] where Martin teaches the acrylic polymers can be neutralized before use in the waterborne coating composition and Swarup is cited for the exemplified pH for acrylic polymers being dispersed in water.
Additionally, Martin states that the binder resin can be mixed with the crosslinker (aminoplast in this case) and catalyst together, first half of ¶[0045].
Regarding claims 26, and 40-46, the previous rejection is withdrawn because the actual pH of the resin/catalyst blend is unknown, and based on the pH of the resin in Swarup, it is not likely the neutralized catalyst will lower the pH to within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 9:00AM-4:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.L.S./ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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