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 .
Response to Amendment
Applicant’s claim amendments and remarks filed January 12, 2026 are entered and have
been fully considered. Applicant has cancelled claims 12 and 14; claims 1-11, 13, 15-32 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 1-11, 13, 16-32 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al, US20090098386A1.
Regarding claims 1, 4-7, 10-11, and 13 Martin teaches a waterborne curable film-forming composition comprising a film-forming resin, a crosslinking agent, and an additive comprising isostearic acid neutralized with dimethylethanolamine ¶[0006]. 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]. The film-forming resin can further comprise polyester polyol ¶[0026].
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]. 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].
It is also taught that a catalyst is added during the preparation of the dispersion, ¶[0045]. While it is not specified that it is an acid catalyst, Nacure 5076 is used in Example 4, ¶[0074], which is an alkyl aromatic sulfonic acid which reads on the composition being acid catalyzed. Martin teaches the waterborne resin composition further comprises neutralizing agents ¶[0045]. While Martin does not explicitly say to use a neutralized catalyst, it is suggested that the neutralizing agents be added with the catalysts at the same stage in making the dispersion ¶[0045], and therefore suggests to the skilled artisan that at least a portion of the catalyst will become neutralized at the same time as the dispersion.
While Martin does not exemplify using a non-formaldehyde containing aminoplast, it is still disclosed that others based on glyoxal are suitable for the disclosed composition, and considering the suggested range of 15-50 wt.% for the crosslinker (aminoplast), the teachings of Martin therefore render claim 1 obvious.
All the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phrased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963).
Regarding claims 2-3 and 8-9, Martin teaches the aqueous medium is water, ¶[0046] and the dispersion is prepared in water ¶[0045] and see example 4, ¶[0074] where the hydroxyl functional acrylics are dispersed in water. While Martin does not utilize a non-formaldehyde containing aminoplast in the examples, because the alternative aldehydes are suggested to be useful for the waterborne composition, it is obvious to the skilled artisan that the alternative aminoplast with glyoxal or other aldehyde would also be at least partially water soluble.
Regarding claim 16, Martin further teaches a waterborne resin composition is a two-component system. See ¶[0045] which teaches that the aminoplast crosslinker is not necessarily added to the pre-emulsion, but preferably post-added after high stress mixing. The aminoplast can be added in combination with the neutralized isostearic acid. Also see claim 1 which also describes a two-component system.
Regarding claims 17, 19-20, and 32 Martin teaches a waterborne coating composition comprising the waterborne resin composition, which is capable of being heat cured on a substrate, ¶[0076]. Martin teaches using steel panels as a substrate for the waterborne coating composition which is spray applied and then heat cured in an oven set at 311°F (155°C) . Martin also teaches that the coating composition further comprises additives, ¶[0038]. And see ¶[0074] example 4, which exemplifies Tinuvin UV light stabilizers, siloxane polyol, and methylalkylpolysiloxane BYK-325 in charge 1.
Regarding claim 18, Martin teaches the waterborne coating composition as described above, wherein the coating composition is capable of being cured at a temperature of 311°F, (see ¶[0076]). Martin does not specify further a possible range of temperatures to use for curing the waterborne composition, such as the range of 20°C to 130°C stated in the instant claim. The broadest reasonable interpretation of the claim only requires that the composition is capable of being cured in the claimed range. The Office realizes that all the claimed effects or physical properties are not positively stated by Martin. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Martin’s composition is a waterborne coating composition and curing includes evaporating the water or solvent medium, which is possible at a temperature below 130°C. Therefore, the claimed effects, i.e. capable of curing at a temperature between 20°C to 130°C, would inherently be achieved by a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claims 21-31 Martin teaches a process for preparing the waterborne coating composition comprising mixing the film-forming resin (binder resin), crosslinking agent (aminoplast), and other ingredients such as catalysts and neutralizing agents ¶[0045]. Also see ¶¶[0074-0075] wherein example 4 lists the acrylic resins, Maprenal MF904, and Nacure 5076 catalyst in charge 1.
Martin does not say what the pH is of the film-forming (binder) resin. A pH of 1 is a very acidic solution, and includes battery acid which would likely erode the metal substrates of Martin. Any binder resin with a pH that low would merit disclosure. The binder resin of Martin would be acidic because of the acid functional groups from acrylic acid repeating units, and would therefore have a pH below 7. So the binder of Martin will inherently have the pH required by claims 21, 27, and 29.
Martin also exemplifies neutralizing a binder resin prior to combining with the aminoplast crosslinker, ¶[0074] which explains the Acrylic1 binder is composed of 56% acrylic and 44% DMP/HDI Trimer, which has been neutralized with DMEA, which reads on claim 22, 28, and 29.
Martin utilizes at least one catalyst in the examples, and exemplifies Nacure 5076 in Example 4 ¶[0074], which is an alkylaromatic sulfonic acid catalyst dispersed in isopropanol, from King Industries (see Nacure 5076 PDS included with previous action), and reads on the acid catalyst of claims 23-25, 30, and 31.
Martin teaches the binder resins can be neutralized and mixed with the catalyst before mixing with the crosslinking 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. The aminoplast can be post-added to the pre-emulsion; the pre-emulsion includes the film-forming resins, neutralizing agents, external surfactants, catalysts, and flow additives. Martin does not disclose the exact pH of the film-forming (binder) resins, but the skilled artisan would read “neutralizing” or “neutralized” as a pH of 7. Therefore, the catalyst-binder resin blend of ¶[0045] can be neutralized (pH of 7) before adding the crosslinking agent (thermosetting aminoplast resin), which reads on claim 26.
The difference between the amended claims 21, 23, 26, 29, 30 and Martin is the limitation of a neutralized catalyst, which suggests the catalyst is neutralized prior to being added to the coating composition. Martin teaches that neutralizing agents are added at the same time as the catalysts, ¶[0045], and the difference is the order of the mixing process steps. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have mixed the neutralizing agents with the catalyst before mixing with the binder resin and thermosetting resin because the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); see also In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) Selection of any order of mixing ingredients is prima facie obvious.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Martin et al, US20090098386A1 as evidenced by the web article “Understanding Amines and the Differences in pKa Values of Nitrogen-bound Protons”, by Franklin Veaux, at chemcafe.net.
Regarding claim 15, Martin teaches the waterborne resin composition of claim 1, as explained above. Martin teaches the composition comprising catalysts and neutralizing agents ¶[0045] and exemplifies the catalyst of an alkyl aromatic sulfonic acid. Example 4, ¶[0074], uses Nacure 5076. Nacure 5076 uses dodecylbenzenesulfonic acid, which has a pKa of 0.7 (see DDBSA datasheet from previous office action), which falls within the claimed range. When DDBSA is neutralized, generally with an amine, 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 acid catalyst before and after neutralization will have the claimed pKa.
Response to Arguments
Applicant's arguments filed 1/12/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Martin cannot render the claimed invention obvious based on previous remarks concerning the intended use of the aminoplast resin and the presence of alkyl ether or alkyl ester groups, examiner addressed these arguments in the previous non-final office action dated 10/10/2025 in the Response to Arguments section and are incorporated herein.
In response to applicant’s argument that Martin does not suggest a neutralized catalyst in the composition, examiner points to ¶[0045] of Martin which teaches adding neutralizing agents at the same time as the catalysts and the skilled artisan would expect at least a portion of the catalyst to become neutralized when mixed neutralizing agents at the same time.
Applicant points to the paragraphs describing the additive of isostearic acid neutralized with DMEA ¶¶[0006, 0037, 0044] and the paragraph describing the formation of the acrylic polymers, ¶[0024], as proof that the neutralizing agents do not pertain to the catalyst, but examiner was not referring to those instances of neutralization. The neutralization of the isostearic acid is a separate occurrence and the acrylic polymer formation is prepared before they are used in the waterborne composition. In ¶[0024] it describes neutralizing the acrylic polymer to make it dispersible in water. The neutralizing agents referred to in ¶[0045] would be in addition to what is used for the acrylic polymers because in ¶[0045] it mentions the film-forming (binder) resins are mixed with the remaining ingredients listed, including the crosslinker, catalyst, and neutralizing agents, etc. The film-forming resins are already prepared and may be neutralized before added to the composition based on ¶[0024]. Therefore the neutralizing agents mentioned in ¶[0045] are in addition to any that may be used in the preparation of the acrylic polymers.
Furthermore, the catalyst can be neutralized before, during, or after it is added to the waterborne coating composition to read on the claimed composition containing a neutralized catalyst, because the composition will be the same regardless of where in the process it is neutralized. It is well known in the art to neutralize an acid catalyzed waterborne emulsion at the end of the reaction to stop the reaction, therefore the catalyst would then become neutralized after the reaction.
Applicant argues that the neutralizing agent would only affect the acrylic acid groups, but when the ingredients are mixed together, the skilled artisan cannot choose which acidic groups are neutralized, and if a neutralization agent is added to neutralize other acidic groups in the composition, then it is likely that at least a portion of the acid catalyst is also neutralized.
A person having ordinary skill in the art would recognize that some neutralization of the catalyst would occur when mixed with neutralizing agents. A reference is considered for all that it may suggest to one skilled in the art.
Applicant uses the example of neutralizing amine groups and that the neutralizing agent would not affect the acid catalyst, but the opposite is equally true. Martin broadly discloses neutralizing agents; therefore the skilled artisan knows that different agents will neutralize acids and bases, and under the broadest reasonable interpretation of Martin’s neutralizing agents, these include both types and are used when applicable. Where the neutralizing agents neutralize acid groups, it reads on the claimed neutralized catalyst.
Applicant is narrowing the scope of the prior art by limiting the use of neutralization to only possible amine groups and is only considering one viewpoint. Applicant also implies that the neutralized catalyst is a catalyst already neutralized before being used, which is a difference in the process steps, not the composition itself. As stated above in the rejection, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have mixed the neutralizing agents with the catalyst before mixing with the binder resin and thermosetting resin because the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); see also In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) Selection of any order of mixing ingredients is prima facie obvious.
The mixing of a neutralizing agent with an acid catalyst forms a latent acid catalyst, which is well known in the art of waterborne coatings, especially those using sulfonic acid catalysts.
Additionally, applicant has not shown how the prior art differs from the claimed invention, in the instant specification applicant also adds a neutralizing agent to the composition, see table 1 page 11. Applicant mentions the neutralized catalyst in ¶[0063], without giving any further details it is unclear whether the catalyst is neutralized before, during, or after being added to the composition, therefore it is interpreted as including all of these possibilities.
For all the reasons above, the §103 rejection over Martin is maintained.
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.
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 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766