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 Arguments
Applicant's arguments filed 6/16/2026 have been fully considered but they are not persuasive. The amendment to claim 14 to incorporate the subject matter of claim 23 does not overcome the rejection under 35 USC 103 because claim 14 is directed to a food and/or beverage packaging coated with a coating being derived from a solvent borne coating composition. As noted below since the solvent would be removed during derivation of the coating, the coating would reasonably be expected to be the same as the coating disclosed by Powell and Swarup.
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.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Powell et al (WO 2018/111854).
Powell discloses an acrylic polyester resin and an aqueous coating composition containing the same comprising:
A polyester material obtained by polymerizing
A polyacid component;
A polyol component (see [006-007]);
An acrylic modification polymer with acid functionality (see [067]);
An organic co-solvent (see [164]);
The acrylic modified polyester comprising the acrylic modification polymer in a range from 5 wt% to 45 wt% (see [089]); and
The acrylic polyester resin present in the aqueous coating composition in an amount of from 50 to 99 wt% of the dry weight of the aqueous coating composition (see [0090]).
Powell further discloses the coating composition coated on at least a portion of a food and beverage container (see [173]). Powell further discloses that the coating is applied as a dry film (see [185] and [214]).
Powell further discloses the coating composition further comprising an adhesion promoter comprising the polyester reaction product of a polyol, a polyacid, and phosphoric acid (see [0157-161]).
Therefore Powell discloses a coating composition comprising a first polyester in (1), a second polyester different from the first polyester comprising the reaction product of a polyacid, a polyol, and phosphorous acid in the adhesion promoter; and an acid-functional acrylic polymer in the acrylic modification polymer with acid functionality.
Regarding the content of acid functional acrylic material, as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the coating composition as disclosed by Powell where the acid-functional acrylic polymer is in any range overlapping with the prior art range of 5 to 45wt% of 50 to 99wt% of the total dry weight of the coating composition including the claimed range of at least 5 wt% and expect to produce Powell’s coating composition absent new and unexpected results.
Powell does not disclose the solvent borne coating composition where the solvent consists of organic solvent or a mixture of organic solvents. However, the Office notes that claim 14 is limited to the coating “being derived from a solvent borne coating composition”. One of ordinary skill in the art would reasonably expect the structure of Powell’s food and/or beverage packaging to be the same since solvent is removed upon drying of the coating and is only dependent on the remaining solids.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: The closest prior art of record, namely Powell (WO-2018/111854) and Swarup, do not teach or suggest the solvent-borne coating composition comprising all of the specific and cumulative limitations of independent claims 1 and 20.
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 MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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