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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/13/2026 has been entered.
Response to Arguments
Applicant's arguments filed 3/13/2026 have been fully considered but they are not persuasive. Applicant argues that the Office Action provides no explanation addressing why a person of ordinary skill in the art would modify Powell’s coating composition by adding co-solvents as disclosed in Swarup. Applicant also argues that Swarup discloses the use of surfactants to emulsify while Powell teaches grafting acrylic polymers to provide water solubility of dispersibility. This argument is unpersuasive because Powell explicitly discloses where the coating composition comprises organic co-solvent. Swarup is merely cited for suggesting a range suitable for the amount of organic co-solvent in a similar waterborne coating composition because Powell is silent with respect to an amount of co-solvent. Furthermore, it has been held that a conclusion of obviousness can be found where an invention is the mere combination of prior art elements according to known methods to yield predictable results. See MPEP 2143.I.A. Here, the Office maintains that Swarup is relevant to Powell for also disclosing a waterborne coating composition containing polymers and Swarup’s disclosure of suitable amounts of co-solvent would be reasonably predicted to result in a working coating composition containing organic co-solvent.
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.
Claim(s) 1, 4-14, 20, 24-27 is/are 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 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.
Powell does not disclose that the coating composition comprises at least 5 wt% of the acid functional acrylic material based on the total solid weight of the coating composition. Powell also does not disclose the coating composition comprises 5% to 95% organic solvent based on the total weight of the coating composition
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.
Regarding the coating composition comprises 5% to 95% organic solvent based on the total weight of the coating composition, Powell further discloses the composition where the solids phase is in a range of 10% to 60% of the coating composition (i.e., where the solvent phase is 40-90% of the coating composition) (see [171]).
Swarup discloses a coating composition comprising a dispersed polymeric phase and an aqueous medium in an aqueous polymer emulsion (See Col 2, Ln 1-27) Swarup further discloses a coating composition comprising an aqueous phase and a water miscible organic co-solvent in amounts less than 30 percent by weight based on the total weight of the aqueous phase and a water immiscible solvent in an amount of 5% or less based on the total weight of the aqueous phase (see Col 5, LN 3-22). 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 organic co-solvents are present in the aqueous phase in an amount of up to 35% of the total weight of the aqueous phase since Swarup discloses that it is a suitable range for adding organic cosolvent to waterborne coating compositions. Furthermore, 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 where the organic co-solvent concentration is in any range overlapping with 35% or less including the claimed ranges.
Regarding claim 4, Powell discloses a coating composition that is identical in composition comprising the first polyester, the second polyester comprising the reaction product of polyacid, polyol, and phosphorus acid, and the acid-functionalized acrylic polymer in overlapping amounts to the coating composition of claim 1 but does not disclose the claimed properties of the cured film produced from the coating composition. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Here, since the properties of the cured film would be derived from the components of the polymers in the coating composition, a person of ordinary skill in the art would reasonably expect the coating composition disclosed by Powell to exhibit the property (elongation of the cured film produced from the coating) in values comparable to that of claim 4, absent the showing of convincing evidence to the contrary.
Regarding claim 5, 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 and expect to produce Powell’s coating composition absent new and unexpected results.
Regarding claim 6, Powell discloses the acrylic modified polyester resin having any suitable acid value in the range of 10 to 80 KOH/g (See [087]). Powell also discloses the polyester in the acrylic modified polyester resin having an acid value of 0 to 20 KOH/g and suitably less than 3 (see [077]). Since Powell also discloses an acrylic modified polyester resin comprising 5 to 45 wt% of the acrylic modification polymer, Powell therefore discloses an AV for the acrylic modification polymer having an AV that overlaps with 100 KOH/g. 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 has an AV in any range overlapping with the prior art range including the claimed range and expect to produce Powell’s coating composition absent new and unexpected results.
Regarding claim 7, Powell discloses the acrylic modification polymer produced from monomers without oxirane groups (see [063]).
Regarding claim 8, Powell discloses the acid-functional acrylic material formed from methacrylic acid or acrylic acid (see [067]).
Regarding claim 9, Powell discloses the polyester material having any suitable Tg from 0°C to 100°C (see [073]). 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 as disclosed by Powell including the claimed range and expect to produce Powell’s coating composition absent new and unexpected results.
Regarding claim 10, Powell discloses the adhesion promoter comprising a precursor polyester resin having an Mn of 2,000 to 10,000, a hydroxyl number of 20 to 75 and an acid value of 15 to 25, wherein the precursor polyester resin comprises the polycondensate of a reaction mixture comprising: (i) a polyacid, and (ii) a polyol, and (iii) a phosphorus acid (see [161]).
Regarding claim 11, Powell discloses the acidic polyester adhesion promoter added an amount of 4 to 10 wt% (see [158]).
Regarding claim 12, Powell discloses a coating composition that is identical in composition comprising the first polyester, the second polyester comprising the reaction product of polyacid, polyol, and phosphorus acid, and the acid-functionalized acrylic polymer in overlapping amounts to the coating composition of claim 1 but does not disclose the claimed properties of the cured film produced from the coating composition. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Here, since the properties of the cured film would be derived from the components of the polymers in the coating composition, a person of ordinary skill in the art would reasonably expect the coating composition disclosed by Powell to exhibit the property (Young’s modulus of the cured film produced from the coating) in values comparable to that of claim 12, absent the showing of convincing evidence to the contrary.
Regarding claim 13, Powell discloses a coating composition that is identical in composition comprising the first polyester, the second polyester comprising the reaction product of polyacid, polyol, and phosphorus acid, and the acid-functionalized acrylic polymer in overlapping amounts to the coating composition of claim 1 but does not disclose the claimed properties of the cured film produced from the coating composition. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Here, since the properties of the cured film would be derived from the components of the polymers in the coating composition, a person of ordinary skill in the art would reasonably expect the coating composition disclosed by Powell to exhibit the property (toughness of the cured film produced from the coating) in values comparable to that of claim 13, absent the showing of convincing evidence to the contrary.
Regarding claim 14, as applied above to claim 1, It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare a coating composition comprising all of the limitations of claim 14. Powell further discloses the coating composition coated on at least a portion of a food or beverage container (see [173]).
Regarding claim 20, as applied above to claim 1, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare a coating composition comprising all of the limitations of claim 14. Powell further discloses a method for coating a can body comprising applying the coating over an both sides and internal surface of the can and over at least a portion of the score line (see [175] and [177]).
Regarding sufficient venting upon rupture of the score line, the language for “sufficient” venting is interpreted to mean any amount sufficient to prevent the beverage from exploding after opening of the beverage can. Support for this interpretation is in the present specification as filed at [0003]). Powell discloses a coating composition that is identical in composition comprising the first polyester, the second polyester comprising the reaction product of polyacid, polyol, and phosphorus acid, and the acid-functionalized acrylic polymer in overlapping amounts to the coating composition of claim 1 but does not disclose the claimed properties of the cured film produced from the coating composition. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Here, since the properties of the cured film would be derived from the components of the polymers in the coating composition and since Powell’s product is intended for use in beverage cans with scored pop-tops, a person of ordinary skill in the art would reasonably expect the coating composition disclosed by Powell to exhibit the property (sufficient venting), absent the showing of convincing evidence to the contrary.
Regarding claim 24, 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 where the organic co-solvent concentration is in any range overlapping with 35% or less including the claimed ranges.
Regarding claim 25, the claim is a product by process limitation where the components are added mixed together in a vessel to produce the coating composition. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, the prior art Powell discloses that the coating composition is prepared by adding as a batch to a vessel and stirred (see [206]). The instant claim implies the identical structure of a mixed composition. In the event any slight differences can be shown between the two coating compositions, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Powell. See Ex parte Gray, 10 USPQ2d 1922.
Regarding claim 26, Powell discloses a coating composition comprising a crosslinking material (see [100]). Regarding pre-blending the cross-linking material with the acid functional acrylic materials before being mixed with the first polyester and the second polyester material, the claim limitation is a product by process limitation. Here, Powell discloses the cross-linking material operable to crosslink the acrylic modified polyester resin (see [100]).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, the prior art Powell discloses that the acrylic modified resin is crosslinked by the crosslinking material. The instant claim implies the identical structure. In the event any slight differences can be shown between the two coating compositions, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Powell. See Ex parte Gray, 10 USPQ2d 1922.
Regarding claim 27, Powell discloses a composition where the crosslinking material comprises a benzoguanamine resin (see [150] and [213]).
Allowable Subject Matter
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, namely Powell and Swarup, do not teach or fairly suggest the coating composition where the solvent consists of organic solvent or a mixture of organic solvents as required in amended claim 23.
Conclusion
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738