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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Vijverberg et. al. (US20080124474, herein Vijverberg), in the view of Colyer et. al. (US20170190931, herein Colyer).
Regarding Claims 1, 5, 7-9, 18, 19, 20, 21, 28, Vijverberg teaches clear coatings [0029] comprising: binder copolymer with 2-hydroxyethyl methacrylate as monomer [0106] which is at least one OH-functional (meth)acrylic copolymer as constituent (A1).
Vijverberg teaches binder of polyester polyols [0094] with trimethylolpropane [0111], which indicates the branched polyester polyol; and functional crosslinkers may contain one or more polyester polyols [0084], but does not explicitly teach the branched OH-functional polyester formation process.
However, Colyer teaches the three steps reaction producing branched OH-functional polyester as constituent (A2): step (a) of reacting a polyol comprising at least three hydroxyl groups with an aliphatic dicarboxylic acid having from 6 to 36 carbon atoms or an esterifiable derivative of the aliphatic dicarboxylic acid to form a hydroxyl-functional first intermediate product. [0016] reads on the step (a); wherein, step (a) of moles of the polyol to moles of the dicarboxylic acid or esterifiable derivative of the aliphatic dicarboxylic acid is from about 2.0 to about 2.5 moles of the polyol per mole of the dicarboxylic acid or esterifiable derivative of the aliphatic dicarboxylic acid. [0011], overlaps the claimed range.
The hydroxyl-functional first intermediate product prepared in step (a) is then reacted with a cyclic carboxylic acid anhydride to form a carboxylic acid-functional second intermediate product. [0030] reads on the step (b); wherein, the equivalent ratio in step (b) of hydroxyl groups of the first intermediate product to anhydride groups of the cyclic carboxylic acid anhydride is from about 1.0 to about 1.25 equivalents of hydroxyl groups per carboxylic anhydride groups. [0011] matches the claimed range.
In a third step (c), from least about two carboxylic acid groups to all of the carboxylic acid groups of the second intermediate product are reacted with an epoxide-functional compound having one epoxide group to form the hyperbranched polyol. [0035] reads on the step (c), wherein, the equivalent ratio in step (c) of carboxylic acid groups of the second intermediate product to epoxide groups of the epoxide-functional compound is from about 1.0 to about 2.5 equivalents of carboxylic acid groups per equivalents epoxide groups. [0011], matches the claimed range.
The hyperbranched polyol [0035] as the product of the step a-c, hence, reads on the (A2) at least one branched OH-functional polyester as constituent (A2), which is obtainable by performing steps (a), (b) and (c), which can lead to the branched OH-functional polyester (A2) has an OH-number in the range of from 100 to 145 mg KOH/g of polyester solids.
Colyer further teaches crosslinker reactive with hydroxyl groups; which could be reactive with the hydroxyls as well as with carboxylic acid groups the hyperbranched polyols. [0056] reads on the (B1) at least one crosslinking agent as constituent (B1), which is different from both constituents (A1) and (A2) and which contains crosslinkable functional groups, which can be at least crosslinked with OH-functional groups.
Colyer teaches the A2 concentration as “hyperbranched polyol, 5% to about 60% by weight” [0039] overlaps the claimed range.
Vijverberg and Colyer are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the branched polyester polyol based top coating composition for automotive industry.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Vijverberg to add the teachings of Colyer and provide said the three steps reaction producing branched OH-functional polyester as constituent (A2), in the range of “hyperbranched polyol, 5% to about 60% by weight” [0039] and the crosslinker reactive with hydroxyl groups; which could be reactive with the hydroxyls as well as with carboxylic acid groups the hyperbranched polyols. [0056] reads on the (B1) into the composition development.
The motivation to do so would be that to achieve the desired property of the coatings of the invention produced from the coating compositions of the invention adhere excellently even to electrocoats, surfacer coats, basecoat systems or typical, known clearcoat systems that have already cured, they are outstandingly suitable not only for use in automotive OEM finishing but also for automotive refinish or for the modular scratchproofing of automobile bodies that have already been painted. [0079] as taught by Colyer.
Additionally, examiner notes that the claim 1 is product by process claim, wherein, the patentable weight is given to product/composition, not to the process by which the polymer was made.
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). See MPEP § 2144.05.
Regarding Claims 2, 16, Vijverberg teaches the coating compositions according to the invention may be one-component [0091]
Regarding Claim 3, Vijverberg teaches the base coat can be water borne or solvent borne. [0099] comprises volatile organic solvent [0098]
Regarding Claims 4, 17, 22, Vijverberg teaches wherein the binder and the cross-linker together amount to at least 90 wt % of the solids content of the coating composition, which overlaps 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). See MPEP § 2144.05.
Regarding Claim 6, Vijverberg teaches the coating composition comprises cross-linkers with at least two (free) isocyanate groups, example, hexamethylene diisocyanate [0088] lies in the claimed range.
Regarding Claims 10, 13, Vijverberg teaches applying the coating compositions to a substrate to form a coating [0030] then coating is cured at a temperature of at least 60° C [0033].
Regarding Claim 11, Vijverberg teaches Suitable substrates can be of metal, synthetic material (plastics), optionally pretreated, e.g., with a primer, for a clear coat, with a base coat. Curing may be carried out at ambient temperature [0101] collectively reads on applying a basecoat coating material composition to substrate with primer as first coating, and then a top coat as second coating film, and then jointly cured.
Regarding Claim 12, Vijverberg teaches the coating composition according to the invention can be applied to a substrate in any desirable manner, such as by spraying [0100].
Regarding Claims 14, 15, 26, 27, Vijverberg and Colyer collectively teach the coating composition, including branched OH-functional polyester formation, “the clearcoat coating composition can include the disclosed hyperbranched polyol.” [0073]; in the range of “hyperbranched polyol, 5% to about 60% by weight” [0039] overlaps the claimed range as taught by Colyer as set forth in to claim 1 above, which is capable of functioning as flow enhancer and levelling agent, hence, the using of branched OH-functional polyester as flow enhancer and levelling agent is the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [See MPEP 2144.07]
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). See MPEP § 2144.05.
Regarding Claims 23-25, Vijverberg teaches it is further preferred that the coating composition is also substantially pigment-free; Substantially pigment-free means that the coating composition comprises substantially no pigment particles. [0029] indicates the exclusion of pigment.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, first, Vijverberg does not only teach glycidyl-functional binders [0084], but also explicitly teaches the binder of polyester polyols [0094] with trimethylolpropane [0111], which indicates the branched polyester polyol; and functional crosslinkers may contain one or more polyester polyols [0084], can lead to the achieving excellent carwash resistance or e.g. excellent reparability [0024] and resulting in high gloss car wash-resistant coatings [0025], which indicate the appearance integrity of the clear coating upon hot and humid environment during carwash, hence, can match the “improved appearance in terms that no die-back and no pinches are observed, even at hot and humid conditions.” [Instant App. US20230061744; 0181].
As analogous art, Colyer teaches the specific polyester polyol as hyperbranched polyol [0039] and crosslinker reactive with hydroxyl groups; which could be reactive with the hydroxyls as well as with carboxylic acid groups the hyperbranched polyols. [0056] reads on the (B1) matches the crosslinking agent as constituent (B1) contains crosslinkable functional groups, which can be at least crosslinked with OH-functional groups. [Instant App. US20230061744; 0095], wherein, the hyperbranched polyol and crosslinker included in the coating composition of Colyer collectively match the instant application, which can further lead to the desired property of the coatings of the invention produced from the coating compositions of the invention adhere excellently even to electrocoats, surfacer coats, basecoat systems or typical, known clearcoat systems that have already cured, they are outstandingly suitable not only for use in automotive OEM finishing but also for automotive refinish or for the modular scratchproofing of automobile bodies that have already been painted. [0079] as taught by Colyer, matches the cured clear coatings on pre-coated substrates can be obtained, which have an excellent appearance in terms of a minimized or even non-existent die-back [Instant App. US20230061744; 0009].
Second, the combing of Vijverberg and Colyer is not requiring the replacing the epoxy-functional acrylic or polvester binder, in contrast, Viijverberg explicitly teaches the utilization of the epoxy-functional acrylic binders [0007], and in the rejection applied previously and above, Colyer is not being relied upon for the epoxy-functional acrylic binders, in contrast, Colyer is relied upon merely for specific polyester polyol [0039] as branched polyol and crosslinker [0056], which lead to desired property of the coatings of the invention produced from the coating compositions of the invention adhere excellently even to electrocoats, surfacer coats, basecoat systems or typical, known clearcoat systems that have already cured, they are outstandingly suitable not only for use in automotive OEM finishing but also for automotive refinish or for the modular scratchproofing of automobile bodies that have already been painted. [0079] as taught by Colyer, via the combine of the collectively match the excellent appearance in terms of a minimized or even non-existent die-back [Instant App. US20230061744; 0024].
Colyer provides clear teaching that the specific polyester polyol [0039] as branched polyol and crosslinker [0056] are suitable for compositions similar to those of Viijverberg, and therefore one having ordinary skill in the art would be motivated to substitute the specific polyester polyol [0039] as branched polyol and crosslinker [0056] into the composition of Viijverberg. This motivation would not require the complete adoption of every teaching of Colyer with respect to the epoxy-functional acrylic binders as applicant pointed out, but would merely indicate to one having ordinary skill in the art that said the specific polyester polyol [0039] as branched polyol and crosslinker [0056] is suitable for the intended purpose. The incorporation therefore would have been obvious. Therefore, the combination of two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to for a third composition that is to be used for the very same purpose may be prima facie obvious. In re Susi, 440 F.2d 442, 445, 169.
Therefore, the combing of Vijverberg and Colyer does not teach away the instant application.
The applicant's argument that “surprising results” is not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness.
In this case, the claim 1 is open to wherein the at least one branched OH-functional polyester (A2) is present in the clearcoat coating material composition in an amount in the range of from 1.0 wt.-% to 15.0 wt.-%, which indicates the using of variety of the branched OH-functional polyester. However, Examples I1 and I2, both use the branched polyester polyol solution described in item 1 [0152] as single species. Therefore, these examples are not reasonably commensurate with the breadth of the claimed branched OH-functional polyester and cannot be relied upon to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Conclusion
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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