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 .
Claims Status
Claims 1, 3 and 5-19 are pending. Claims 8-11 and 13-19 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions. Claim 1 is amended.
Response to Amendments/Arguments
Applicant's amendment and arguments filed 1/7/2026 with respect to the rejection of present claim(s) 1-7 and 12 under 35 U.S.C. 103 as being unpatentable over JP 2015193782 to Takahiro et al. (of record, “Takahiro”) have been fully considered and are persuasive. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of JP 2015193782 to Takahiro, based on different interpretations, as discussed in details below. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Because Takahiro is continued to be relied upon in the present action, the examiner wishes to point out for the record that Takahiro is relied upon for rejection based on different interpretations. In particular, the polyester resin B (para [0028]) of the blend of Takahiro is considered as equivalent to the instantly claimed polyester A of claim 1; and the polyester resin A (para [0024] [0025]) of the blend of Takahiro is considered as equivalent to the instantly claimed polyester resin B of claim 1.
The rejections below are updated to address the present claims.
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.
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, 3, 5-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015193782 to Takahiro et al. (of record, “Takahiro”).
Regarding claim 1, Takahiro teaches a coating composition comprising a polyester resin blend as a principal resin (para [0007]-[0010]), the polyester resin blend (para [0007]-[0010], i.e., the blend includes polyester A, polymer B and curing agent) comprising:
– (A) a polyester resin having a glass transition temperature of 40 °C to 70 °C (para [0028], the polyester resin B of the blend of Takahiro is considered as equivalent to the instantly claimed polyester A), which range overlaps with the instantly claimed range of a glass transition temperature of higher than 40°C for the instantly claimed polyester resin A; and having an acid value of 20 mg KOH/g or less (para [0028]), which range overlaps with the instantly claimed range of 10 mg KOH/g or more and less than 50 mg KOH/g for the instantly claimed polyester resin A;
– (B) a polyester resin having a glass transition temperature of 70 °C to 100 °C (para [0010] [0024], [0025] the polyester resin A of the blend of Takahiro is considered as equivalent to the instantly claimed polyester B), which range overlaps with the instantly claimed range of a glass transition temperature of higher than 40°C for the instantly claimed polyester resin B; and having an acid value of 20 mg KOH/g or less (para [0025]), which range overlaps with the instantly claimed range of less than 10 mg KOH/g for the instantly claimed polyester resin B;
- a curing agent (para [0010], [0032]) that the curing agent being a resol-type phenolic resin or an amino resin (para [0032], the suitable curing/crosslinking agent includes resol-type phenolic resin), meeting the claimed material limitations;
– wherein the blend ratio of the polyester resin (A)/the polyester resin (B) is 60/40 to 95/5 (para [0010], it is noted that Takahiro teaches the blend ratio of its polyester resin (A)/its polyester resin (B) is 40/60 to 5/95; in this connection, as discussed above, the polyester resin B of the blend of Takahiro is considered as equivalent to the instantly claimed polyester resin A; and the polyester resin A of the blend of Takahiro is considered as equivalent to the instantly claimed polyester resin B; and thus, the calculated blend ratio of Takahiro that corresponds to the instantly claimed blend ratio is 60/40 to 95/5), which range overlaps with the instantly claimed blend ratio range of 50/50 to 99/1 of claim 1. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
As discussed above, the coating composition of Takahiro includes the polyester resin A and the polyester resin B, each having Tg and acid value overlapping the instantly claimed ranges, respectively. Takahiro also teaches in its coating composition, in the polyester resin blend, a blend ratio of the polyester resin (A)/the polyester resin (B) is 60/40 to 95/5 (para [0010], as discussed above), polyester resin (A) having an acid value of 20 mg KOH/g or less (para, [0028]), and polyester resin (B) having an acid value of 20 mg KOH/g or less (para [0024]). As such, the average acid value of the polyester resin blend of Takahiro, if calculated, is about 0 mg KOH/g to 20 mg KOH/g (for example, given a blend where the polyester resin (A)/the polyester resin (B) is 60/40, polyester resin (A) having an acid value of 1 mg KOH/g, polyester resin (B) having an acid value of 10.5 mg KOH/g, the calculated average acid value of the polyester resin blend is (0.6*1) + (0.4 *10.5) = 4.8 mg KOH/g), which range overlaps with the instantly claimed range of more than 2.0 mg KOH/g and less than 8.0 mg KOH/g of instant claim 1. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 3, as discussed above in rejection to claim 1, the coating composition of Takahiro includes the polyester resin A and the polyester resin B, each having Tg and acid value overlapping the instantly claimed ranges, respectively. Takahiro also teaches in its coating composition, in the polyester resin blend, a blend ratio of the polyester resin (A) of Takahiro /the polyester resin (B) of Takahiro is 40/60 to 5/95 (para [0010]), polyester resin A of Takahiro having a glass transition temperature of 70 °C to 100 °C (para [0010] [0024]), and polyester resin B of Takahiro having a glass transition temperature of 40 °C to 70 °C (para [0028]). As such, the glass transition temperature of the polyester resin blend of Takahiro, if calculated, is about 41.4 °C to 81.4 °C (for example, given a blend where the polyester resin (A) of Takahiro /the polyester resin (B) of Takahiro is 40/60, polyester resin (A) of Takahiro having Tg of 100 °C, which is about 373K; polyester resin (B) of Takahiro having Tg of 70 °C, which is about 343K, the calculated Tg of the polyester resin blend is the following, i.e., 1/Tg blend = (0.4/373) + (0.6/343), so the Tg is about 354.4 K = about 81.4 °C), which Tg range overlaps with the instantly claimed range of 50°C to 120°C. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 5, Takahiro teaches in its coating composition, suitable curing agent includes a resol-type phenol resin (para [0032]).
Regarding claim 6, Takahiro teaches in its coating composition, wherein a content of the curing agent is about 1 to 20 parts by mass per 100 parts by mass of the principal resin (polyester resin blend) (para [0043]), which range overlaps with the instantly claimed range of 5.5 parts by mass or more per 100 parts by mass of the principal resin (polyester resin blend). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 7, Takahiro teaches in its coating composition, wherein a suitable number average molecular weight of the polyester resin (A) is about 3,000 to 100,000 (para [0028], the polyester B of Takahiro), which range overlaps with the instantly claimed range of 13,000 or more for the instantly claimed polyester resin (A); and a number average molecular weight of the polyester resin (B) is about 3,000 to 100,000 (para [0025], the polyester A of Takahiro), which range overlaps with the instantly claimed range of less than 13,000 or the instantly claimed polyester resin (B). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 12, Takahiro teaches its coating composition is a solvent-based coating composition (para [0045], inclusion of suitable solvent), meeting the claimed limitations of being a solvent-based coating composition.
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 YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782