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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/3/2026 as been entered.
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 Claims 8-11 and 13-19 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions.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 8/3/2026 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 carefully studied and fully considered, but they are not persuasive for at least the following reasons.
Applicant contents that (1) Takahiro does not teaches a coating composition as instantly claimed that requires the acid value of the polyester resin (B) to be at least 11 mg KOH/g and that polyester resin (A) has an acid value of less than 10 mg KOH/g, and that the acid value of polyester resin (A) is always less than that of polyester resin (B) and polyester resin (B) is always greater than 11 mg KOH/g (remarks, page 6, last para); (2) that such acid value possesses unexpected good processability and substrate adhesion properties (remarks, page 7, first para); and (3) Takahiro states at paragraph [0025] that the resin that corresponds to the claimed polyester resin (B) is preferably 0.1-10 mg KOH/g, and thus per applicant, Takahiro teaches away from the claimed amount of polyester resin (B) (remarks, page 7, last para).
As an initial matter, 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 satisfies/reads on the instantly claimed polyester A of claim 1; and the polyester resin A (para [0024] [0025]) of the blend of Takahiro satisfies/reads on the instantly claimed polyester B of claim 1
In response to applicant’s contention (1), in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the acid value of polyester resin (A) is always less than that of polyester resin (B)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Specifically, in the present case, it is noted that the polyester resin (A) of instant claim 1 recites a specific acid value range, and the polyester resin (B) also recites a specific acid value range. There is no dispute that there is an implied mathematical relationship between the recited acid value ranges of the polyester resin (A) and the polyester resin (B). However, instant claim 1 does not recite the argued feature that “acid value of polyester resin (A) is less than that of polyester resin (B)”, contrary to applicant’s assertion.
More importantly, in the present case, 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 satisfies/reads on 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 acid value of less than 10 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 satisfies/reads on 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 acid value of 11 mg KOH/g or more and less than 50 mg KOH/g for the polyester resin B.
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 12 mg KOH/g, the calculated average acid value of the polyester resin blend is (0.6*1) + (0.4 *12) = 5.4 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.
In response to applicant’s contention (2), Applicant's arguments have been carefully studied and fully considered, but they are not persuasive for the following reasons.
Applicant's assertions regarding unexpected properties of processability and substrate adhesion are not persuasive because unexpected results must be established by factual evidence. It should be noted that the arguments of counsel cannot take the place of evidence in the record. MPEP 716.01(c). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. MPEP 716.02(b).
In the present case, all the examples and comparative examples of Table 1 of instant specification have been reviewed and carefully studied by the examiner. However, the available data is insufficient to support applicant's assertion for the asserted unexpected properties of processability and substrate adhesion of the coatings. Applicants can rebut a prima facie case of obviousness by showing the criticality of the claimed ranges. Whether the 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." (emphasis added) In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). (MPEP 716.02 (d)).
Applicant has not provided sufficient objective evidence to show the criticality of the claimed range over the entire claimed range. For the reasons discussed above, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
In response to applicant’s contention (3), Applicant's arguments have been carefully studied and fully considered, but they are not found persuasive. The examiner disagrees with applicant’s characteristics of Takahiro. It has long been held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. MPEP 2123. Furthermore, the mere disclosure of a preferred alternative does not constitute a teaching away from other disclosed alternatives absent criticism, discrediting or discouragement of the alternative. MPEP 2145. Takahiro expressly teaches an acid value of less than 20 mg KOH/g for polyester A (para [0010] [0024], [0025], the polyester resin A of the blend of Takahiro satisfies/reads on the instantly claimed polyester B), while further identifying 0.1 to 10 mg KOH/g as a preferred range. The disclosure of the narrower preferred range does not negate Takahiro’s express teaching of the broader range, nor has Applicant identified a disclosure in Takahiro that criticizes, discredits or otherwise discourages selection of acid value outside of the preferred range but within the expressly disclosed broader range.
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 satisfies/reads on 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 acid value of less than 10 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 satisfies/reads on 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 acid value of 11 mg KOH/g or more and less than 50 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 12 mg KOH/g, the calculated average acid value of the polyester resin blend is (0.6*1) + (0.4 *12) = 5.4 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
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.
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, Aaron Austin can be reached on 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YAN LAN/Primary Examiner, Art Unit 1782
Prosecution Insights