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 .
Applicant’s amendment dated 12 September 2025 is hereby acknowledged. Claims 18-26 as amended are pending. All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment filed on 12 September 2025. For this reason, the present action is properly made final.
Claim Rejections - 35 USC § 112
Claims 21-23 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21 and 23 are unclear because the claim recites “a carboxylic acid group of an ethylene carboxylic acid from hydroxyl ethylene carboxylate ester monomers.” It is unclear what “from” means in this context, whether the ethylene carboxylic acid is derived from or is used in addition to hydroxyl ethylene carboxylate ester monomers. This ground is not applied to claim 26 since the description of the process is clear in that claim.
Claim Rejections - 35 USC § 102
Claim(s) 18-20 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H08-333431 A (“Oshima”).
As to claims 18-20 and 24, Oshima teaches a polyester polyol resin that includes rosin glycidyl ester. Production Example 4 teaches a polyester polyol formed from 50 parts of rosin glycidyl ester, 50 parts ethylene glycol, and 90 parts of adipic acid (para. 0052). Oshima teaches that the rosin glycidyl ester is formed from disproportionated rosin (para. 0049), thereby a mixture of rosin glycidyl esters. As such, the resin is formed by reaction of rosin glycidyl esters with dicarboxylic acids and ethylene glycol, which is deemed equivalent to one obtained by the reaction of polyol with anhydrides as required by claim 18. The resulting resin composition has acid value, number average molecular weight, and hydroxyl value as required by claims 19 and 20.
To the extent claims are construed to require the presence of some amount of free rosin glycidyl ester, Oshima does not state this limitation. However, a person of ordinary skill in the art would recognize that the composition would contain some proportion of free rosin glycidyl ester prior to reaction completion.
Oshima does not state that the polyol is used for coating as required by claim 24; however, it is the same composition as recited, and therefore deemed suitable for the intended use.
Claim(s) 21, 22, 25 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2987863 B2 (“Kumada”).
As to claims 21 and 25, Kumada teaches a binder composition for coating as required by claims 21 and 24, that is an acrylic polyol formed by reaction of unsaturated monomers including 2-hydroxyethyl methacrylate, thus an acrylic polyol, and (meth)acrylic acid, to which hydrogenated rosin glycidyl ester is added (Translation, page 1; see, e.g.. Example 3, translation, p. 13).
To the extent claims are construed to require the presence of some amount of free rosin glycidyl ester, Kumada does not state this limitation. However, a person of ordinary skill in the art would recognize that the composition would contain some proportion of free rosin glycidyl ester prior to reaction completion.
For the purposes of applying prior art, it is presumed that claim 21 requires a reaction product of mixture of rosin and/or hydrogenated rosin glycidyl esters with a radically polymerized polymer having ethylene carboxylic acid (that is, having ethylenic unsaturated group and carboxyl) and hydroxyl ethylene carboxylate (that is, having hydroxyl, ethylenic unsaturation and carboxylate), and that the epoxy group is associated with the glycidyl esters. Example 3, translation, p. 13, shows glycidyl ester of hydrogenated rosins reacted with a copolymer including hydroxyethyl methacrylate, an ethylene carboxylate ester monomer, along with other unsaturated monomers. Example 8, translation, p. 14 uses disproprtionated rosin glycidyl esters KE-828, a mixture of rosin glycidyl esters with hydroxyl ethyl acrylate and methacrylic acid.
Note that acrylic acid and hydroxyethyl acrylate are also included as possible acid and hydroxyl functional monomers.
As to claim 22, Kumada teaches the resin has a number average molecular weight of 3000 to 50000 daltons (translation, p. 6), which is within the recited range. Example 3 of Kuwada provides an example having hydroxyl value of 50 mg KOH/g. Example 8 teaches 75 mg KOH/g (translation, pp. 13-14).
As to claim 26, both examples 3 and 8 teach the reaction of unsaturated monomers including hydroxyl ethylene functional carboxylic acid compound (in example 3, mono-2-metharcylyloxyethyl phthalate, in example 8, acrylic acid) to form polymer, along with reaction of epoxy group of rosin glycidyl esters, which meets both steps i or ii.
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) 23 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2987863 B2 (“Kumada”).
As to claim 23, Kumada teaches a binder composition for coating, that is an acrylic polyol formed by reaction of unsaturated monomers including 2-hydroxyethyl methacrylate, thus an acrylic polyol, and (meth)acrylic acid, to which hydrogenated rosin glycidyl ester is added (Translation, page 1; see, e.g.. Example 3, translation, p. 13, Example 8, teaching (meth)acrylic acid and mono-2-methacryolyoxyethyl phthalate).
To the extent claims are construed to require the presence of some amount of free rosin glycidyl ester, Kumada does not state this limitation. However, a person of ordinary skill in the art would recognize that the composition would contain some proportion of free rosin glycidyl ester prior to reaction completion.
Example 3, translation, p. 13, shows glycidyl ester of hydrogenated rosins reacted with a copolymer including hydroxyethyl methacrylate, an ethylene carboxylate ester monomer, along with other unsaturated monomers. Example 8, translation, p. 14 uses disproprtionated rosin glycidyl esters KE-828, a mixture of rosin glycidyl esters with hydroxyl ethyl acrylate and methacrylic acid.
Note that acrylic acid and hydroxyethyl acrylate are also included as possible acid and hydroxyl functional monomers.
Table 5 shows coating formulations containing examples 3 and 8 (examples A-3 and A-8 in combination with DN-950J, which is an aliphatic isocyanate (translation, p. 16). The amounts of each of these are within the recited range. Kumada differs in that it does not state whether these coatings are clear. However, Kumada suggests that the curable coating compositions can be formulated as clear coatings (translation, p. 11), and therefore a clear coating formulation of the recited proportions of acrylic polyol and aliphatic isocyanate compound is an obvious modification suggested by Kumada.
Double Patenting
Claims 18-20 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-22 of copending Application No. 17/767,008 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 20 recites the components of the resin formulation of claim 18, and is presumed to be a binder. Further, being the same material, the resin formulation is presumed to be suitable for a coating as required by claim 24. Copending claims 21 and 22 recite the additional limitations of claims 19 and 20, respectively.
Response to Arguments
While new grounds of rejection are set forth above, the following discussion is given in response to those arguments of applicants that still apply to references or rejections over references that are being carried over from the preceding action. Arguments pertaining to any reference or rejection not being carried over are rendered moot and need not be addressed.
Applicant's arguments filed 12 September 2025 have been fully considered but they are not persuasive.
The rejection of claims 21-23 and 25 are maintained, to the extent that the phrase “from” with respect to hydroxyl ethylene carboxylate ester monomers is unclear as to its relation to ethylene carboxylic compound.
The rejections of claims 20-22 and 24 over Oshima are maintained. Applicant’s arguments that the steps recited patentably distinguish over the product of Oshima is not persuasive, because the claim does not recite the process with sufficient specificity to distinguish over the simultaneous reaction of polyols, polyacid, and rosin glycidyl ester as taught by Oshima. The additional structures posited by applicant as resulting from the process of Oshima are also possible products of the recited process, and do not demonstrate a patentable distinction.
The requirement in Oshima that water must be removed is also not persuasive the resulting polymer is equivalent after removal of water.
With respect to claim 24, the intended use of claim 24 (coating) is presumed to be met by the equivalent material.
The rejections over Kumada are maintained. Applicant’s argument that Kumada does not teach ethylene carboxylic acids is incorrect. Both examples 3 and 8 teach reacting rosin glycidyl esters with polymers formed from monomers including ethylene carboxylic acids such as (meth)acrylic acid or mono-2-methacryloyloxyethyl phthalate.
Applicant’s arguments regarding disproportionated rosin glycidyl ester is not persuasive, because applicant’s specification, para. 0015, appears to include disproportionated rosin in the definition of rosin. If applicant wishes to exclude disproportionated rosin glycidyl esters, this would need to be recited explicitly.
Applicant's request for abeyance with respect to the nonstatutory double patenting rejections rejection is acknowledged to the extent that applicant's lack of response to the cited rejection will not be treated as non-responsive. However, since the rejection is proper it will be maintained until such time as a proper response to it is filed or conditions appropriate for removal of the rejection are present. It is noted that the filing of a terminal disclaimer cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Therefore, the nonstatutory double patenting rejections are maintained as modified by applicant’s amendments.
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 KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764