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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/16/2026 has been entered. Claims 1, 4 and 8 are amended; claim 2 is cancelled; claims 3 and 9-16 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1 and 3-16 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “monomer represented by formula (3) below:
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. The font size used in this formula is too small and not legible compared to the structure represented by formula 1. Appropriate correction to the formula 3 is required.
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.
Claims 1, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzawa et al (JP 2003-119401 A).
It is noted that JP 2003-119401 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 4/14/2025. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claim 1, Matsuzawa et al teach a curable resin composition comprising a vinyl-based polymer composed of a repeating unit derived from an alkoxycarbonyl ester group-containing unsaturated dibasic acid ester, a repeating unit derived from a hydroxy group-containing vinyl-based monomer (i.e., reads on structural unit comprising a hydroxy group in present claim 1), and a transesterification catalyst (overview) which reads on the transesterification catalyst in present claim 1. The repeating unit derived from an unsaturated dibasic acid ester containing an ester group represented by the general formula I:
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wherein R1 is hydrogen or C1-C12 alkyl and R2 is a monovalent organic group (paragraph 0005-0007). Typical examples of the monovalent organic group R2 contained in the ester group of the general formula I include alkyl groups such as C1-C12 alkyl groups, n-hexadecyl group and n-octadecyl groups (paragraphs 0014) which reads on structural unit of formula I in present claim 1. It is the Office’s position that repeating unit derived from an unsaturated dibasic acid ester containing an ester group represented by the general formula I would inherently have a molecular weight less than 6000 (i.e., reads on the molecular weight of structural unit in present claim 1). It is noted that the thermosetting composition, of Matsuzawa et al, does not include polymer having a constituent unit based on monomer represented by formula 3 wherein n = 1 to 20.
Matsuzawa et al are silent with respect to two or more structures represented by formula I.
However, Matsuzawa et al in the general disclosure teach that examples of the repeating unit derived from an unsaturated dibasic acid ester of the general formula I include a repeating unit having two ester groups of general formula III-1 and a repeating unit having one ester group of the general formula III-2 (paragraph 0022-0023).
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and
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(paragraphs 0022-0023) wherein R1 represents hydrogen or C1-C12 alkyl, R2 represents a monovalent organic group and R3 represents a hydrogen or monovalent organic group (paragraph 0024). Typical examples of R3 as the monovalent organic group are exemplified as typical examples of R2 as the monovalent group. R3 is preferably an alkyl group having a carbon number of 1 to 8 (paragraph 0025). Therefore, in light of the teachings in general disclosure of Matsuzawa et al, it would have been obvious to one skilled in art prior to the filing of present application to include a combination of repeating unit having two ester groups and one ester group in the polymer, of Matsuzawa, because they are both equivalent in their ability to function as repeating unit including an alkoxycarbonyl methyl ester group-containing unsaturated dibasic acid ester for preparing the vinyl polymer, absent evidence to the contrary.
Regarding claim 5, Matsuzawa et al teach that the composition can be aqueous solution or aqueous dispersion type depending on the application (paragraph 0119).
Regarding claim 8, see examples, wherein the curable resin composition comprising the vinyl polymer and transesterification catalyst are coated, baked at 1200C, and cured to obtain a coating film (paragraph 0130).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuzawa et al (JP 2003-119401 A) in view of Shinohara et al (JP 07-157711 A).
It is noted that JP 07-157711 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 4/14/2025. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Matsuzawa et al in paragraph 9 above is incorporated here by reference. Additionally, examples of repeating unit of general formula I include
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(paragraph 0023) wherein R3 represents hydrogen (paragraph 0024) which reads on the resin component further comprises a carboxylate group in present claim 6.
Matsuzawa et al are silent with respect to converting the resin into aqueous form by neutralizing the carboxylate group with a basic compound.
However, Shinohara et al teach water based thermosetting composition. The coating composition is composed of a water-soluble resin produced by copolymerizing an ethylenically unsaturated monomer containing carboxyl group and making the copolymer soluble in water by neutralizing the carboxyl group with a basic compound (overview). The regulation in concentration of organic solvents in a coating composition is increased (paragraph 0002). Therefore, in light of the teachings in Shinohara et al, it would have been obvious to one skilled in art prior to the filing of present application to neutralize carboxyl group of the thermosetting resin, of Matsuzawa et al, with a known method of neutralizing with a basic compound, for obtaining an aqueous based thermosetting coating composition, in light of the regulations regarding the use of solvents in coating compositions.
Allowable Subject Matter
Claim 4 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.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 8 and 9, of Office action mailed 9/15/2025 are withdrawn in view of the amendment and/or applicant argument and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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