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 .
Examiner’s Comments
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/18/26 has been entered.
The amendment of 2/18/26 has been entered. Claims 1-11, 13-21, 29-30, and 33-41 are pending.
Rejections
Claim Rejections - 35 USC § 103
2. 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.
3. Claims 1-11, 13-21, 29-30, and 33-41 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-224905 Moriga et al., the machine English translation supplied by the examiner being referenced below unless otherwise noted, in view of US Pat. No. 6576717 Kuo.
Regarding claims 1-11, 14-16, 18, 21, 29-30, and 33-39:
Moriga discloses grafting a polyester to a polyacrylate and using the acrylic-modified polyester resin dispersed in water containing up to 30 wt% of organic solvent by weight of the entire composition. See Moriga, paragraph [0001], [0006], [0009], noting the acrylic-modified polyester resin, [0010], [0012], [0014], noting that acrylic modified polyester is particularly preferred, [0017], noting the solution polymerization of the acrylic polymer, [0018], noting the acrylic-modified polyester resin, [0019], [0020], [0021], [0022], particularly noting the grafting of acrylic polymer to the polyester of page 18, lines 1-12, [0023], noting the polymerization in the presence of solvent of page 18, lines 14-15 and the grafting particulars of page 18, lines 18-23, [0024], [0025], [0026], [0027], noting that the coating compositions may be solvent based and cured with an amino resin, [0033], noting that the amino resin curing agent may be that of the instant claims 1, 3, 4, and 33, particularly noting Chemical formula 1 of Moriga, and page 24, lines 2, noting that it is particularly preferred to use etherified amino resins, [0034], noting the benzoguanamine resins and their etherification with methylol or butanol, [0035], noting the amounts of modified polyester resin to amino resin, [0038], noting the amounts of solvent of page 25, lines 22-23, [0040], noting that it is particularly preferred to use the acrylic-modified polyester resin as an aqueous coating material (page 27, lines 1-3), [0041], noting the method of forming an aqueous coating from the acrylic-modified polyester resin, [0045], noting dispersing of an organic solvent solution of the polymer into water, [0046], noting that it is preferable that the aqueous coating composition has a solvents content of 30% or less (page 30, lines 12-14), [0057], noting that the polyester forming acids and alcohols were dissolved in organic solvent and graft-modified with acrylic acids and styrene to prepare an acrylic-modified polyester (page 38, lines 1-6), [0059], noting that Examples 2-7 are all examples of water-based paints (page 40, line 1), and the remainder of the document.
The monomers of Moriga, page 12, lines 17-23, page 13, lines 1-6, page 14, lines 20-22, page 15, lines 1-19, particularly lines 2, 5, and 6, noting the 1,2-cyclohexanedicarboxylic acid which gives the same moieties in the polyester as the hexahydrophthalic anhydride of the instant claim 6, page 15, line 4, noting the dimer acids which include the instantly claimed polyacids having aliphatic groups of at least 15 carbon atoms of the instant claims 6 and 8, page 15, lines 8-12, particularly noting lines 10, 12, and 17, page 17, lines 16-21, and page 38, lines 2-4, which include the monomers of the instant claims 5-8.
The polyester of Moriga’s acrylic-modified polyesters has a number average molecular weight of 3000-30000 and particularly 5000-10000, which falls within the scope of the instant claim 9. See Moriga, page 15, lines 21-22.
The molecular weights and difunctional monomers of the polyesters of Moriga having an acid number of 10 mg KOH/g or more necessitates that the polyesters of Moriga have an OHV within the scope of the instant claim 10. Considering a polyester of Moriga made with only diacid and diol, having an Mn= 10000 g/mole, and having two terminal OH groups, which is the maximum allowed by these polyesters of Moriga: OHV = (56.1 g KOH/mole * 1000 mg/g * number of OH groups per molecule)/Mn which gives an OHV of 11.22 mg KOH/g. Moriga’s polyesters therefore fall within the scope of the instant claim 10.
The acrylic polymer of Moriga is polymerized in the presence of their polyester to form an acrylic modified polyester resin which falls within the scope of the instant claim 11.
The acrylic monomers of Moriga may contain hydroxy acrylate monomers, which falls within the scope of the instant claims 1, 34, and 35. See Moriga, page 13, line 4.
Moriga’s acrylic polyester resins are not required to have OH groups, which falls within the scope of the instant claim 14.
The benzoguanamine resins of Moriga are the only crosslinkers required when they are used which falls within the scope of the instant claim 15.
The coating compositions of Moriga do not require the compounds of the instant claim 16.
The compositions of Moriga do not require formaldehyde which falls within the scope of the instant claim 18.
Moriga does not exemplify coating compositions which are those of the instant claims and does not specify the instantly claimed combinations of ingredients and amounts with sufficient specificity to anticipate the instant claims.
Moriga does not disclose the instantly claimed 2,2,4,4-tetraalkylcyclobutane-1,3-diol or 2-methyl-1,3-propanediol alone or in combinations thereof. Moriga, page 15, lines 8-12, particularly line 9, “and the like”, encompasses using polyols in addition to those specified therein.
Kuo discloses aqueous coating compositions of acrylic-modified polyester resins which are cured with substituted melamines, which encompass the instantly claimed curing agents. See Kuo, column 11, lines 5-12. Kuo does not disclose the instantly claimed curing agents. Kuo, column 7, lines 8-30, particularly lines 10, 17-18, 24, and 29-30, does disclose making their acrylic modified polyesters with polyols including 2-methyl-1,3-propanediol and 2,2,4,4-tetramethyl-1,3-cyclobutanediol and mixtures thereof. Kuo also encompasses the mixtures of polyols of the instant claims 1, 7, 33, and 36-39.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions of the instant claims 1, 3-11, 14-16, 18, 23, 25, 33, and 36-39 from the disclosure of Moriga because Moriga encompasses the instantly claimed combinations of ingredients and amounts, including the instantly claimed amounts of organic solvent at page 30, lines 12-14 and the instantly claimed hydroxy functional acrylic monomer residues at page 13, line 4, and such a combination of ingredients of Moriga’s coating compositions would have been expected to give coating compositions having the properties of the coating compositions of Moriga, including the properties explicitly discussed in Moriga and the properties inherent to the coating compositions of Moriga, and the acrylic-modified polyester resin properties of Kuo.
The coating compositions of Moriga are for coating metal food packaging. See Moriga, page 3, lines 11-14. The coatings of Moriga are intended to prevent flavor components from being adsorbed into the coating film. See Moriga, page 8, lines 20-23 and page 9, lines 1-4. This implies that the coating is on the inside of the packaging next to the food or drink. See Moriga, page 31, lines 7-23, particularly noting the can body and can lid of lines 20-23, page 32, lines 1-22, particularly noting the easy-open can lid of line 8, and page 33, lines 1-17.
This makes obvious the instant claims 2, 21, and 29-30, noting that the options of the instant claims 26 and 28 encompass all of the possibilities, when coupled with the above obviousness statement regarding the obviousness of claim 1. Note the easy to open can of Moriga, page 32, line 8. It is noted above that the coatings of Moriga are necessarily on the inside of their packaging and cans because they are disclosed as not absorbing the flavorings of their contents, which only occurs to things next to the coating.
Regarding claim 13:
Moriga does not disclose their acrylic-modified polyester as having the number average molecular weight of the instant claim 13. The acrylic and polyester portions of Moriga’s acrylic-modified polyester may have number average molecular weights as low as 1000 and 3000 (Moriga, page 19, lines 20-22 and page 15, lines 21-22).
Since the small molecular weight of the polyester portion will not allow as many grafts thereto do to the fewer number of atoms therein, it encompasses only a few grafted acrylic chains to the polyester. These small molecular weights therefore encompass the Mn of the instant claim 13.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions of the instant claim 13 from the disclosure of Moriga because they are encompassed by the full disclosure of Moriga, as discussed above, and would have been expected to give only predictable results such as predictable ability to flow and evenly coat the substrate and coalesce to form continuous films due to their lower molecular weights and the relationship between molecular weight and viscosity implied by “viscosity average molecular weight”, “inherent viscosity”, and “intrinsic viscosity”.
Regarding claim 17:
Moriga does not require the presence of styrene, noting the disclosed use of ethylenically unsaturated monomers which are not styrene at Moriga, page 12, line 17 to page 13, line 13, page 14, lines 19-22, page 17, lines 16-22, and page 19, lines 20-21.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the coating compositions of the instant claim 17 from the disclosure of Moriga because they are encompassed by the full disclosure of Moriga, as discussed above, and would have been expected to give only predictable results, including predictable glass transition temperatures from the Fox equation for Tg and the absence of taste which can be imparted by the presence of styrene monomer in styrene containing polymers.
Regarding claims 19-20:
No polymerization reaction goes to completion. This applies to the grafting reactions of Moriga also. Therefore, there always remains unreacted polyester in the compositions of Moriga which contain the acrylic-modified polyester resin. This polyester contains acid groups when its acid value is non-zero according to Moriga’s teachings at page 16, lines 1-2. The free polyester of Moriga’s acrylic-modified polyester resins necessarily adheres to some substrate and is therefore necessarily an adhesion promoter of the instant claims 19-20.
Regarding claims 40-41:
Moriga, page 17, lines 16-20 discloses adding an unsaturated carboxylic acid or anhydride to the polyester for the acrylic modification of the polyester. Moriga, page 15, lines 6-7 discloses making the polyester with unsaturated dicarboxylic acids including the maleic acid of the instant claim 41.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the polyesterof Moriga’s acrylic modified polyesters with the ethylenically unsaturated polyacids of the instant claims 40-41 because they are encompassed by Moriga, page 15, lines 6-7 and would have been understood to provide sites to which the unsaturation of Moriga’s acrylic polymers can graft.
Response to Applicant’s Arguments
4. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 3 above:
In their response of 2/18/26:
The applicant argues “KSR” and that the examiner has not given an adequate explanation why the ordinary skilled artisan would choose 1 or 2 diols of 33 diols disclosed in Kuo and use those diols specifically to synthesize the claimed graft polymer of Moriga. The rationale is clearly stated, noting page 7 of the prior office action that notes “and the like” of Moriga regarding polyols to use to give their graft copolymers. Kuo specifically encompasses their use in making acrylic modified polyesters. Therefore, one would have known to use the polyols of Kuo and the instant claims in Moriga to achieve a graft polymer of Moriga and the instant claims. The graft chemistry of the prior art is relatively basic to the ordinary skilled artisan prior to this invention particularly because the ordinary skilled artisan in these arts typically have a PhD in chemistry or a related art and many years of experience in the art. Reading Moriga and Kuo readily makes the instantly claimed invention obvious. Also, “KSR” establishes that “obvious to try” is a basis for obviousness. The combination of Moriga and Kuo clearly makes the instantly claimed inventions obvious from the “obvious to try” test of “KSR”. See MPEP 2141, paragraph III, particularly “E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;”.
The examiner sees no unexpected result stemming from any difference between the instant claims and the cited prior art which is demonstrated in a probative manner which is commensurate in scope with the instant claims and which compares to the closest prior art. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
The applicant’s arguments have been fully considered but are not persuasive for the reasons stated in the above rejections and for the full teachings of the above cited prior art. The rejection is therefore maintained as stated above.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/Primary Examiner, Art Unit 1762