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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 5, 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-5, 7-8 and 14-17 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.
Regarding claim 1, the phrase “ultra-high” renders the claim indefinite because it is unclear what qualities renders the powder coating to have “ultra-high” vs just “high” or “normal” weather-resistance. Clarification is requested.
Claims 4-5, 7-8 and 14-17 are rejected for being dependent upon a previously rejected claim.
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.
Claim(s) 1, 4-5, 7-8, 14 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asami et al (US 2006/0173127) in view of Jung et al (US 6,270,855) and Moens et al (US 2003/0153640).
Regarding claims 1, 7-8, 14 and 16, Asami teaches a powder coating having matting effects (Abstract and [0002]) comprising 2 powders (Examples, Table 1) which are dry mixed ([0112]). Given that the powder coating is used for steel furniture and auto parts ([0002]), the coating would inherently have ultra-high weather resistance. Each of the powders has a polyester resin and a curing agent (Examples, Table 1). The second powder coating composition has an acrylic resin with glycidyl groups (aka epoxy groups) (Examples, Table 1 and [0015]). They would inherently have different curing speeds because they two powders are different. Asami teaches that the ratio of weight parts of the first powder coating to the second powder coating is between the range of 0.2:1 and 5:1 (Table 2). Asami teaches that the epoxy equivalent of the acrylic resin ranges from 250 to 600 ([0046]). Asami teaches that the powder coating of the first polyester coating accounts for no less than 40 wt. % of the first powder coating A and the curing agent accounts for no less than 2% by weight of the first powder coating A (Table 1) and the curing agent can be a hydroxyalkyl amide ([0022]).
Asami fails to teach a) the acid values of these polyester resins nor does it teach the viscosity ranges for these polyester resins and b) Asami is silent to the amount of acrylic resin in the second coating component.
Regarding a) Jung teaches a powder coating composition which incorporates two polyester resins (Abstract). These polyester resins have an acid value between 0 to 150 (col. 4, lines 40-50) and a viscosity at 200 C of 200 to 3000 Pa.s (col. 4, lines 45-55).
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have the polyesters of Asami have the acid value and viscosity as taught by Jung. One would have been motivated to do so in order to receive the expected benefit of using components which result in excellent weatherability (Jung, col. 1, lines 15-20).
Regarding b), Moens teaches a powder coating ([0001]) which combines a first polyester ([0075]), a second polyester ([0076]) and an acrylic polymer with glycidyl (epoxy) group ([0077]). It teaches that the amount of the second polyester ranges from 1 to 85 parts by weight ([0076]) and that the acrylic resin is present in the amount from 10 to 60 parts by weight ([0077]). Given these amounts, the amount either of these components can be varied to overlap the claimed range.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to have the polyester and the acrylic resin in the second component of Asami vary within the amounts as taught by Moens. One would have been motivated to do so in order to receive the expected benefit of using components which result in a coating with excellent weatherability (Moens, [0003])
Regarding claim 4, Asami teaches the presence of a third polyester resin capable of undergoing a curing reaction with the acrylic resin (Examples), and given the range of wide range of acid values taught by Jung, this third polyester resin can have an acid value lower than that of the second polyester resin. Modified Asami does not teach the acid value of the third polyester in in the claimed amount. However, it is well known in the art to optimize result effective variables such as acid values. See MPEP 2144.05. It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the acid values of the third polyester within the wide ranges as taught by Jung, and the motivation to so would have been, as Jung suggests, to obtain excellent weatherability, adhesion, barrier properties and flexibility (Jung, col. 1, lines 14-20).
Regarding claim 5, Asami teaches that coating component B further comprises a curing agent capable of undergoing a curing reaction with the polyester resins (Table 1, [0037]).
Regarding claim 17, Asami teaches that the polyester resin can be the same in the two powders (Examples, polyester A).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asami et al (US 2006/0173127) in view of Jung et al (US 6,270,855) and Moens et al (US 2003/0153640) with evidence provided by Nozaki et al (US 5,229,470).
The discussion regarding Asami, Jung and Moens in paragraph 6 above is incorporated here by reference.
Regarding claim 15, modified Asami teaches that the acid values of the first and second polyester range from between 0 to 150 (Jung, col. 4, lines 40-50). While the reference does not explicitly state that the difference between the first and second polyester is not less than 10, it is noted that the ranges cited in the prior art can be adjusted to overlap the claimed ranges. It is well within the skill of a person familiar with the art to adjust the acid values of the first and second polyester to be not less than 10 in order to adjust the properties of the final powder coating as evidenced by Nozaki in order to obtain a stably highly matting face (col. 3, lines 15-25).
Response to Arguments
Applicant's arguments filed December 5, 2025 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: The cited references fail to disclose the recited features.
Examiner’s response: The above rejection (a combination of Asami, Jung and Moens) teach all the limitations of the recited invention.
Applicant’s argument: In Table 10, the embodiments of the present application show the synergy effect of the claimed invention (the matte weather resistance properties).
Examiner’s response: The examiner has considered the data presented in Table 10. It is noted that while the 12 inventive embodiments do show the applicants stated properties, applicants have failed to show the synergistic effect of the recited invention. The comparative examples are difficult to compare with to the inventive examples because, while the applicant refers to a number of Chinese patents, it is unclear what the exact formulation of each comparative example. It is also unclear how critical the parameters of the claimed invention are for the effect desired by the applicant. For example, no comparative examples show polyester acid values of less than 15, ratios of component A:B outside the claimed range of 0.2:1 to 5:1. Also, there are no examples with the acid values higher than 80 (which would be within the scope of the claimed invention, and therefore should show excellent properties). Therefore, applicant’s argument of unexpected results is not persuasive.
Applicant’s argument: The combination of Asami, Jung and Moens are merely a hindsight after referring to the present application without considering its synergy effect.
Examiner’s response: The examiner has used only teachings which are clearly elucidated in the above references. No reference has been made to applicant’s application for teaching. As such, no hindsight reasoning has been used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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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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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/ Primary Examiner, Art Unit 1764