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 .
This action is responsive to Applicant's amendments/remarks filed 02/03/2026.
Claims 1-6, 8, 10, 12, 13, 15, 16, 23-29, 31, 32, 34, 54, and 56 are currently pending, of which claims 29, 31, 34, 54, and 56 are withdrawn.
Claims 1-6, 8, 10, 12, 13, 15, 16, 23-28, and 32 are currently under examination.
The objection, rejection under 35 U.S.C. 112(b), rejections under 35 U.S.C. 102 and 103, and rejections on the ground of nonstatutory double patenting as stated in the Office action filed 11/05/2025 are withdrawn in view of the above amendments.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “a melt index at 200°C of at least at least 40 g/10 min”. Applicant is suggested to revise it as “a melt index at 200°C of at least 40 g/10 min” for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1-6, 23-25, and 27 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Jung (US 2001/0051227 A1, hereinafter Jung).
Regarding claims 1, 2, and 27, Jung teaches ([0017]) a powder coating composition comprising:
a modifying resin, wherein the modifying resin can be a phenoxy resin, an epoxy resin, or a mixture thereof ([0017]);
an inorganic filler, wherein the inorganic filler can be aluminum oxide ([0078]), which reads on the claimed thermally conductive, electrically insulative filler material.
Thus, the modifying resin of Jung can comprise a phenoxy resin and an epoxy resin. The phenoxy resin in Jung reads on the claimed thermoplastic material. The epoxy resin in Jung reads on the claimed thermoset binder.
Jung also teaches that the powder coating composition comprises a powder, and the powder has a particle size diameter of about 70 to about 100 microns ([0089]), which falls within the claimed range of “1 micron to 200 microns”.
Regarding claims 3-6, the court has held that “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01 II. "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Therefore, the properties of a melt temperature (Tm) of at least 50°C, a glass transition temperature (Tg) of at least -30°C, a melt index at 200°C of at least 40 g/10 min, and a melt viscosity at 200°C of at least 90 Poise, would be present in the identical compound (phenoxy resin) as taught by Jung.
Regarding claims 23 and 24, Jung teaches that the powder coating composition forms a film ([0002]), and the powder coating composition comprises a modifying resin comprising an epoxy resin ([0017]), which reads on the claimed film-forming resin comprising an epoxy resin.
Regarding claim 25, Jung teaches that the powder coating composition forms a film ([0002]). Jung also teaches that the powder coating composition comprises a modifying resin which comprises an epoxy resin ([0017]), and the powder coating composition further comprises a second modifying polymer ([0086], claim 5), wherein the second modifying polymer is a thermoset polymer and comprises a polyester resin ([0086]-[0087], claim 7). Thus, the powder coating composition of Jung forms a film and comprises an epoxy resin and a polyester resin, which reads on the claimed film-forming resin comprising an epoxy resin and a polyester resin.
2. Claim 10 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Jung (US 2001/0051227 A1, hereinafter Jung) as applied to claims 1-6, 23-25, and 27 above, and as evidenced by “Phenoxy Resin Technical Data Sheet” (“Phenoxy Resin Technical Data Sheet from Scientific Polymer Products, Inc.”, 2026, hereinafter “Phenoxy Resin Technical Data Sheet”).
Regarding claim 10, Jung teaches that the powder coating composition comprises a modifying resin, wherein the modifying resin comprises a phenoxy resin ([0017]), which reads on the claimed thermoplastic material.
“Phenoxy Resin Technical Data Sheet” as an evidentiary reference shows that phenoxy resin contains a hydroxy group (p. 1, § STRUCTURE).
Therefore, the phenoxy resin in Jung (the claimed thermoplastic material) contains a hydroxy group as evidenced by “Phenoxy Resin Technical Data Sheet”, which reads on the claimed functional group.
3. Claims 1 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara (JP 2009179700 A, hereinafter Hara).
Regarding claims 1 and 26, Hara teaches a thermally conductive powder coating composition comprising a thermally conductive material and a resin component ([0010]),
wherein the thermally conductive material comprises a metal compound filler such as aluminum oxide ([0018], [0036]), which reads on the claimed thermally conductive, electrically insulative filler material;
the resin component comprises a thermosetting resin and a thermoplastic resin ([0013]), which read on the claimed thermoset binder and the claimed thermoplastic material.
Hara teaches that the thermally conductive powder coating composition further comprises a curing agent ([0016]), wherein the curing agent can be a phenolic resin ([0052]), which reads on the claimed crosslinker comprising a phenolic resin.
Hara also teaches that the powder coating composition comprises particles, and the powder coating composition has an average particle size of 10 to 100 μm ([0039]), which falls within the claimed range of “1 micron to 200 microns”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
4. Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1, hereinafter Jung) as applied to claims 1-6, 23-25, and 27 above, and further in view of Ando (JP 2018172609 A, hereinafter Ando).
The disclosure of Jung is relied upon as set forth above.
Regarding claim 8, Jung teaches that a powder coating composition comprises a modifying resin, wherein the modifying resin comprises a phenoxy resin ([0017]), which reads on the claimed thermoplastic material.
Jung also teaches that the phenoxy resin can be prepared by the polymeric adduction of bisphenol-A with the diglycidyl ether of bisphenol-A ([0061]-[0062]).
Jung does not teach that the phenoxy resin has a weight average molecular weight of 15,000 to 1,000,000 g/mol, or a number average molecular weight of 5,000 to 100,000 g/mol.
However, Ando teaches that phenoxy resin is a thermoplastic resin and has a weight average molecular weight (Mw) of 10,000 to 200,000 ([0019]), which overlaps with the claimed range of “15,000 to 1,000,000 g/mol”.
Ando also teaches that the phenoxy resin is prepared by polymerization of a dihydric phenol compound with a bifunctional epoxy resin ([0019]), wherein the dihydric phenol compound can be bisphenol A, and the bifunctional epoxy resin can be bisphenol A epoxy resin ([0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to expect that the phenoxy resin as taught by Jung would have a weight average molecular weight (Mw) of 10,000 to 200,000 as taught by Ando with a reasonable expectation of success, because both the phenoxy resin in Jung and Ando are prepared by polymerization of a diepoxide such as a diglycidyl ether of bisphenol A and a difunctional species such as bisphenol A as recognized by Jung and Ando. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 12, Jung teaches that a powder coating composition comprises a modifying resin, wherein the modifying resin comprises a phenoxy resin ([0017]), which reads on the claimed thermoplastic material.
Jung also teaches that the phenoxy resin can be prepared by the polymeric adduction of bisphenol-A with the diglycidyl ether of bisphenol-A ([0061]-[0062]).
Jung does not teach that the phenoxy resin has a hydroxyl equivalent weight of 200 to 500,000 g/equivalent.
However, Ando teaches that phenoxy resin is a thermoplastic resin ([0019]) and has a hydroxyl group equivalent (g/eq) of 1000 or less ([0020]), which overlaps with the claimed range of “200 to 500,000 g/equivalent”.
Ando also teaches that the phenoxy resin is prepared by polymerization of a dihydric phenol compound with a bifunctional epoxy resin ([0019]), wherein the dihydric phenol compound can be bisphenol A, and the bifunctional epoxy resin can be bisphenol A epoxy resin ([0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to expect that the phenoxy resin as taught by Jung would have a hydroxyl group equivalent (g/eq) of 1000 or less as taught by Ando with a reasonable expectation of success, because both the phenoxy resin in Jung and Ando are prepared by polymerization of a diepoxide such as a diglycidyl ether of bisphenol A and a difunctional species such as bisphenol A as recognized by Jung and Ando. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
5. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1, hereinafter Jung) as applied to claims 1-6, 23-25, and 27 above.
The disclosure of Jung is relied upon as set forth above.
Regarding claim 13, Jung teaches that the powder coating composition comprises about 0% to about 25% by weight of a modifying resin by total weight of the composition, wherein the modifying resin can comprise a phenoxy resin and an epoxy resin ([0017]). Thus, the phenoxy resin of Jung (the claimed thermoplastic material) can be in an amount of about 0% to about 12.5% by weight based on the total weight of the composition, which overlaps with the claimed range of “0.5% to 20% by weight”.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
6. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1, hereinafter Jung) as applied to claims 1-6, 23-25, and 27 above, and further in view of Pratt (US 2015/0240113 A1, hereinafter Pratt).
The disclosure of Jung is relied upon as set forth above.
Regarding claim 15, Jung teaches a powder coating composition for a metal substrate that, after application, demonstrates excellent adhesion and flexibility ([0002]).
Jung does not teach a core-shell polymer.
However, Pratt teaches a powder coating composition comprising a thermosetting epoxy resin, core-shell rubber particles, and a filler material ([0006], claim 1).
Pratt also teaches that the core-shell rubber particles preferably include a polybutadiene rubber core with an acrylate polymer shell ([0036]), which read on the claimed core-shell polymer.
Pratt further teaches that the addition of core-shell rubber particles increase the flexibility of the resultant coating without negatively affecting the glass transition temperature of the coating, even at high filler loadings ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the powder coating composition as taught by Jung further comprising the core-shell rubber particles as taught by Pratt, in order to increase the flexibility of the coating without negatively affecting the glass transition temperature of the coating with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
7. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1, hereinafter Jung) in view of Pratt (US 2015/0240113 A1, hereinafter Pratt).
Regarding claim 16, Jung teaches ([0017]) a powder coating composition comprising:
a modifying resin, wherein the modifying resin comprises an epoxy resin ([0017]), which reads on the claimed thermoset binder;
an inorganic filler, wherein the inorganic filler can be aluminum oxide ([0078]), which reads on the claimed thermally conductive, electrically insulative filler material.
Jung also teaches that the powder coating composition comprises a powder, and the powder has a particle size diameter of about 70 to about 100 microns ([0089]), which falls within the claimed range of “1 micron to 200 microns”.
Jung further teaches that the powder coating composition for a metal substrate, after application, demonstrates excellent adhesion and flexibility ([0002]).
Jung does not teach a core-shell polymer.
However, Pratt teaches a powder coating composition comprising a thermosetting epoxy resin, core-shell rubber particles, and a filler material ([0006], claim 1).
Pratt also teaches that the core-shell rubber particles preferably include a polybutadiene rubber core with an acrylate polymer shell ([0036]), which read on the claimed core-shell polymer.
Pratt further teaches that the addition of core-shell rubber particles increase the flexibility of the resultant coating without negatively affecting the glass transition temperature of the coating, even at high filler loadings ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the powder coating composition as taught by Jung further comprising the core-shell rubber particles as taught by Pratt, in order to increase the flexibility of the coating without negatively affecting the glass transition temperature of the coating with a reasonable expectation of success. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
8. Claims 28 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1, hereinafter Jung) as applied to claims 1-6, 23-25, and 27 above, and further in view of Kawada (JP 2000001632 A, hereinafter Kawada).
The disclosure of Jung is relied upon as set forth above.
Regarding claim 28, Jung teaches that the powder coating composition comprises an inorganic filler, wherein the inorganic filler is in an amount of about 0% to about 50% by weight based on the total weight of the composition ([0017]), which overlaps with the claimed range of “at least 40% by weight”.
Jung also teaches that exemplary inorganic fillers include, but are not limited to, aluminum oxide ([0078]), and the inorganic filler is incorporated into the powder coating composition in the form of a powder ([0078]).
Jung does not teach aluminum hydroxide.
However, Kawada teaches a powder coating composition comprises a powdery inorganic filler ([0007], claim 4), wherein the examples of the powdery inorganic filler include aluminum oxide and aluminum hydroxide ([0020]), and the powdery inorganic filler is preferably aluminum hydroxide when considering crack resistance ([0020], claim 5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the aluminum hydroxide as taught by Kawada as the inorganic filler in Jung, in order to improve the crack resistance of the coating with a reasonable expectation of success, because the aluminum hydroxide is used as a powdery inorganic filler for a powder coating composition when considering crack resistance as recognized by Kawada.
Therefore, in the powder coating composition as taught by the combination of Jung and Kawada, aluminum hydroxide as an inorganic filler can be in an amount of about 0% to about 50% by weight based on the total weight of the composition, which overlaps with the claimed range of “at least 40% by weight”. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Regarding claim 32, Jung teaches that the powder coating composition comprises an inorganic filler ([0017]), and exemplary inorganic fillers include, but are not limited to, aluminum oxide ([0078]), and the inorganic fillers can be used in a mixture of two or more ([0078]). Jung also teaches that the inorganic filler is incorporated into the powder coating composition in the form of a powder ([0078]).
Jung does not teach that the inorganic filler comprises at least two of aluminum hydroxide, dead burned magnesium oxide, and boron nitride.
However, Kawada teaches that a powder coating composition comprises a powdery inorganic filler ([0007], claim 4), and the examples of the powdery inorganic filler include boron nitride, aluminum hydroxide, and aluminum oxide ([0020]), and these fillers can be used in a mixture of two or more ([0020]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the powder coating composition comprising an inorganic filler comprising aluminum oxide as taught by Jung further comprising boron nitride and aluminum hydroxide as taught by Kawada, in order to make a powder coating composition with a reasonable expectation of success, because the powdery inorganic fillers comprising aluminum oxide, boron nitride, and aluminum hydroxide are used in a powder coating composition as recognized by Kawada. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Response to Arguments
Applicant's arguments with respect to the prior rejections have been considered but are moot, because the arguments do not apply to all of the references being used in the current rejection. The current rejection utilizes new references, Jung (US 2001/0051227 A1), Hara (JP 2009179700 A), Kawada (JP 2000001632 A), “Phenoxy Resin Technical Data Sheet” (“Phenoxy Resin Technical Data Sheet from Scientific Polymer Products, Inc.”, 2026), and “Phenoxy Resin-Corrosionpedia” (“Phenoxy Resin Information from Corrosionpedia”, 2019), under a new ground(s) of rejection which renders obvious the instant claims.
As stated above, claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Jung (US 2001/0051227 A1).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara (JP 2009179700 A).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2001/0051227 A1) in view of Pratt (US 2015/0240113 A1).
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.
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/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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