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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 34 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 34 fails to further limit the subject matter of Claim 24, on which it depends, since it recites identical limitation to that already found in claim 24.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-8, 16, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi et al. (JP 2005/034688) in view of Kuo et al. (US 10,563,040 B2).
Regarding claims 1-8 and 20, Takashi discloses a curable coating film (page 2, lines 54-56) that is a Michael reaction between a component (a) having an active methylene and/or methine group, component (b) an ultraviolet curable compound having an α,β-unsaturated double bond, and a Michael reaction catalyst (c) (page 2, lines 57-61). The component (a) includes a malonate functional polyester (page 5, lines 284-287) which is identical to the reactive donor of the present invention (paragraph 0043 of present specification) and therefore would necessarily be capable of providing two or more nucleophilic carbanions. The component (b) is a trimethylolpropane tri(meth)acrylate (page 7, lines 404 and 414) which has three C-C double bonds and is identical to the reactive acceptor of the present invention (paragraph 00112 of present specification). The Michael reaction catalyst is an onium salt catalyst (page 9, line 562) and includes tetrabutylammonium cation (page 9, line 567) and anion derived from acid including phthalic acid, oxalic acid, malonic acid, succinic acid, and maleic acid (page 9, lines 576-581). Given that the catalyst is identical to that used in the present invention including derived from the same acids as the present invention (paragraphs 0065-0066 of the present specification), the catalyst would meet formula I and the anion would necessarily have the same pKa as claimed.
Takashi further discloses the composition includes organic solvents including aromatic hydrocarbon solvents, ketone solvents, and ester solvents (page 11, lines 707-709 and page 12, lines 750-752).
Takashi does not disclose the composition comprising ethanol as claimed.
Kuo discloses a composition comprising a malonate-functional polyester (Col 3, lines 40-42) and a catalyst including quaternary ammonium compounds (Col 8, lines 45-46). Kuo teaches that the pot life of the composition may be extended by adding alcohol such as ethanol to the composition to block the catalyst (Col 8, lines 58-62).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takashi to incorporate the teachings of Kao and produce the curable coating film of Takashi further comprising ethanol. Doing so would extend the pot life of the curable coating film.
Regarding claim 16, Takashi in view of Kuo discloses all the limitations of the present invention according to Claim 1 above. Takashi further discloses an additional catalyst (page 2, lines 95-96).
Regarding claim 22, Takashi in view of Kuo discloses all the limitations of the present invention according to Claim 20 above. Takashi further discloses a substrate coated with the curable composition where the substrate includes metal and plastic (page 13, lines 835-837).
Claims 24-31, 34, 42-44, 46, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Takashi in view of Kuo and Avudaiappan et al. (US 2018/0282554).
Regarding claims 24-31, 34, 42-44, and 48, Takashi discloses a curable coating film (page 2, lines 54-56) that is a Michael reaction between a component (a) having an active methylene and/or methine group, component (b) an ultraviolet curable compound having an α,β-unsaturated double bond, and a Michael reaction catalyst (c) (page 2, lines 57-61). The component (a) includes a malonate functional polyester (page 5, lines 284-287) which is identical to the reactive donor of the present invention (paragraph 0043 of present specification) and therefore would necessarily be capable of providing two or more nucleophilic carbanions. The component (b) is a trimethylolpropane tri(meth)acrylate (page 7, lines 404 and 414) which has three C-C double bonds and is identical to the reactive acceptor of the present invention (paragraph 00112 of present specification). The Michael reaction catalyst is an onium salt catalyst (page 9, line 562) and includes tetrabutylammonium cation (page 9, line 567) and anion derived from acid including phthalic acid, oxalic acid, malonic acid, succinic acid, and maleic acid (page 9, lines 576-581). Given that the catalyst is identical to that used in the present invention including derived from the same acids as the present invention (paragraphs 0065-0066 of the present specification), the catalyst would meet formula I.
Takashi further discloses the composition includes organic solvents including aromatic hydrocarbon solvents, ketone solvents, and ester solvents (page 11, lines 707-709 and page 12, lines 750-752).
Takashi does not disclose the composition comprising ethanol as claimed.
Kuo discloses a Michael addition composition comprising a malonate-functional polyester (Col 3, lines 40-42) and a catalyst including quaternary ammonium compounds (Col 8, lines 45-46). Kuo teaches that the pot life of the composition may be extended by adding alcohol such as ethanol to the composition to block the catalyst (Col 8, lines 58-62).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takashi to incorporate the teachings of Kao and produce the curable coating film of Takashi further comprising ethanol. Doing so would extend the pot life of the curable coating film.
Takashi in view of Kuo does not disclose a co-catalyst as presently claimed.
Avudaiappan discloses a coating composition comprising binder made from Michael Addition reaction of reactive donor, reactive acceptor, and catalyst (para 0010). The composition further comprises pigment, including 1-30% calcium silicate, in order to decrease or delay corrosion and blistering (paras 0016-0019).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Takashi in view of Kuo to incorporate the teachings of Avudaiappan to include 1-30% calcium silicate pigment. Doing so would delay or decrease corrosion or blistering.
Although there is no disclosure that the calcium silicate is a co-catalyst having pH as claimed, given that calcium silicate is identical to the co-catalyst presently claimed, it would necessarily inherently function as a co-catalyst and have pH as claimed.
Regarding claim 46, Takashi in view of Kuo and Avudaiappan discloses all the limitations of the present invention according to Claim 24 above. Takashi further discloses a substrate coated with the curable composition where the substrate includes metal and plastic (page 13, lines 835-837).
Response to Arguments
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
Applicant argues against the use of Kuo, arguing that Kuo does not disclose a Michael reaction based composition, and that the catalyst used and reaction being catalyzed are completely different than that in Takahashi or the present invention.
Examiner agrees that the rejection of record mistakenly characterized the composition of Kuo as a Michael addition reaction (which characterization has been removed as seen above) however, this does not change the basis of the rejection or combination.
Since Kuo discloses composition comprising malonate polyester, which is the same as the Michael addition donor used in Takahashi and in the present invention, and Kuo discloses a quaternary ammonium catalyst, which is the same type of catalyst used Takahashi and in the present invention, Examiner maintains that a person having ordinary skill in the art would find the teachings of Kuo regarding this catalyst to be relevant to and combinable with the teachings of Takahashi.
Further, Kuo is only used as teaching reference in order to teach use of ethanol to extend shelf-life by temporarily blocking the catalyst. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). The ethanol extends shelf life by blocking the catalyst until the composition is applied and the alcohol evaporates, at which point the catalyst is unblocked and can then catalyze the reaction. The actual blocking of the catalyst occurs independently of the reaction mechanism being catalyzed.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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