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 Status
Claims 1-12 are pending.
Priority
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon an application filed in China (PCT/CN2020/134517) on 12/08/2020. The claim for priority cannot be based on said application because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.
Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m)(3); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
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.
Claim 9 is 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.
The term “substantial absence” in claim 9 is a relative term which renders the claim indefinite. The term “substantial absence” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if applicants intended the process of claim 8 to a process conducted with a small amount of solvent or a process that is free of solvent. For the purpose of examination, claim 9 has been interpreted as an absence of solvent.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al (WO 2019/200555 A1; references drawn to corresponding English document, US 2021/0155759 A1) .
Regarding claims 1, 3, 5, 6, and 7; Shen et al teaches a raw silicone resin comprising siloxane units represented by R1SiO3/2 (T), and may further comprise siloxane units represented by the following formulae: R13SiO1/2 (M), R12SiO2/2 (D), and SiO4/2 (Q); Shen et al further teaches the siloxane resin preferably comprises 40 to 100 mole % of the siloxane unit represented by the formula R1SiO3/2 (T) due to advantageous effects regarding thermal resistance and gloss of the coating [p. 0038]. Therefore, the teachings of Shen embrace embodiments wherein the raw silicone resin is an MT resin, wherein the T siloxane units comprise 40 to 100 mole %, and M siloxane units comprise 0 to 60 mol % of the silicone resin, which reads over the ranges of instant claim 1.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Shen teaches at least 50 mol % of R1 are aryl groups, which overlaps with the ranges of instant claim 1 and 7 [p. 0034].
Shen teaches the content of silicon atom-bonded hydroxyl groups, silicon atom-bonded alkoxy groups, or a combination thereof in the raw silicone resin is at least 1 mass %, alternatively in a range of from 1 to 50 mass %, which overlaps with the ranges of instant claims 1 and 3 [p. 0039].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Shen fails to teach the number of silicon atom-bonded alkoxy and hydroxy groups per molecule. However, a skilled artisan would appreciate the general teachings of Shen embrace embodiments wherein the silicon resin has 1 to 50 mass % silicon-bonded alkoxy groups and no silicon atom-bonded hydroxyl groups. Furthermore, a skilled artisan would reasonably predict embodiments of the silicone resin at the lower end of this range would have a limited number of silicon atom-bonded alkoxy groups per molecule.
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed that embodiments of Shen are capable of satisfying the claimed average number of silicon atom-bonded hydroxyl groups silicon atom-bonded alkoxy groups of 2 to 4.
Regarding claim 4; Shen teaches the silicon-bonded alkoxy groups include ethoxy groups [p. 0039].
Claims 2, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al (WO 2019/200555 A1; references drawn to corresponding English document, US 2021/0155759 A1 ) in view of Greene et al (US 20050136267 A1).
The disclosure of Shen is above and is applied here as such.
Regarding claim 2; Shen teaches silicone resin is used to prepare a silicone-modified polyester [p. 0001]. Shen further teaches these silicon-modified polyesters are used in powder coatings [p. 0008]. However, Shen is silent with respect to the number average molecular weight of the silicone resin used to prepare the silicone-modified polyester.
Greene teaches a solid siliconized polyester resin for powder coating [abstract]. Greene teaches that organopolysiloxane resins for preparing siliconized polyester powder coatings are preferably solid at room temperature and have a weight average molecular weight of most preferably 1,200 to 14,000 [p. 0034]. A skilled artisan would appreciate that the weight average molecular weight of a polymer is greater than or equal to the corresponding number average molecular weight. In light of this, it would be obvious to one having ordinary skill in the art to prepare the composition of Shen with a silicone resin having a weight average molecular weight of 1,200 to 14,000 in order to prepare a silicon-modified polyester suitable for powder coating.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8; Shen et al teaches the silicone-modified polyester resin is prepared by: (1) reacting a raw silicone resin and a dihydroxy-functional compound, in the presence of a condensation catalyst and a solvent to produce a carbinol-functional silicone resin; and (2) esterifying the carbinol-functional silicone resin, a polyhydroxy functional compound and a polycarboxyl-functional compound, without using a solvent to form the silicone-modified polyester [p. 0056-0058]. However, Shen et al is silent with respect to the hydroxyl value and acid number of the silicone-modified polyester.
Greene teaches a solid siliconized polyester resin for powder coating [abstract]. Greene teaches the silicone polyester most preferably has an acid number of 0.2-10 mg KOH/g, and a hydroxyl number of 10-800 [p. 0013]. Greene teaches such silicone polyesters are suitable in powder coating compositions and remain a stable solid at room temperature [p. 0008].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the silicone-modified polyester resins having acid numbers and hydroxyl numbers in this range in order for the silicon polyester to be a stable solid a room temperature and suitable for powder coatings.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 12; Shen is silent with respect to the amount of the silicone resin relative to the starting materials used to prepare the silicone-modified polyester. Greene teaches that the silicone resin more preferably comprises 20% to 50% of the silicone polyester.
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the silicone-modified polyester of Shen so that it the silicone resin comprises 20% to 50% of the final product in order for it to be suitable for powder coating applications.
Allowable Subject Matter
Claims 10 and 11 are 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.
Shen et al (WO 2019/200555 A1; references drawn to corresponding English document, US 2021/0155759 A1; Dow Silicones ) discloses a significantly similar silicone-modified polyester, and is the closest prior art of record.
Shen teaches the dihydroxy-functional compound is reacted with the raw silicone resin in an amount such that a mole ratio of hydroxyl groups in the dihydroxy-functional compound per silicon atom-bonded hydroxyl groups, silicon atom-bonded alkoxy groups, or a combination thereof in the raw silicone resin is preferably in a range of from 0.5 to 2.0 [p. 0020]. Therefore, Shen teaches against the limitations of instant claim 10. The examiner could find no prior art, alone or combination, that satisfied the limitations of claim 10 and all intervening claims.
Furthermore, Shen fails to teach the additional step (iii) of claim 11. The final product taught by Shen is the silicone-modified polyester. The examiner could find no prior art, alone or in combination, that taught or suggested the process of claim 11 and all intervening claims.
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Shen teaches the first step in preparing the silicone-modified polyester resin occurs in the presence of solvent [p. 0056-0058]. Therefore, Shen teaches against the limitations of instant claim 9. The examiner could find no prior art, alone or combination, that satisfied the limitations of claim 9 and all intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766