DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office action is in response to the amendment filed 4/3/2026. Claims 1, 4, 9-10, 13-14, 16, 23 are amended; claims 3, 11-12, 15, 17-22, 24 are cancelled; and claims 25-31 are added. Accordingly, claims 1-2, 4-10, 13-14, 16, 23 and 25-31 are currently pending in the application. It is noted that withdrawn claims 13-14, 16 and 23 now depend on elected invention of independent claims 1 or 10. Hence, claims 13-14, 16 and 23 are being included with the elected invention as examined.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claims 10 and 28-29 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.
Claim 10 recites the limitation "the liquid coating" in line 17. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites “acid functionalities on the polyether polymer are at least partially neutralized, optionally with a base” (lines 1-2). It is known to one skilled in art that neutralization of acid is accomplished by treating with a base. It is not clear what else can be used to neutralize acid functionality of the polyether chain other than a base in present claim 28. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art. Examiner interprets the neutralization to occur with the aid of a base such as amine.
Claim 29 recites “and is 2, 3, or 4” (line 3). It is not clear what these integers refer to in the context of the polyether of claim 4 on which this claim is dependent. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art. Examiner interprets these integers to represent the value of “v”.
Claim 30 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. Specifically, claim 7 recites “polyether polymer is formed by reacting an oxirane-functional polymer containing the plurality of Formula (I) with acid-functional ethylenically unsaturated monomers” (lines 1-3) and fails to further limit the scope of claim 1 on which is claim is dependent. Specifically, polyether polymer in claim 1 is a reaction product of aliphatic diepoxide and a dihydric monopohenol, while claim 28 can include any polyether polymer that is an oxirane functional polymer. 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
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-2, 4-10, 13-14, 16, 23, 26, and 29-31 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pedersen et al (US 5,830,952).
Regarding claim 1, 7 and 14, Pedersen et al disclose applying composition to a metal substrate and curing at 4500F (col. 25, lines 6-15) which reads on applying a coating composition on surface of a metal substrate and hardening the coating composition in present claim 1. The coating composition comprises a water-dispersible polymer (i.e. reads on the water-dispersible polymer in present claim 1) and a carrier containing water (abstract) which reads on water and water-based coating composition in present claim 1. The coating composition is applied to a metal substrate and can be used on the interior of can bodies of food containers (col. 4, lines 28-40) which reads applying a water-based coating composition on a surface or a portion of metal substrate and forming the substrate into a food container and interior food-contact coating in present claim 1. A water-dispersible polymer is prepared from epoxy compound having about two epoxy groups (col. 4, lines 44-46). The epoxy compounds having about two epoxy groups typically is a linear epoxy resin terminated at each molecular end of the resin with an epoxy group (col. 8, lines 46-48). The epoxy compound can be an aliphatic epoxy compound (col. 8, lines 51-52). Epoxy resins that can be used as a component of the water-dispersible polymer are prepared from the following epoxy containing materials:
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(i.e., reads on aliphatic diepoxide in present claim 1) These epoxy containing materials are reacted with bisphenols other than bisphenol A to adjust the molecular weight of epoxy compound to a sufficiently high range (col. 12, lines 58-67). Examples of bisphenols other than bisphenol A include
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(col. 10, lines 4-32) (i.e., hydroquinone and reads on dihydric monophenol in present claims 1 and 14). Hence, it is the Office’s position that a resin formed from hydroquinone and aliphatic diepoxide would result in a polyether having segments of the formula -O-Ar-O (i.e., reads on polyether comprising plurality of segments of -O-Ar-O- wherein Ar is an aryl group and each depicted oxygen is attached to an atom of aryl group as an ether linkage and does not include any structural units derived from a polyhydric polyphenol, is free of bound bisphenol monomers and epoxides thereof in present claim 1). The number average molecular weight is at least about 6,000 (col. 7, lines 62-67) which reads on the number average molecular weight in present claim 1.
Pedersen et al are silent with respect to glass transition temperature of polyether polymer.
However, given that polyether polymer is prepared from substantially similar dihydric monophenol (i.e. hydroquinone) and aliphatic diepoxide, has number average molecular weight of at least 3000, one skilled in art at the time invention was made would have a reasonable basis to expect the polyether polymer, of Pedersen et al, to have a glass transition temperature of at least 600C as in present claim 1 and at least 800C to less than 1300C as in present claim 7, absent evidence to the contrary.
Regarding claim 2, Pedersen et al teach that epoxy compound is present in the polymer in amounts of 5 to 95% by weight (col. 4, lines 14-19). It is noted that water-dispersible polymer comprising 95% by weight of the epoxy compound inherently includes greater than at least 35% by weight of aryl groups.
Regarding claim 4, examples of bisphenols, in Pedersen et al, include
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(col. 10, lines 24-31). It is noted that when these bisphenols are used in preparing the epoxy compound (i.e. polyether) it would comprise segments of formula II of present claim 4 comprising oxygen atoms in ether linkage, wherein v is 0.
Regarding claim 5, Pedersen et al teach that epoxy compound used to prepare the polyether has the following formula:
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wherein n’ has an average value of 0 to about 150, X is independently a hydrocarbyl preferably having 1 to 4 carbon atoms (col. 9, lines 6-11) which reads on segments of formula II having at least two organic ortho substituent groups that include 1 to 4 carbon atoms when n’ = 0.
Regarding claim 6, Pedersen et al teach that the water-dispersible polymer is formed from epoxy compound, linking compound and acrylic monomers (col. 4, lines 41-57). Examples of linking compounds include alcohols such as 3-octyn-1-ol (col. 14, lines 33-54). An important feature is that at least a portion of the acrylic monomers are capable of rendering the polymer dispersible in water (col. 15, lines 9-11). Examples of acrylic monomers that renders the polymer dispersible include acrylic acid (col. 15, lines 19-27). Hence, it is the Office’s position that water-dispersible polymer, of Pedersen et al is free of ester linkages, and does not include any halogens.
Regarding claim 8, Pedersen et al teach that water-dispersible polymer has a weight average molecular weight of about 35,0000 to about 75,000 (Mw) and a number average molecular weight (Mn) of about 6,000 to about 25,000 (col. 7, lines 62-67). It is noted that polydispersity index is a ratio of Mw / Mn (i.e. overlaps with the polydispersity index in present claim 8).
Regarding claim 9, Pedersen et al teach that carrier is included in a sufficient amount to provide a coating composition including about 15 to about 45% by weight of non-volatile material in a waterborne coating composition (col. 21, lines 36-42). Volatile organic solvents are included as a portion of the carrier to improve flow properties of coating composition that facilitates spraying of coating composition (col. 20, lines 52-61).
Regarding claim 10, in addition to 12a to 12c, 12g, and 12i, it is noted that ring opening polymerization of glycidyl groups in aliphatic diglycidyl ether and hydroquinone results in a polyether including secondary hydroxyl groups of CH2-CH(OH)-CH2 or -CH2-CH2-CH(OH) segments and does not include any polyhydric polyphenol.
Regarding claim 13, examples of epoxy compounds include
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(col. 12, line 58 to col. 13, line 10) which reads on the alicyclic diepoxide in present claim 13.
Regarding claim 15, examples of bisphenols, in Pedersen et al, include
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(col. 10, lines 24-31) which reads on oxygen atoms are attached at the para or meta positions on the aryl or heteroaryl group in present claim 16.
Regarding claim 23, Pedersen et al teach that carrier is included in a sufficient amount to provide a coating composition including about 15 to about 45% by weight of non-volatile material in a waterborne coating composition (col. 21, lines 36-42). Volatile organic solvents are included as a portion of the carrier to improve flow properties of coating composition that facilitates spraying of coating composition (col. 20, lines 52-61).
Regarding claim 26, examples of epoxy compounds include
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(col. 12, line 58 to col. 13, line 10) which is an isomer of the homolog of present claim 26. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Regarding claim 29, Pedersen et al teach that epoxy compound used to prepare the polyether has the following formula:
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wherein n’ has an average value of 0 to about 150, X is independently a hydrocarbyl preferably having 1 to 4 carbon atoms (col. 9, lines 6-11) which reads on polyether polymer wherein R1 is a group having an atomic weight of at least 15 Daltons or at least 25 Daltons and v = 4 in present claim 29.
Regarding claim 30, Pedersen et al teach that the water-dispersible polymer is formed from epoxy compound, linking compound and acrylic monomers (col. 4, lines 41-57). An important feature is that at least a portion of the acrylic monomers are capable of rendering the polymer dispersible in water (col. 15, lines 9-11). Examples of acrylic monomers that renders the polymer dispersible include acrylic acid (col. 15, lines 19-27).
Regarding claim 31, Pederson et al teach that coating composition includes about 5% to about 50% of non-volatile components, by weight of the total composition (col. 5, lines 62-65). The coating composition comprises about 5 to 60% by weight of the nonvolatile material, of a water-dispersible polymer (col. 4, lines 63-65) and about 0.5 to about 25%, by weight of nonvolatile material, of a curing agent, like a phenolic resin or an aminoplast (col. 5, lines 1-3).
Claims 27-28 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pedersen et al (US 5,830,952) in view of Tanaka et al (Journal of Polymer Science: Part A, vol. 2, pp 3405-3430, Year: 1964).
The discussion with respect to Pedersen et al in paragraph 12 above is incorporated here by reference. Additionally, Pedersen et al teach that a fugitive base is included in a sufficient amount such that about 20 to 100% of the carboxylic acid groups of the water-dispersible monomer ae neutralized. A fugitive base is usually an amine (col. 19, lines 27-55) which reads on acid functionalities are at least partially neutralized with a base such as amine in present claim 28.
Pedersen et al are silent with respect to reacting with an anhydride to provide acid functionalities.
However, Tanaka et al teach that uncatalyzed reaction between anhydride and secondary hydroxyl groups of the resin (i.e., epoxy resin) produce monoester comprising an acid group (page 3405, introduction). Therefore, given that Pedersen et al teach that inclusion of acid containing monomers renders the polyether polymer water-dispersible, it is the Office’s position that it is within the scope of one skilled in art at the time invention was made to use a known method to convert the secondary hydroxyl groups in the ring opened moiety of epoxy (i.e., -CH2-CH(OH)-CH2- or -CH2-CH2-CH(OH)-) to acid groups to render the polyether polymer water dispersible and neutralize these acid groups with an amine, absent evidence to the contrary.
Allowable Subject Matter
Claim 25 is 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.
Response to Arguments
The objections, and rejections under 35 U.S.C. 12(b) and 103 as set forth in paragraphs 19, 21a, 21b and 26, of Office action mailed 2/9/2026, are withdrawn in view of amendment and/or applicant argument and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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