C 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 .
Claims 1-10 are pending. Claims 11-19 are canceled.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-6 stand rejected under 35 U.S.C. 103 as being unpatentable over Fan (CN-111205235-A, English translation provided with the 2/19/2026 Office action) as set forth in the prior Office action on February 19, 2026.
Claim 7-10 stand rejected under 35 U.S.C. 103 as being unpatentable over Van Dorp (US 3,624,232) in view of Fan (CN-111205235-A, English translation provided with the 2/19/2026 Office action) as set forth in the prior Office action on February 19, 2026.
Response to Arguments
Applicant’s arguments filed May 5, 2026 have been fully considered.
Applicant argues (page 5-8) that one of ordinary skill cannot infer the amounts of active functional groups such as -NH2, -NH, and -CH2OH and the FT-IR peak ratio from the etherification degree disclosed by Fan. MPEP 2112 (IV) states, "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." The rejection laid out in the previous Office action relies upon estimating an upper bound of the ratio of the intensity of the “first” FT-IR peak to the intensity of the “second” FT-IR peak based on the degree of etherification of Fan’s hexamethoxymethyl melamine (HMMM) resin. In particular, each melamine molecule can have a maximum degree of etherification of 6 and Fan teaches a degree of etherification of 5.92 (Fan’s Examples 1 and 8, Table 5 on page 6). Possible non-etherified functional groups include -NH2, -NH (a -NH2 group has been reacted such that a single -NH group remains), and -CH2OH (a -NH on melamine has been modified to a -CH2OH that has not been etherified). This means than about 1.3% (0.08/6=0.013) of potential etherification sites are not etherified. The instant application specifies that the first peak at 3334 cm-1 to 3344 cm-1 corresponds to active functional groups, such as -NH2 and -CH2OH, and the second peak at 1072 cm-1 to 1074 cm-1 corresponds to ether functional groups, in particular -OCH3 (instant specification, page 4, lines 9-11 and 20-21 and page 15, lines 15-18). In the instant examples, the ratio of active functional groups relative to the ether groups is determined by the ratio of the intensity of the first peak to the intensity of the second peak (instant specification, page 17, lines 1-11). Therefore, it is reasonable to expect the etherified groups of Fan to similarly correspond to the claimed “second” FT-IR peak and at least any -NH2 and -CH2OH groups to contribute to the claimed “first” FTIR peak. It is reasonable to expect the ratio of the intensity of the first peak to the intensity of the second peak to be up to about 0.014 because the ratio of not etherified groups, of which at least some contribute to the “first” peak, to the etherified groups is about 0.014 (0.08/5.92=0.0135). Applicant’s specific arguments are not persuasive for the reasons explained below. MPEP 716.01(c) II states that arguments by applicant cannot take the place of evidence in the record.
Applicant argues (page 5) that characteristic peak intensities in FTIR do not depend only on the number of functional groups, but may also be altered by intramolecular and intermolecular hydrogen bonds formed by residual -NH and -OH groups in the resin. Applicant argues that residual methanol and free formaldehyde in the resin may not be completely removed and may form hydrogen bonds with active functional groups altering the ratio of an intensity of the first peak to an intensity of the second peak. Applicant has not provided evidence of how methanol and free formaldehyde change the intensity of the first and/or second peaks. Applicant has also not established that methanol and free formaldehyde are present in sufficient quantities to result in a peak ratio outside of the claimed range. As discussed in the rejection of claims 4-6, Fan discloses a free formaldehyde content of 0.09 wt% (Fan, Table 5 on page 6). This content is within the free formaldehyde range recited in claims 4-6. Fan also teaches distillation and filtration steps to obtain the final HMMM product (Fan, [62]). Applicant has not established that Fan’s method leads to residual formaldehyde and methanol in an amount that would lead to a peak ratio outside of the claimed range.
Applicant argues (page 6) that HMMM resins contain methylene ether (-NH-CH2-O-CH2-NH-) or methylene bridges (-NH-CH2-NH-) and that it is therefore hard to conclude that the non-etherified functional groups taught by Fan are entirely composed of active functional groups such as -NH2, -NH, or -CH2OH. Applicant has not provided evidence explaining how many bridges of each kind would be expected and how the presence of methylene ether and methylene bridges changes the first and second peak intensities. In addition, Applicant has not explained how the -NH- groups described in the methylene bridges are different than the -NH groups considered to be possible non-etherified groups. Fan teaches an etherification degree of 5.92, suggesting that 0.08 functional groups are non-etherified. Based on this etherification degree, one would expect a ratio of non-etherified functional groups to etherified groups of about 0.014 (0.08/5.92=0.0135). While some of the non-etherified groups may form bridges, formation of such bridges would not be expected to cause the peak ratio to exceed the claimed ratio because the -NH- groups at each end are accounted for in the non-etherified groups used to estimate the upper end of the peak ratio range.
Applicant argues (page 6) that even if two resins exhibit similar etherification degree, their molecular structures, distribution of residual active functional groups, and intramolecular and intermolecular hydrogen bonds may differ significantly from each other leading to different intensities of the first and second peaks in FTIR. Applicant has not provided evidence of resins with similar etherification degrees having different first and second FTIR peak intensities. In particular, Applicant has not established that a HMMM resin with an etherification of 5.92 and free formaldehyde content of 0.09 wt% that has undergone filtration and distillation, as taught by Fan, could have a peak intensity ratio outside the claimed range.
Applicant argues (page 7) that coating layers formed from the resins of Fan and the present application may have different properties. Applicant points to the abrasion resistance of S2 and C1 and the gloss of S2B and C1B. The melamine-formaldehyde resin of S2 has a peak ratio of 0.0174 and a free formaldehyde content of 0.059. The melamine-formaldehyde resin of C1 has a peak ratio of 0.0224 and a free formaldehyde content of 0.099. Applicant does not explain how these resins compare to the resin of Fan. These results show that different coating compositions produce coating layers with different properties, but do not show that Fan’s resin does not satisfy the claimed peak ratio.
Conclusion
THIS ACTION IS MADE FINAL. 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 AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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