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 § 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.
Claims 1, 3, 38-44 and 46-50 are rejected under 35 U.S.C. 103 as being unpatentable over Yim et al. (PG Pub. 2018/0127540).
Regarding claims 1, 3 and 42-43, Yim et al. teach a dispersion of polyester particles in an aqueous dispersion medium and the polyester particles has a number average particle size in the claimed range [Title, 0013]. The polyester particles are composed of a polyester material wherein the polyester material is a material that has a continuous phase made out of at least 90 wt % polyester that has an HLB value in the claimed range [Example]. Converting the weight percentage to moles and calculating the mole-fraction of DMS and DEG among the diacids, Examples 5-7 exemplify HLB of 8.63, 8.88, and 8.59 which is in the claimed range. Yim et al. are silent regarding the polyester being amorphous and the Tg. However, it appears the polyester in examples 5-7 is amorphous since the monomers in the examples are typically amorphous, low crystalline and the Tg is in the claimed range based upon the monomers used in Examples 5-7. Further, it would have been obvious to one of ordinary skill in the art to arrive an amorphous polyester and the claimed Tg in order to tailor the properties of the polyester including, improved ductility, easier processing, stiffness properties, strength and arrive at the claimed invention.
Regarding claims 42-44 and 50, Yim et al. are silent regarding the polyester being amorphous and the Tg. However, it appears the polyester in examples 5-7 is amorphous since the monomers in the examples are typically amorphous, low crystalline and the Tg is in the claimed range based upon the monomers used in Examples 5-7. Further, it would have been obvious to one of ordinary skill in the art to arrive an amorphous polyester and the claimed Tg in order to tailor the properties of the polyester including, improved ductility, , easier processing, stiffness properties, strength and arrive at the claimed invention.
Regarding claims 40-41 and 48-49, Yim et al. teach the polyester is sulfopolyester and contains the claimed amount of at least one dicarboxylic acid sulfomonomer as 1-3% mol percent of sulfonated dicarboxylic acid is taught.
Regarding claims 38-39 and 46-47, the aqueous and the polyester particles comprise the claimed percentage volume in the claimed amount [Examples]. Apart from the polyester particles, the dispersion contains less than 1% particulate matter [Examples].
Claims 37 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Yim et al. (PG Pub. 2018/0127540) in view of Sakaguchi (PG Pub. 2017/0284015).
Regarding claims 37 and 45, Yim et al. are silent regarding the claimed water amount. However, Sakaguchi teaches a sizing composition comprising water in the claimed amount with polyester in order to provide a sizing composition. It would have obvious to one of ordinary skill in the art to use the water amount taught by Sakaguchi in Yim et al. in order to produce a sizing composition and arrive at the claimed invention.
Response to Arguments
Applicant argues Yim does not teach the claimed HLB and that the calculation of HLB in Yim was erroneous since it does not give hydroxyl and acid values of the polyester and therefore is impossible to calculate the HLB values in Yim. While hydroxyl and acid values may be used to refine end group contributions in certain implementations of the Davies method, they are bit required to infer or estimate the hydrophilic-lipophilic balance of the disclosed polyester compositions. Yim teaches polyester resin the self-disperses in water forming a stable emulsion without needing an external surfactant. The present specification teaches if a resin needs a water soluble compound to disperse, its HLB is not in the correct range. This statement is the inverse of if a resin disperses, its HLB is in the correct range, being that claimed. Yim teaches approx.. 1-3% sulfonate which is a strong hydrophilic driver. The present specification’s own reasoning evidences this and is contrary to Applicant’s own argument that HLB cannot be inferred without calculating when the present specification does just that. Therefore, based on the present specification’s own disclosure that the polyester resin self-disperse in water without added surfactant to form stable emulsion and the present specification’s own use of HLB as an inferred property, the compositions of Yim possess a moderate hydrophilic-lipophilic balance range in the claimed range. Further, it is noted that HLB is an inherent property of the polyester composition. 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). While different implementations of the Davies method may refine the value, they do not change the underlying hydrophilic-lipophilic balance of the resin nor prevent Yim from possessing the claimed HLB.
Applicant is arguing the claimed amorphous property and Tg is not inherent to Yim. Yim teaches in the examples isophthalic acid (strongly disrupts chain packing), sulfonated monomers (creates chain disruption), neopentyl glycol ( prevent tight packing) and diethylene glycol (reduces crystallinity). Crystallinity requires regular repeating structure, symmetry and the ability to pack. Yim teaches TPA, IPA, DMS, EG, NPG, and sometimes DEG. Yim teaches self-dispersing behavior and stable emulsions. The composition of Yim, with the function taught (self-dispersing ionomer behavior) and the purpose of Yim (creating waterborne polyester system which is typically amorphous) provided substantiated evidence the composition is amorphous.
Applicant argues Yim does not teach the claimed Tg and that monomers alone do not determine the Tg. Monomer composition alone cannot give an exact Tg, but monomers used and proportions still provide a reliable basis for inferring relative Tg trends and if the polyester would have a Tg above 20 degrees Celsius as claimed. The Tg taught in Examples -57 are approximately 55-75 degrees Celsius and are consistent with film forming coatings. Therefore, it is abundantly clear Yim examples 5-7 inherently possess the claimed Tg.
Applicant argues the claimed static contact angle is not obvious over Yim. It would have been obvious for one of ordinary skill in the art to arrive at the claimed contact angle in order to hydrophobicity. Yim even teaches water resistant coatings. A person of ordinary skill in the art would understand that achieving water resistance is associated with increasing surface hydrophobicity which correlates with higher contact angle and therefore provide motivation to increase the contact angle and arrive ta the claimed range to affect water resistance.
Applicant is invited to amend the claims over the cited art.
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 SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789