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 .
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/832999 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, they overlap to the extent that one practicing the copending claimed inventions would practice the instantly claimed inventions.
Copending claim 3 discloses using 2-methyl-1,3-propanediol as diol (a)(iii). Copending claim 4 discloses using terephthalic acid as the aromatic diacid (a)(vi). Copending claim 1, noting the reactant, reactant amounts, and TMCD polyester properties, coupled with copending claims 3 and 4 encompasses the inventions of the instant claims 1-20. Copending claim 14 gives the instant claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4. Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-20 of copending Application No. 18/247890 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, they overlap to the extent that one practicing the copending claimed inventions would practice the instantly claimed inventions.
Copending claim 2 discloses using 2-methyl-1,3-propanediol as diol (a)(iii). Copending claim 3 discloses using terephthalic acid as the aromatic diacid (a)(v). Copending claim 1, noting the reactant, reactant amounts, and TMCD polyester properties, coupled with copending claims 2 and 3 encompasses the inventions of the instant claims 1-20. Copending claim 13 gives the instant claim 8.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 11 and 13 are 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.
A. Claims 11, noting Curaphen 40-856 B60, and 13, noting Aromatic 100 and Aromatic 150, contain the trademark/trade names Curaphen 40-856 B60, Aromatic 100, and Aromatic 150. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a crosslinker of the instant claim 11 and solvents of the instant claim 13 and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1, 3-7, 10, 12-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2018/0223126 Beccaria et al. in view of US Pat. Application Publication No. 2017/0216152 Hecht et al. and Odian, George, Principles of Polymerization, Third Ed., John Wiley & Sons, Inc., 1991, pages 19-24.
Regarding claims 1, 3-7 and 14:
Beccaria discloses a coating composition for metal packaging that contains a polyester made from at least one aromatic acid and 2,2,4,4-tetramethyl-1,3-cyclobutanediol,
Beccaria’s polyester has a glass transition temperature of greater than 75℃ (the abstract and paragraph [0008]). The exemplified glass transitions of Beccaria’s polyesters are 80-110℃, which fall within the scope of the instantly claimed glass transition temperatures. See Beccaria, Tables 1, 3, 4, 5, and 6. The acid value of Beccaria’s polyester is 1-6 mg KOH/g (paragraph [0008]) which falls within the scope of the instant claims. The number average molecular weight of Beccaria’s polyester is 4000-18000 g/mol (paragraph [0008]) which overlaps the instantly claimed number average molecular weights to such an extent that Beccaria’s number average molecular weights anticipate those of the instant claims. Algebraic rearrangement of the formula at Beccaria, paragraph [0047], gives the OH numbers of Beccaria’s polyesters as OH value = (56.1 g KOH/mole * 1000 mg/g * number of OH groups per molecule)/Mn = (56100*2)/Mn = 112200/Mn which gives OH numbers of 6.23-28.05 mg KOH/g for the number average molecular weights of Beccaria, paragraph [0008]. The majority of this OH value range overlaps that of the instant claims such that Beccaria’s OH values anticipate those of the instant claims.
Beccaria, paragraphs [0045] and [0080] teaches that the 2,2,4,4-tetramethyl-1,3-cyclobutanediol (TMCD) polyester polyols have molecular weight and compositional ranges that enable the development of polyols with glass transition temperatures greater than 75℃ at lower molecular weights. The TMCD allows high glass transition temperatures and high solids which leads to improved sterilization resistance without the use of multiple coating applications to achieve a desired dry film thickness.
Beccaria, paragraph [0031] and Beccaria’s claims 4 and 10, discloses using only terephthalic acid as only 1 of 3 possibilities as their diacid.
Beccaria’s broad disclosure encompasses using the instantly claimed combinations of polyols i. through iv. See Beccaria, paragraphs [0005]-[0007], [0012]-[0013], [0019]-[0022], and [0032]-[0033]. Beccaria, paragraph [0073], Table 4, particularly Samples 15-18, 20, and 22-24, are the closest polyesters to those of the instant claims which are exemplified by Beccaria. These exemplified polyesters of Beccaria contain the instantly claimed amounts of the instantly claimed polyols i., iii., and iv. They do not contain any 2-methyl-1,3-propanediol.
Beccaria, paragraph [0021], and Beccaria’s claims 4 and 14 discloses using 2-methyl-1,3-propane diol in their combinations of polyester forming polyols.
Beccaria encompasses the instantly claimed polyester polyols but does not exemplify them or otherwise disclose them with sufficient specificity to anticipate the instantly claimed polyesters polyols.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the instantly claimed polyester polyols from the disclosure of Beccaria because they are encompassed by Beccaria, as discussed above, changing the exemplified 1,6-hexanediol of Beccaria’s Table 4 to 2-methyl-1,3-propane diol, which is shown by Beccaria, paragraph [0033] to be an alternative polyol to 1,6-hexanediol, is encompassed by Beccaria and would have been expected to give a polyester polyol which is slightly less flexible due to the shorter and hindered 2-methyl-1,3-propylene moiety as compared to the 1,6-hexylene moiety, and the resulting polyester polyol would have been expected to retain the properties given to the polyester polyol of Beccaria, Table 4 due to the presence of the instantly claimed amounts of 2,2,4,4-tetramethyl 1,3-cyclobutene diol, 1,4-cyclohexane dimethanol, and trimethylolpropane therein.
Beccaria, paragraphs [0015], [0035], [0036], and [0037], and Beccaria’s claim 10 disclose the addition of crosslinker to the coating composition. The crosslinkers can be resole phenolic resins, isocyanates, or amino resins. See Beccaria, paragraphs [0035]-[0038] and Beccaria’s claim 10.
Beccaria exemplifies wedge bend resistances which fall within the scope of the instant claims at Tables 1, 3, 4, and 5. See Beccaria, paragraphs [0064], [0073], Tables 1, 3, 4, and 5. Note that Beccaria reports % fails as their wedge bend resistances. Therefore, they must be subtracted from 100% to give the instantly claimed % pass.
Beccaria exemplifies acetone double rubs up to 70. Beccaria’s test only performs up to 70 double rubs. See Beccaria, paragraph [0065], the last sentence. It is therefore expected that the films of Beccaria which meet the acetone test for 70 double rubs would necessarily and inherently meet the instantly claimed MEK double rub test for greater than 80 rubs and greater than 90 MEK double rubs, particularly the films which have the higher degrees of crosslinking of Beccaria’s examples. See MPEP 2112.
Beccaria is silent regarding the weight average molecular weight of their polyesters.
The polydispersity, i.e. Mw/Mn, of real polymers is always greater than 1.
Therefore, the instantly claimed number average molecular weights and weight average molecular weights can give polydispersities of greater than 1 to 20.
Hecht, paragraph [0255], shows that low molecular weight polyesters are plasticizers. Plasticizers lower the glass transition temperature. Odian, page 20, first full paragraph, shows that viscosity increases with molecular weight for polymers. Odian, the paragraph bridging pages 22-23, page 23, the first full paragraph and the paragraph bridging pages 23-24, describes the relationship between polymer properties, including viscosity, weight average molecular weight, the difference between Mn and Mw, and the effects of the largest weight fraction on the polymer properties.
Beccaria, paragraphs [0018] and [0019], desires the maximization of the glass transition temperature and the lowering of the viscosity. It would have been clear to the ordinary skilled artisan prior to the instantly claimed invention to maximize the higher molecular weight fraction to maximize glass transition temperature from the teachings of Beccaria, Hecht, and Odian. It would have been clear to minimize the lower molecular weight fraction from the teachings of Hecht because the lower molecular weight polyesters would plasticize, i.e. lower the glass transition temperature, of the polymer. It would have been clear to the ordinary skilled artisan from the teachings of Beccaria and Odian to minimize the weight average molecular weight to obtain the lower solution viscosities desired by Beccaria, paragraph [0019], at sufficient solids contents.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the instantly claimed polyester polyols having the weight average molecular weights of the instant claims because such weight average molecular weights correspond to polydispersities, i.e. Mw/Mn, of greater than 1 to 20 and this broad polydispersity range would have been expected to encompass the polyesters made according to Beccaria, Beccaria, paragraphs [0018]-[0019] teaches the desire and means to achieve higher glass transition temperatures simultaneously with lower viscosities at the desired solids content, it would have been clear to the ordinary skilled artisan from the teachings of Beccaria and Hecht to lower the lower molecular weight fraction of polyester of Beccaria because that molecular weight fraction is known to plasticize polymers, i.e. lower the Tg, from the teachings of Hecht, and to minimize the upper weight average molecular weight because that molecular weight fraction is known to increase viscosity from the teachings of Beccaria and Odian. Thus, the choice of weight average molecular weight, considering the number average molecular weight of Beccaria and their desired Tg and viscosity of paragraphs [0018]-[0019] amounts to routine optimization to optimize two opposing properties, specifically viscosity and Tg, which are dependent on weight average molecular weight and polydispersity. No unexpected results are seen stemming from the instantly claimed weight average molecular weights which are demonstrated in a manner commensurate in scope with the instant claims and which compare to the closest prior art, Beccaria. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
Beccaria encompasses the instantly claimed polyester polyol containing coating compositions but does not exemplify them or otherwise disclose them with sufficient specificity to anticipate the instantly claimed polyesters polyol coating compositions.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the instantly claimed polyester polyols from the disclosure of Beccaria because they are encompassed by Beccaria, as discussed above, such compositions would have been expected to give the properties discussed by Beccaria, including the higher glass transition temperatures at lower molecular weights (paragraph [0019]), improved flexibility and chemical resistance, which includes solvent resistance (paragraph [0039]), and the properties of Beccaria’s examples, and the properties inherent to the coating compositions of Beccaria.
The instant claim 5 further describes the acyclic aliphatic diacids but does not require them to be present. The above discussed compositions of Beccaria therefore encompass the instant claim 5.
Regarding claim 10:
Beccaria, paragraph [0035], discloses using isophorone diioscyanate as their crosslinker.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to crosslink the polyester polyol of Beccaria with isophorone diisocyanate because this is taught by Beccaria and it would have been expected to give the known properties of polyester/isophorone diisocyanate polymers.
Regarding claims 12 and 16:
Beccaria, paragraphs [0010] and [0015] recites amounts of polyesters of 3-40 weight percent and 5 to 20 weight percent. These percentages are based on the weights of solvent, polyester and crosslinker. These percentages include percentages of the instant claims 12 and 16based only on the amounts of polyester and crosslinker.
Beccaria discloses using titanium dioxide in their coatings and exemplifies it such that the use of titanium dioxide is disclosed with sufficient specificity to anticipate its use in the coatings of Beccaria. See Beccaria, paragraph [0061], noting the titanium dioxide, which falls within the scope of the use of titanium dioxide in the instant claim 16.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the amounts of polyester and crosslinker of the instant claim 12 because such amounts are encompassed by the disclosure of Beccaria and would have been expected to give only predictable results, based on the crosslinking density, which is a function of the number of crosslinker functional groups per molecule which is not specified.
Regarding claim 13:
Beccaria, paragraphs [0041], [0046], [0061], and the remaining examples of Beccaria disclose solvents of the instant claim 13 with sufficient specificity to anticipate their use.
9. Claims 2, 5, 8, 9, 11, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2018/0223126 Beccaria et al. in view of US Pat. Application Publication No. 2017/0216152 Hecht et al. and Odian, George, Principles of Polymerization, Third Ed., John Wiley & Sons, Inc., 1991, pages 19-24, as applied to claims 1-7, 10, 12-14, and 16 in paragraph 8 above, in view of US Pat. Application Publication No. 2019/0359846 Fix et al. and Feng et al., “From Fundamentals to Applications: Understanding BPA-Non-Intent Resin Technology in Food Contact Metal Packaging Coatings”, Coatings Tech, June 2019, pages 28-37.
The discussion of paragraph 8 above is repeated here in its entirety.
Regarding claims 2 and 5:
Beccaria, paragraph [0026], shows that they include additional components in their polyester polyols besides those specified, noting that they describe their dicarboxylic acids as including a plurality of dicarboxylic acids. Furthermore, Beccaria’s examples use alicyclic dicarboxylic acid in addition to the terephthalic acid. See Table 1 of paragraph [0062], for example. Beccaria does not disclose the combination of dicarboxylic acids and amounts thereof of the instant claims 2 and 5.
Fix discloses using combinations of dicarboxylic acids to make similar polyesters for similar compositions which fall within the scope of the instant claims 2 and 5. See Fix, paragraph [0023], noting the aliphatic, non-cyclic dicarboxylic acids and “and combinations thereof.” Note that Fix does not limit the amounts of carboxylic acids in the combinations and therefore encompasses the amounts of the instant claim 2.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the combinations of the diacids and amounts thereof of the instant claims 2 and 5 because they are encompassed by Beccaria, as discussed above, are disclosed by Fix for use in similar polyester based coating compositions, as discussed above, and the relatively small amounts of aliphatic, acyclic dicarboxylic acid of the instant claim 2 would have been expected to add a minor amount of flexibility to the polyester molecules relative to the aromatic, less flexible terephthalic acid residues.
Regarding claim 9:
Beccaria exemplifies m-cresol phenol resin as their crosslinker at paragraph [0062], Table 2-continued. The amounts of m-cresol phenol resin are 8/40 *100% and 2.9/40.6 * 100% or 20% and 7.145% by weight. These resins are not described as resole resins.
Fix discloses using isocyanates, aminoplast resins, including etherified benzoguanamines, noting the tradename materials (paragraphs [0098]-[0101]), benzoguanamine-formaldehyde resins, noting the tradename materials (paragraph [0102]), and resole type phenol formaldehyde resins, noting the tradename materials, (paragraph [0106]).
Feng discloses using Curaphen 40-856-B60 for curing polyester polyols at Tables 1 and 2, Table 3, noting the Curaphen 40-856-B60, Cymel 1123, and Maprenal BF892/868 and amounts thereof.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the m-substituted phenol resole phenolic resin of the instant claim 9 as the m-cresol phenol resin crosslinker exemplified by Beccaria because Beccaria discloses using phenol resins derived from m-cresols which encompasses the resole resins thereof, Fix and Feng disclose using m-substituted phenol resole resins for curing similar polyesters, and the curing properties of the crosslinkers of Fix and Feng would have been expected in the coatings resulting from the coating compositions of Beccaria, as discussed above, cured with the crosslinkers of the instant claim 9.
Regarding claim 18:
The disclosures of Beccaria, Fix, and Feng discussed above regarding claim 9 are repeated here.
Beccaria does not disclose the use of the benzoguanamine formaldehyde resin in the amounts of the instant claim 18 as their crosslinker.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the benzoguanamine formaldehyde resin in the amounts of the instant claim 18 as the crosslinker for Beccaria’s coating compositions which are discussed above because such crosslinkers and amounts thereof are encompassed by Beccaria, Feng and Fix show such crosslinkers are known for curing similar polyester resins, and the coating compositions of Beccaria containing these crosslinkers and amounts thereof would have been expected to have similar curing properties as the compositions of Fix and Feng using these crosslinkers and amounts thereof.
Regarding claims 8, 11, 15, 17, and 19-20:
Beccaria, paragraph [0036], discloses using benzoguanamine and related resin crosslinkers in their coating compositions. Beccaria, paragraph [0026], is taken as indicating that they intend to include mixtures of their crosslinking agents. Beccaria, paragraph [0062], Table 2, continued exemplifies a mixture of m-cresol phenol and Desmodur VP LS 2078 in amounts of 2.9 grams each. Desmodur 2078 is blocked isophorone diisocyanate as noted in the instant specification, paragraph [0063]. It is therefore taken that Desmodur VP LS 2078 is blocked isophorone diisocyanate also.
Beccaria exemplifies m-cresol phenol resin as their crosslinker at paragraph [0062], Table 2-continued. The amounts of m-cresol phenol resin are 8/40 *100% and 2.9/40.6 * 100% or 20% and 7.145% by weight. These resins are not described as resole resins.
Fix discloses using isocyanates, aminoplast resins, including etherified benzoguanamines, noting the tradename materials (paragraphs [0098]-[0101]), benzoguanamine-formaldehyde resins, noting the tradename materials (paragraph [0102]), and resole type phenol formaldehyde resins, noting the tradename materials, (paragraph [0106]).
Feng discloses using Curaphen 40-856-B60 for curing polyester polyols at Tables 1 and 2, Table 3, noting the Curaphen 40-856-B60, Cymel 1123, and Maprenal BF892/868 and amounts thereof.
Beccaria does not disclose the combinations of crosslinkers and amounts thereof of the instant claims 8, 11, 15, 17, 19, and 20.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the combination of crosslinking resins of the instant claims 8, 11, 15, 17, 19, and 20 in the amounts of the instant claims 8, 11, 15, 17, 19, and 20 as the crosslinker for Beccaria’s coating compositions which are discussed above because such crosslinkers and amounts thereof are encompassed by Beccaria, Feng and Fix show such crosslinkers are known for curing similar polyester resins, and the coating compositions of Beccaria containing these crosslinkers and amounts thereof would have been expected to have similar curing properties as the compositions of Fix and Feng using these crosslinkers and amounts thereof.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762