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 .
Amended claims filed on 4/5/2023 are the basis for this 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.
Claims 10 and 12 (cancelled 4/5/2023), and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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, 12 and 14 contain the trademark/trade name. 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 resole phenolic resin (in claims 10 and 12) and solvent Aromatic 100 and 150 (in claim 14), accordingly, the identification/description is indefinite. Claim 14 also incorrectly includes the Trademark – ExxonMobil.
Applicant is remined that claims 10 and 12 were cancelled on 04/05/2023, but are present in claims dated 10/11/2023. Since they were cancelled earlier, no prior art rejection is provided below.
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.
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.
Claims 1-2, 5, 7, 11, 13-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Beccaria et al. US2018/0223126 A1.
Beccaria teaches polyester compositions for metal packaging coatings (Title and abstract).
Regarding claims 1-2, 5, 7 and 15, Beccaria teaches (reference claims 4 and 10) a metal food packaging coating composition comprising A. a polyester for use in metal food packaging applications comprising residues of:
(a) isophthalic acid, or terephthalic acid or a combination thereof;
(b) 30 to 90 mole percent of 2,2,4,4-tetramethyl-1,3-cyclobutanediol,
(c) 10 to 70 mole percent of 1,4-cyclohexane dimethanol, 1,3-cyclohexane dimethanol, 1,6- hexanediol, trimethylol propane, etc., or a combination thereof;
B. a crosslinking composition consisting of an isocyanate composition, a phenolic composition or an amino composition or a mixture thereof (instant claim 7).
wherein the polyester has a glass transition temperature greater than 75° C, which overlap the claimed requirement. Beccaria notes that the acid value of the polyester is 1 mg KOH/g to 6 mg KOH/g, and a number average absolute molecular
weight of 4000 g/mol to 18000 g/mol, which meet the claimed requirement. Beccaria does not explicitly state the weight average molecular weight of the inventive polyesters, since condensation polymers have Mw/Mn ≥ 2, the weight average molecular weight can be expected to be in the overlapping range of 8000 g/mol to 36,000 g/mol. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Beccaria discusses wedge bend resistance but does not provide the range of values in the general disclosure. However, Beccaria provides a number of polyester polyol compositions in Table 1 (page 5) and Table 4 (page 7), where compositions (wedge bend (% fail) per ASTM D3281 (para [0064])) have wedge bend failure percentages of 3 or 20% (Sample 5 and Sample 21 respectively), which implies that the inventive polyesters can have wedge bend pass % of 80% or higher, (also meets instant claim 15’s wedge bend resistance).
Beccaria highlights that variations and modifications are within the scope of invention (para [0081]). An obvious composition of Beccaria derived from polyester polyols of Example 5 and Example 20, would be where 30 mol% terephthalic acid and 70 mol% isophthalic acid, are reacted with diols 2,2,4,4-tetramethyl-1,3-cyclobutanediol at 40 mol%, 4 mol% trimethylol propane, and where 40 mol% 1,4-cyclohexanedimethanol is substituted with 40 mol% of 1,3-cyclohexanediol and the remaining 16 mol%1,6-hexanediol is substituted with 16 mol%1,4-cyclohexanedimethanol (instant claim 2), such that the total diol mol% is 100 mol%. Beccaria recognizes 1,4-cyclohexane dimethanol, 1,3-cyclohexane dimethanol and 1,6- hexanediol as equivalent diols (reference claim 10 (c)). It is prima facie obvious to substitute art recognized equivalents know for the same purpose, see MPEP 2144.06. Such an obvious composition meets the monomer requirements of the polyester polyol.
Beccaria discloses solvent resistance values for acetone but only performs measurements till 70 double rubs (para [0065]). Beccaria does not discuss solvent resistance performance for solvent MEK and also does not provide the values of hydroxyl number ranges for the polyester polyols in the general disclosure or the examples. However, since obvious polyester polyol composition of Beccaria conforms to the required monomer ranges, and is tailored for food contact metal cans (abstract and para [0079]) which is the same application as the instant specification (para [0002] and para [0072]), it would be expected to exhibit the desired hydroxyl number (and instant claim 5) and solvent resistance (and instant claim 15).
Regarding claim 11, Beccaria teaches isophorone diisocyanate, meeting the claimed requirement (para [0038]).
Regarding claim 13, Beccaria teaches (reference claim 14) 3 to 40 wt% of polyester polyol composition and 5 to 20 wt% of crosslinker, where the solvent is also included in the weight% ranges. When the weight % is calculated with respect to polyester and the crosslinker it leads to 37.5 to 67 weight% polyester polyol composition (a) and 33 to 62.5 weight % crosslinker (b), overlapping the claimed requirement. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, Beccaria teaches solvent xylene, meeting the claimed requirement (para [0041]).
Regarding claim 17, Becarria teaches food contact metal cans ends which is coated with the coating composition, meeting the claimed requirement (abstract and para [0079]).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Beccaria et al. US2018/0223126 A1, as applied to claim 1 and further in view of Kashiwakura et al. US 2018/0291232 A1.
Regarding claims 3-4, Beccaria is silent on the inclusion of aliphatic diacid, however highlights that variations and modifications are within the scope of invention (para [0081]). As discussed, when addressing claim 1, Beccaria teaches the polyester coatings for metal surface coating, a person having ordinary skill in the art would look to analogous reference such as Kashiwakura (title and abstract) which also teaches coating of metal sheets to further optimize the polyester composition. Kashiwakura recommends incorporation of 8 to 17 mol% of aliphatic dicarboxylic acids such as adipic acid (para [0073]) to improve the coating strength, and to balance heat and shock resistance of the polyester coating (para [0072]), which is chiefly derived from aromatic dicarboxylic acid.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Beccaria’s polyester with adipic acid as taught by Kashiwakura for the same application of creating polyester coating with improved coating strength and balanced heat and shock resistance.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Beccaria et al. US2018/0223126 A1, as applied to claim 1 and further in view of Kuo et al. EP 3 431 547 B1.
Regarding claims 8-9, as discussed when addressing claim 1, Beccaria teaches a mixture of phenolic resins and isocyanate as a crosslinking system (reference claim 4). Beccaria also discloses meta cresols corresponding to m-substituted phenol (para [0036]). Beccaria is however silent on resole phenolic resin or the weight percentage of the crosslinkers in case a mixture of crosslinker is utilized. Beccaria notes that variations and modifications are within the scope of invention (para [0081]). To further optimize the polyester composition, a person having ordinary skill in the art would look to analogous reference such as Kuo (para [0001]) which also teaches polyester based coating compositions along with phenolic crosslinking resins.
Kuo teaches a crosslinker which comprises phenolic and isocyanate resin (para [0098]), and further discloses a resole phenolic resins (para [0285]) which is utilized at 50-100 wt% based on weight of all cross-linker compounds including isocyanate based crosslinkers (para [0287] and para [0313]), since the resole phenolic resins exhibit good reactivity towards the curable polyester resins (para [0286]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized 75wt% of resole phenolic resin (midpoint of 50 and 100 wt%) as taught by Kuo with remaining 25wt% of isocyanate as the crosslinking system for Beccaria’s polyester for the same application of creating polyester coating composition which exhibits good reactivity.
Claims 1-2, 5-9, 11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kuo et al. EP 3 431 547 B1.
Kuo teaches a curable polyester for solvent borne coating compositions (para [0001]).
Regarding claims 1-2, 5-7, 15 and 17, Kuo teaches a thermosetting composition comprising a I) an unsaturated polyester derived from a) polyhydroxy compounds and b) polycarboxylic compounds and II) a phenolic resin (para [0118]), which can be resole phenolic resin (para [0181]) (instant claim 7). Kuo discloses the use of the thermosetting composition for coating of the interior of metal containers used for packaged products (paras [0002] and [0023]) (instant claim 17).
Kuo discloses that the (i) diol compounds range from 70 to 100 mole %, and the (ii) polyhydroxy compounds having at least three hydroxyl groups in an amount ranging from 0 to 30 mole % (para [0118]). Kuo notes that 1,3-cyclohexanedimethanol and 1,4-cyclohexanedimethanol or their mixtures are desirable (para [0148]), and further adds they each can be used in the range of 42-45 mole%, which meet the claimed range of applicant’s a i. and a ii. (para [0150]). Kuo further discloses 1,1,1-trimethylol propane as a suitable polyhydroxy compound (para [0151]), and recommends the range of 8-10 mole%, which meets the claimed requirement of TMP a iii. (para [0152]).
Kuo teaches that polycarboxylic acid compounds include an a,ß-unsaturated polycarboxylic acid at 30-40 mole% (para [0132]) based on 100 mole% of all the polycarboxylic acids. Kuo further provides additional desirable polycarboxylic compounds which include isophthalic acid and terephthalic acid or their mixtures (para [0136]). Kuo discloses the additional polycarboxylic compounds (such as isophthalic acid or terephthalic acid) to be present in the range of 40-90 mole%, overlapping the claimed isophthalic acid and terephthalic acid range (para [0142]).
Kuo teaches the glass transition temperature (Tg) of the polyester to be 30 oC to 80 oC, overlapping the claimed requirement (para [0161]) (and instant claim 6). Kuo further teaches that the polyester can have an acid number in the range of 0-10 mg KOH/g (para [0157]) and hydroxyl number 25 to 35 mg KOH/g (para [0158]), meeting the claimed requirements (instant claim 5). Kuo further teaches the number average molecular weight to be 1000-20000 g/mole. Since condensation polyester have Mw/Mn ≥ 2, the weight average molecular weight would also overlap the claimed requirements. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kuo discloses high solvent resistance of the coating composition and provides the value of atleast 500 according to the double rub MEK test (para [0030]) which is conducted under ASTM D4752 (para [0570]), which is different from the required ASTM technique. Kuo does not address wedge bend resistance performance of the polyester based coating compositions. As discussed above, both the coating composition and the polyester polyol derived from the diols and diacids are with the purview of Kuo and therefore it would have been obvious to choose components corresponding to the claimed from expressly disclosed suitable components and their respective amounts with reasonable expectation of achieving adequate results in terms of both solvent resistance and wedge bend resistance (instant claim 15).
Regarding claims 8 and 11, Kuo teaches a crosslinker which comprises phenolic and isocyanate resin (para [0098]) which can be isophorone diisocyanate (para [0316], and further discloses a resole phenolic resins (para [0285]) which is utilized at 50-100 wt% based on weight of all cross-linker compounds including isocyanate based crosslinkers (para [0287] and para [0313]), since the resole phenolic resins exhibit good reactivity towards the curable polyester resins (para [0286]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized 75wt% of resole phenolic resin (midpoint of 50 and 100 wt%) as taught by Kuo with remaining 25wt% of isocyanate as the crosslinking system for creating a polyester coating composition which exhibits good reactivity.
Regarding claim 9, Kuo teaches that resole phenolic resin is a reaction product based on meta-substituted phenol, meeting the claimed requirement (para [0186]).
Regarding claim 13, Kuo provides a number of solvent based coating formulations where 3.5 g of polyester polyol (10g, 35% in MAK) is mixed with 2.5g of phenolic resin crosslinker, which leads to 58 wt% polyester polyol and 42 wt% of crosslinker, and thus making the claimed requirement obvious (such as Formulations 1, 4, and 7, Table 20, para [0569]; Formulation 36, Table 38, para [0618]).
Regarding claim 14, Kuo teaches solvent coating composition where the organic solvent is xylene, meeting the claimed requirement ([0437]).
Regarding claim 16, as discussed when addressing claim 1, Kuo’s disclosure renders the claimed requirement of the coating composition and its properties obvious. Claim 16 further requires the range % values of the polyester polyol, resole phenolic resin and isophorone diisocyanate.
Kuo provides several solvent based coating formulations where 3.5 g of polyester polyol (10g, 35% in MAK) is mixed with 2.14g of phenolic resole resin crosslinker, which leads to 62 wt% polyester polyol and 38 wt% of resole phenolic resin (such as Formulations 2, 5, and 8, Table 20, para [0569]; Formulations 34-35, Table 38, para [0618]).
Kuo teaches a crosslinker which comprises phenolic and isocyanate resin (para [0098]) which can be isophorone diisocyanate (para [0316]). Kuo further discloses a resole phenolic resins (para [0285]) which is utilized at 50-100 wt% based on weight of all cross-linker compounds including isocyanate based crosslinkers (para [0287] and para [0313]), since the resole phenolic resins exhibit good reactivity towards the curable polyester resins (para [0286]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized a mixed crosslinker system where the crosslinker consists of 75wt% of resole phenolic resin (midpoint of 50 and 100 wt%) with remaining 25wt% of isocyanate for creating a polyester coating composition which exhibits good reactivity. An obvious coating composition of Kuo gleaned from the above presented formulations and derived from such a mixed catalyst system would possess (a) 62 wt% of polyester polyol, (b) 28.5 wt% (75 wt% of 38 wt%) and (c) 9.5 wt% of isophorone isocyanate, which meet the claimed requirement of (a), (b) and (c).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765