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 .
Formal Matters
The amended claim set filed on 4/5/2023 is being examined. While a claim set was filed on 8/16/2023, it does not appear to incorporate the changes of the amended set filed on the earlier date.
Specification
The disclosure is objected to because of the following informalities: spelling and formatting errors as well as unit errors. On page 8, line 6, an “o” has been used in place of a degree symbol in two places. On page 9, lines 4 and 5, a space has been omitted between mg and KOH in multiple places. Similar issues exist on page 10, lines 28 and 30, and page 21, lines 1 and 2. Finally, a typographical error appears on page 27, line 11, which should read “cyclobutanediol” instead of “lcyclobutanediol”.
The applicant in several locations has listed molecular weight requirements using the units mg KOH/g, which is not a common unit for molecular weight, nor is it clear how this unit could be used as a measure of mass. This error occurs in at least the following locations: page 3 line 21, page 4 line 19, page 5 line 17, page 6 line 17, page 9 line 5, page 18 line 19, page 19 line 30, page 21 line 2 and page 51 line 5.
Appropriate correction is required.
Claim Objections
Claim 18 is objected to because of the following informalities: the word "and" is repeated. Appropriate correction is required.
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 1-20 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.
Regarding Claims 1 and 17-19,
In claims 1 and 17-19, the applicant refers to the number average molecular weight of the polyester as being 5,000 to 20,000 mgKOH/g, however this unit is not a molecular weight, and it cannot be determined how the materials could have a molecular weight with these units. Further, no units are provided for the weight-average molecular weight that would help address this deficiency. For the purposes of examination, this statement will be interpreted to mean a number average molecular weight of 5,000 to 20,000 g/mol.
Claims 2-16 and 20 are rejected based upon their dependency on Claim 1.
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 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Beccaria (US 20180223126, US Patent Application reference #3 from IDS dated 6/28/2023) in view of Kashiwakura (US 20180291232, US Patent Application Reference #4 from IDS dated 6/28/2023).
Regarding Claims 1-8 and 16,
Beccaria teaches a crosslinkable polyester composition that is used to coat a metal substrate with an acid value of between 1 and 6 mg KOH/g with a number-average molecular weight of 4,000-18,000 g/mol (Abstract) where the polyester has a glass transition temperature of greater than 75 °C (Abstract) while noting that glass transition temperatures around 80 °C are preferred for pigmented formulations (Paragraph 75). While Beccaria is silent on the weight-average molecular weight, one of ordinary skill in the art would recognize that polymers with number-average molecular weights in the range disclosed by Beccaria would have weight-average molecular weights in the range of the instant claim under normal polymerization conditions. Beccaria also teaches the use of 2,2,4,4-tetramethyl-1,3-cyclobutanediol (TMCD) in amounts of 40-60% of the diol content (Table 1, Samples 1-8) as well as the use of 1,4-cyclohexanedimethanol (Paragraph 33) in amounts of 20 to 40% (Table 1, Samples 1-8). Further, Beccaria teaches that 2-methyl-1,3-propane diol and trimethylolpropane may also be used (Paragraph 33), with the amount of trimethylolpropane being between 1 and 4% (Table 4, Samples 15-18). While Beccaria is silent on the usage amount of the 2-methyl-1,3-propanediol (MPdiol), Beccaria does demonstrate the usage of other polyols such as 1,6-hexanediol in an amount of 20% (Table 1, Samples 1 and 2) and it would logically follow that with hexanediol and MPdiol mentioned as possible polyols in the same context that they would be used in similar amounts. Beccaria also teaches the use of the combination of isophthalic acid and terephthalic acid as aromatic diacids (Paragraph 31) with isophthalic acid used in amounts between 20 and 70% (Table 1, Samples 1-8) and terephthalic acid used in amounts of 30 to 40% (Table 1, Samples 1-8). Beccaria additionally teaches the use of crosslinkers such as isocyanates (Paragraph 35) mentioning isophorone diisocyanate specifically (Paragraph 45), phenolic resins derived from meta-cresols and amine-based resins containing benzoguamine (Paragraph 36) and where the wedge bend passage rate is above 70% (Table 4, Samples 21 and 23). Regarding the hydroxyl number, Beccaria teaches that this is determined by the reaction ratio of acid to polyol and would be selected on the basis of the desired crosslinking pathway (Paragraph 29) and further that the concept is well known to one of ordinary skill in the art (Paragraph 29). As such, the ordinarily skilled artisan would be motivated to adjust this value on the basis of the desired crosslinking density and crosslinkers chosen. It would therefore have been obvious prior to the effective filing date of the instant application to have selected any hydroxyl number that resulted in the desired crosslinking density.
Beccaria does not teach the use of an aliphatic diacid. However Kashiwakura teaches a similar surface treatment for metal surfaces that contains a polyester component which is comprised of both aromatic and aliphatic diacids, with the aliphatic diacid comprising 5 to 20% of the total diacid (Paragraph 72). Kashiwakura teaches that the aliphatic diacid is preferably 6 to 14 carbons and specifies adipic and sebacic acids as options (Paragraph 71). Kashiwakura teaches that the usage amount of aliphatic diacid below 5% results in reduced shock and dent resistance while amounts above 20% reduce strength and water blocking (Paragraph 72), providing the ordinarily skilled artisan with motivation to stay within these ranges. As Kashiwakura teaches polyesters for use as metal coatings and improves the dent resistance of the cured polyester through the usage of an aliphatic diacid, it would have been obvious prior to the effective filing date of the instant application for the ordinarily skilled artisan to have incorporated an aliphatic diacid into the polyester as taught by Beccaria to obtain the predictable result of a polyester useful as a metal coating with improved dent resistance with a reasonable expectation of success.
With regard to the MEK double rub requirement, Beccaria is silent. Beccaria does teach that the compositions are tested in Acetone double rub experiments and are resistant to at least 60 repetitions (Table 1, Samples 1-8). As the composition as taught by Beccaria in view of Kashiwakura would be comprised of the same components in similar amounts, it would logically follow that the composition would meet the MEK double rub requirement. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 2 further narrows the ranges specified in claim 1, with the ranges taught by Beccaria in view of Kashiwakura containing the ranges of claim 2. One of ordinary skill in the art would be motivated to alter the composition in order to obtain the desired material properties such as dent resistance and strength. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 9,
Beccaria teaches the use of phenolic resins (Paragraph 36) and isocyanates (Paragraph 35) to crosslink the polyester composition. While Beccaria does not teach a specific ratio of the two crosslinkers, Beccaria does disclose the usage of more than one crosslinker (Paragraph 15) and discloses both of the listed types. As such, it would have been obvious prior to the effective filing date of the instant application to have used both the phenolic resin and an isocyanate to crosslink the composition in any ratio.
Regarding Claims 10-13,
Beccaria teaches the use of phenolic resins that are formed from m-cresol (Paragraph 36) and further teaches the use of isocyanates such as isophorone diisocyanate (Paragraph 35), meeting the requirements of claims 10 and 12. Additionally, Beccaria teaches the use of Desmodur VP LS 2078 (Table 2, examples a, b, and d), which is a blocked isophorone diisocyanate, meeting the requirement of claim 12. Finally, while Beccaria does not specifically teach the use of Curophen 40-856 B60 (a m-cresol based phenolic resin), because Beccaria teaches the use of phenolic resins based upon m-cresol, it would have been obvious prior to the effective filing date of the instant application to have used any m-cresol-based phenolic resin.
Regarding Claim 14,
Beccaria teaches that the crosslinker may comprise 5 to 20% by weight relative to the combined weights of crosslinker, polyester, and solvent (Paragraph 15), which overlaps with the range of the instant claim. One of ordinary skill in the art would select an amount of crosslinker to afford the desired cured material properties such as strength and flexibility. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 15,
Beccaria teaches that a variety of solvents may be used to form the composition, including, xylene, methyl amyl ketone, toluene, butanol, ethyl and butyl acetate, and Aromatic 100 and 150 (Paragraph 41).
Regarding Claim 17-19,
Beccaria in view of teaches the components of the polyester as required by the instant claim as discussed above in regard to claims 1 and 16. With regard to the relative amounts of polyester to crosslinker, Beccaria teaches that the polyester should comprise 3 to 40% by weight and the crosslinker 5 to 20% by weight of the composition, with the weight of the composition including the polyester, crosslinker, and solvent (Paragraphs 9-17). These ranges overlap with the ranges of the instant claims. Additionally, as Beccaria teaches the use of isocyanate (Paragraph 35), phenolic resin and benzoguanamine resin (Paragraph 36), it would have been obvious to use them singly or in combination in any amount suitable to obtain the desired material characteristics within the combined range disclosed by Beccaria. As the amounts of crosslinker in the instant claims overlaps with the range taught by Beccaria, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, with regard to the titanium dioxide pigment, Beccaria teaches the use of pigments (Paragraph 17) and notes the use of titanium dioxide (Table 2, Pigmented Formulation).
Regarding Claim 20,
Beccaria teaches that the composition is useful for coating metal surfaces for food contact (Abstract), meeting the requirement of the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Maral (US 20190284400) teaches the use of polyester polymers of similar composition (combination of aliphatic and aromatic diacids, overlapping polyol content and composition) to the instant application in which the composition is crosslinked using a benzoguanamine-based crosslinker for use as a metal coating for beverage cans. Knotts (US 20140131353) teaches the use of polyesters similar to those of the instant application that are crosslinked using either phenol-formaldehyde or benzoguanamine-formaldehyde compounds for use as metal coatings for food containers and beverage cans.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765