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 .
Status of Claims
The examiner acknowledges the amendments to claims 1 and 16-19. Claims 1-20 are pending.
Specification
Applicant has amended paragraphs 22, 39 and 40 as well as page 21 lines 1-2 and page 27 line 11. As a result, the objections to the specification over these sections are withdrawn. Applicant also submitted an amendment for page 8 lines 1-9, however the submitted passage does not match the passage of the original specification. The examiner assumes that this was meant to replace page 9 lines 1-9, however the applicant must confirm this in a subsequent communication for this change to be entered.
Claim Objections
Claim 18 has been amended and as a result, the objection to claim 18 is withdrawn.
Claim Rejections - 35 USC § 112
Claims 1 and 17-19 have been amended. As a result, the 112(b) rejections of these claims have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 75% (Table 1, Samples 5, 6, and 8 and Table 4, Sample 21) and as such, it would have been obvious prior to the effective filing date of the instant application to have selected compositions with low failure rates in applications such as metal can coatings where deformation can occur. Additionally, this value would be a function of the material composition and it would necessarily follow that compositions containing the required components in the required amounts would meet limitation. "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). See MPEP 2112.01.II 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.
Response to Arguments
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 12 and 13, the applicant argues that the examples disclosed by Beccaria differ from those of the instant application and notes the differences in properties of the cured composition. The examiner notes that the rejection is over Beccaria (US 20180223126) in view of Kashiwakura (US 20180291232), which teaches the combination of elements required in the instant claims. Further, the applicant’s noting of examples from Beccaria do not take into account the addition of the aliphatic diacid taught by Kashiwakura and as such, the example noted by the applicant is not relevant to the rejection of record.
On pages 13 to 17, the applicant points to properties of the composition when meeting the requirements of the instant application contrasted with those outside the range. While this appears to be an argument related to unexpected results, these results do not address how Beccaria in view of Kashiwakura does not teach the composition nor that the combined teachings would not necessarily result in compositions with identical properties.
On pages 18-21, the applicant appears to be arguing against Beccaria without incorporating the aspects of Kashiwakura as used in the rejection and similarly against Kashiwakura not in combination with Beccaria. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
While the applicant argues that neither reference teaches the acid and hydroxyl numbers, the examiner notes that Beccaria addresses this directly in Paragraph 29 as noted in the rejection, which states that reactive functional group present at the chain ends is controlled via which reagent, the diol component or the diacid component is used in excess. The applicant’s use of a low acid number and higher hydroxyl number is effectively pointing to the use of a polymer which is predominantly hydroxyl group terminated, which based upon the teachings of Beccaria is allowed and would no doubt be known to the ordinarily skilled artisan. Further, Beccaria notes in the same paragraph that these groups serve as reaction points for crosslinking and that the choice of crosslinking agent will determine the desired functional group at the terminus of the polymer chain. As such, the ordinarily skilled artisan would select the appropriate functional group based upon the crosslinking agent used and it would have been obvious prior to the effective filing date of the instant application to have done so based upon Beccaria’s teachings.
In summary, the applicant’s arguments have not demonstrated that the teachings of Beccaria in view of Kashiwakura do not teach the composition of the instant application and further has not presented unexpected results that would demonstrate that the properties of the final composition do not logically follow the composition itself. As a result, the rejection is maintained.
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 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
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