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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/24/2024, 10/10/2024 and 6/1/2023 have been considered by the examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 7, 13, 15, 17, 19, 24 and 28 is/are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by Martinoni et al (US 2017/0158869)
Regarding Claims 1, 7, 13, 15, 17, 19, 24 and 28
Specific teachings of Martinone Regarding The Composition:
The composition comprises polyesters are commercially available such as Griltex D2345 and Griltex D2360 [0039] (These being recognized in the instant specification as semi crystalline polyester with Tg -20°C melting range 145°-162°C average melt viscosity 70 Pa.sec and amorphous copolyester Tg 70°C average melt viscosity 240 pa.sec at P15 – respectively thereby meeting claim 1 and claim 7)
The additional resin has a Mw of 2000 to 15000 [0049] The polyesters are commercially available such as Griltex D2345 and Griltex D2360 [0039]
(These commercial products being recognized in the instant specification at [0043] as suitable polymers for the first and second polyester: The instant specification recognizes as semi crystalline polyester with Tg -20°C melting range 145°-162°C average melt viscosity 70 Pa.sec and amorphous copolyester Tg 70°C average melt viscosity 240 pa.sec at P15-16 in the examples of the claimed invention – respectively thereby meeting claim 1 and claim 7 and claim 17 for a second polyester with Tg of 20 to about 70°C)
The composition comprises at least one polyester resin and may be a blend of two or more polyesters [0035] The composition may comprise resins including epoxy resins [0042] The composition may comprise at least one additional resin component [0043]
Regarding the Substrate and Regarding the Method of forming a coating:
The substrate is a three piece can and the composition is applied alone the weld or side seam of The can [0005] the substrate includes food and beverage cans [0028] (meeting claim 45) the composition is melted on the substrate and solidified [0006] see also par [0028-0030] (meeting claims 19 and 20)
The composition is suitable for food and beverage container interiors to protect the metal surface from the can contents [0002][0030]
Regarding a metal containing oxide reactable with sulfide containing compounds
The composition comprises pigment such as iron oxide [0051]
Regarding Claim 15:
While titanium oxide is listed as a pigment option, it is not required meeting claim 15)
Regarding Claim 28:
The composition comprises an additional resin derived from glycidyl methacrylate including commercially available from Estron Chemical [0048] where the additional resin has a weigh average molecular weight of 2000 to 15000 [0049] The composition comprises 50-99 wt.% of the first polyester resin having Mn of 20000-50000 and 1 to 5 wt.% of the resin having Mn 3000 to 10000 (See claim 15 reference) and the resin is derived from glycidyl methacrylate (See claim 20 reference) (meeting claim 28)
The prior art names the species of the instant claims (being the species commercially available and recited in the instant specification) as such the prior art anticipates the claims as above set forth.
MPEP 2131:
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989)
[W]hen the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original)
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)
Claim(s) 2, 5, 9-10, 20, 34-35, 37-39, 41, and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martinoni et al (US 2017/0158869) as applied to claims 1, 7, 13, 15, 17, 19, 24 and 28 above.
Regarding Claims 2, 5, 9-10, 20, 34-35, 37-39, 41, and 45:
Martinoni discloses the limitations above set forth.
The examiner notes that the commercial products recited in the prior art are the same as those described in the instant specification, claims 1, 7, 13, 15, 17, 19, 24 and 28 but also recognizes the prior art also teaches overlapping ranges as more fully below set forth.
The broad teachings of Martinoni overlap the various claimed ranges for particle size, Mw, amount by weight, Tg, melting temperatures etc. as more fully below set forth which also overlap the ranges of claims including but not limited to 2, 5, 9-10, 20, 34-35, 37-39, 41 and 45 thereby rendering same obvious.
(Since the broader teachings of the reference also encompass the claims rejected as anticipated the examiner has indicated in some instances additional overlapping ranges for the consideration of applicant and in the interest of compact prosecution. The rejections as above set forth establish a prima facie showing for anticipation.)
See MPEP 2144.05(I): "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, 191 USPQ 90 (CCPA 1976)"
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Martinoni et al (US 2017/0158869) discloses the limitations above set forth.
Martinoni discloses a powder coating composition and method for coating at least one surface of a substrate wherein the composition comprises:
At least one polyester and an additional resin [0005]
The substrate is a three piece can and the composition is applied alone the weld or side seam of the can [0005] the substrate includes food and beverage cans [0028] (meeting claim 45) the composition is melted on the substrate and solidified [0006] see also par [0028-0030](meeting claim 20)
The composition comprises a polyester having a weight average molecular weight from about 20000 to about 50000 and about 1-5 wt.% of a low molecular weight highly functional resin [0006]the coating composition is a powder including at least one polyester with a weight average molecular weight of at least about 20000 and less than 50000 [0033] (meeting claims 1, 19, 34 being with the claimed weight average molecular weight range)
The polyester is a semi crystalline polyester with a glass transition temperature of at least about -20°C or at least about 10° C and less than 35° C [p0034] (overlapping claim 7) the melting temperature is less than 170°C [0034] (overlapping the range of claim 7)
The at least one polyesters include those set forth at [0034-0048] such as semi crystalline polyester [0034] derived from dicarboxylic acids including terephthalic acid phthalic and isophthalic acid [0036] (meeting claim 9) and diols such as ethylene glycol and butylene glycol [0037] (meeting claim 9)
The polyester is a semi crystalline polyester with a glass transition temperature of at least about -20°C or at least about 10° C and less than 35° C [p0034] (overlapping claim 7) the melting temperature is less than 170°C [0034] (overlapping the range of claim 7)
Further Regarding Claim 9:
The at least one polyesters include those set forth at [0034-0048] such as semi crystalline polyester [0034] derived from dicarboxylic acids including terephthalic acid phthalic and isophthalic acid [0036] (meeting claim 9 and diols such as ethylene glycol and butylene glycol [0037] (meeting claim 9)
Further Regarding Claim 10:
The composition comprises an additional resin including a glycidyl ester of methacrylate in an amount of 1 to 5 wt.% [0043][0044] (meeting clam 10)
Further Regarding Claims 38-39 and 41:
The composition further comprising a second resin of an epoxy resin [0044] (meeting claim 17 for acrylic resin and epoxy resin)
The additional resin has a Mw of 2000 to 15000 [0049] The polyesters are commercially available such as Griltex D2345 and Griltex D2360 [0039] (These being recognized in the instant specification as semi crystalline polyester with Tg -20°C melting range 145°-162°C average melt viscosity 70 Pa.sec and amorphous copolyester Tg 70°C average melt viscosity 240 pa.sec at P15 – respectively thereby meeting claim 1 and claim 7 and claim 17 for a second polyester with Tg of 20 to about 70°C)
The composition comprises at least one polyester resin and may be a blend of two or more polyesters [0035] The composition may comprise resins including epoxy resins [0042] The composition may comprise at least one additional resin component [0043]
Further Regarding Claims 5 and 37:
The composition comprises pigment such as iron oxide at 1 to 50 wt.% or [0051] (meeting clam 5 for iron oxide and claim 37where one of ordinary skill in the art at the time of filing the invention recognizes all forms of iron oxide rendering same obvious to try including FeO and Fe2O3)
Further Regarding Claim 34:
Regarding the limitation for metal oxide react able with sulfide containing compounds: The composition comprises pigment such as iron oxide at 1 to 50 wt.% or [0051]
The composition comprises fillers such as zinc oxide in ranges such as 0.1 to 20 wt.% or 2 to 10 wt.% [0052] (also meeting and overlapping claim 19)
The composition comprises pigment such as iron oxide at 1 to 50 wt.% or [0051]
The composition comprises fillers such as zinc oxide in ranges such as 0.1 to 20 wt.% or 2 to 10 wt.% [0052] (also meeting and overlapping claim 19)
Further Regarding claims 2, 20 and 35:
The blend of polyester and resin are milled to attain the desired particle size [0057] (i.e. one of ordinary skill in the art at the time of filing the invention can control the particle size to a desired range)
The powder composition has fine particle size distribution such that at least 95 wt.% are capable of passing through a 100 millimeter sieve or at least 99 wt.% capable of passing through a 100 micrometer sieve [0040] (meeting the limitations of claims 2 and 20 and 35 by overlapping the range for less than 10 wt.% of particles size less than 1 micron)
The composition comprises an additional resin derived from glycidyl methacrylate including commercially available from Estron Chemical [0048] where the additional resin has a weight average molecular weight of 2000 to 15000 [0049] The composition comprises 50-99 wt.% of the first polyester resin having Mn of 20000-50000 and 1 to 5 wt.% of the resin having Mn 3000 to 10000 (See claim 15 reference) and the resin is derived from glycidyl methacrylate (See claim 20 reference)
Further Regarding Claim 34:
The coating thickness is less than 70 microns such as 50-70 microns [0061][0065](within the range of claim 34)
The composition comprises an additional resin derived from glycidyl methacrylate including commercially available from Estron Chemical [0048] where the additional resin has a weigh average molecular weight of 2000 to 15000 [0049] The composition comprises 50-99 wt.% of the first polyester resin having Mn of 20000-50000 and 1 to 5 wt.% of the resin having Mn 3000 to 10000 (See claim 15 reference) and the resin is derived from glycidyl methacrylate (See claim 20 reference) (meeting claim 34 with overlapping ranges)
The composition comprises inorganic fillers such as zinc oxide, aluminum oxide and also comprises colorants such as iron oxide [0051-0052] (mering claim 34 for oxide react able with sulfide containing compounds
Further Regarding Claim 39:
The composition comprises 50-99 wt.% of the first polyester resin having Mn of 20000-50000 and 1 to 5 wt.% of the resin having Mn 3000 to 10000 (See claim 15 reference) and the resin is derived from glycidyl methacrylate (See claim 20 reference) (meeting claim 34 with overlapping ranges)
Further Regarding Claims 45
The composition comprises pigment such as iron oxide at 1 to 50 wt.% or [0051]
The composition comprises fillers such as zinc oxide in ranges such as 0.1 to 20 wt.% or 2 to 10 wt.% [0052] (also meeting and overlapping claim 19)
The composition is suitable for food and beverage container interiors to protect the metal surface from the can contents [0002][0030]
The substrate is a three piece can and the composition is applied alone the weld or side seam of he can [0005] the substrate includes food and beverage cans [0028] (meeting claim 45) the composition is melted on the substrate and solidified [0006] see also par [0028-0030] (meeting claim 19 and 45 for a metal substrate coated on side seam with composition where the substrate is a container and claim 45 for a food or beverage can)
Claim(s) 5 and 37 are alternatively rejected rejected under 35 U.S.C. 103 as being unpatentable over Martinoni et al (US 2017/0158869) as applied to claims 1, 7, 13, 15, 17, 19, 24 and 28 and claims 2, 5, 9-10, 20, 34-35, 37-39, 41, and 45 above further in view of Zalich et al (US 2019/0161620).
Regarding Claims 2, 5, 9-10, 20, 34-35, 37-39, 41, and 45:
Martinoni discloses the limitations above set forth.
Further Regarding Claims 5 and 37:
The composition comprises pigment such as iron oxide at 1 to 50 wt.% or [0051] (meeting clam 5 for iron oxide and claim 37where one of ordinary skill in the art at the time of filing the invention recognizes all forms of iron oxide rendering same obvious to try including FeO and Fe2O3) Assuming arguendo it is not obvious to try the various iron oxides set forth in instant claims 5 and 37:
Zalich et al discloses a composition of particles and teaches solid particles include pigments such as iron oxide including iron (III) oxide, Fe.sub.2O.sub.3 based pigments [0014] used with thermoplastic particles including various methacrylate, polyesters, epoxy based polymers etc. [0015] The composition is sued for coatings of packages such as metal cans which are sealed and contain food and beverages [0053] The composition forms a coating for an article (See claim 30 of reference).
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the iron (III) oxide (Fe.sub.2O.sub.3) of Zalich as the iron oxide pigment of Martinoni as it is suitable for forming coatings on food and beverage cans; further since Martinoni expressly contemplates iron oxide pigments, doing so amounts to nothing more than use of a known pigment (iron (III) oxide) in a known environment (i.e. compositions and methods of coating metal food and beverage cans) to achieve an entirely expected result (imparting pigment) with a reasonable expectation of success.
Double Patenting
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.
Claims 1-2, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10131796 in view of Martinoni et al (US 2017/0158869). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the issued patent are directed to the same powder coating composition with the same polyester/semi crystalline polyester and amorphous polyester and epoxy functional compounds for coating containers which have a side seam by melting thee composiotn and applying it to the substrate and solidifying the coating onto the substrate wherein the coating has overlapping thickness of coatings and the coating composition has overlapping weight average molecular weight and overlapping ranges of quantities, melt temperatures, particle size ranges and Tg.
The issued patent does not include a metal oxide; however, Martinoni US 2017/0158869 teaches the same composition with a colorant of iron oxide and an inorganic filler of zinc oxide:
Martinoni et al (US 2017/0158869) the limitations of Martinoni disclosed above in the rejections under 102 and 103 are expressly incorporated herein for brevity.
Specific teachings of Martinone Regarding The Composition:
The composition comprises polyesters are commercially available such as Griltex D2345 and Griltex D2360 [0039] (These being recognized in the instant specification as semi crystalline polyester with Tg -20°C melting range 145°-162°C average melt viscosity 70 Pa.sec and amorphous copolyester Tg 70°C average melt viscosity 240 pa.sec at P15 – respectively thereby meeting claim 1 and claim 7)
The additional resin has a Mw of 2000 to 15000 [0049] The polyesters are commercially available such as Griltex D2345 and Griltex D2360 [0039]
(These commercial products being recognized in the instant specification at [0043] as suitable polymers for the first and second polyester: The instant specification recognizes as semi crystalline polyester with Tg -20°C melting range 145°-162°C average melt viscosity 70 Pa.sec and amorphous copolyester Tg 70°C average melt viscosity 240 pa.sec at P15-16 in the examples of the claimed invention – respectively thereby meeting claim 1 and claim 7 and claim 17 for a second polyester with Tg of 20 to about 70°C)
The composition comprises at least one polyester resin and may be a blend of two or more polyesters [0035] The composition may comprise resins including epoxy resins [0042] The composition may comprise at least one additional resin component [0043]
Regarding the Substrate and Regarding the Method of forming a coating:
The substrate is a three piece can and the composition is applied alone the weld or side seam of The can [0005] the substrate includes food and beverage cans [0028] the composition is melted on the substrate and solidified [0006] see also par [0028-0030] The composition is suitable for food and beverage container interiors to protect the metal surface from the can contents [0002][0030]
Regarding a metal containing oxide reactable with sulfide containing compounds The composition comprises pigment such as iron oxide [0051]
The powder coating composition contains suitable additives such as colorant and inorganic fillers in range of 1- 50 wt.% with the use of a higher colorant concentration to achieve good coverage with thinner coatings [0051] and the inorganic filler in ranges of 0.1 to 20 w.% [0052]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the iron oxide colorant and zinc oxide filler of Martinoni et al (US 2017/0158869) in the amounts taught therein in the method and composition of the issued patent to impart color, and good coverage with thinner coatings and to provide the properties the filler affords to the composition of the issued patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action for prior art teaching the claimed powder coating composition with overlapping ranges. For example McDaniel et al (US 2012/0097194) and Wales et al (US 2011/0240064) teaching polymer coating compositions ad Johnson et al (US 2002/0011308) teaching melt flowable materials for sealing surfaces.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732