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 .
Election/Restrictions
Applicant's election with traverse of claims 1-11 in the reply filed on 1/6/2026 is acknowledged. The traversal is on the ground(s) that the application does not lack unity of invention because the International Searching Authority did not check box IV in the written opinion; and furthermore the claims would not cause a search burden because the This is not found persuasive because the application is not subject to restriction due to a search burden; it is restricted based on lack of unity of invention. National stage applications may be restricted under 35 USC 121 and 372. The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA, see MPEP 1893(d).
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al, US20190144667.
Regarding claim 1, Brunner teaches an aqueous bath for electrolytic deposition comprising an imidazoyl urea polymer ¶¶[0012-0014]. The imidazoyl urea polymer is positively charged and is correlated with the cathodically depositable polymer (a) of claim 1, ¶[0017]. Furthermore, Brunner teaches the aqueous composition comprises at least one nitrogen containing compound which may be selected as alkoxylated polyethyleneimine, ¶[0068], which reads on the component (b) of claim 1. It would be obvious to select the alkoxylated PEI because it is a suitable embodiment of an additive that enables the uniform coating thickness to be achieved, as taught by Brunner.
The fact that Brunner discloses numerous types of additional nitrogen containing compounds which can be suitably selected for addition to the imidazoyl urea aqueous composition does not render any particular combination of nitrogen containing compound and imidazoyl urea less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Claims 2-6 is rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al, US20190144667 in view of Roeger-Goepfert et al, WO2011113908A1.
Regarding claims 2-6, Brunner teaches the composition according to claim 1 as explained above. Brunner, having disclosed the alkoxylated PEI in only a cursory fashion, is not especially forthcoming as to various structural attributes/properties of the alkoxylated PEI. In instances such as these, one of ordinary skill would consult the related prior art to ascertain what is best suited in this capacitydoes not teach the alkoxylated PEI is an ethoxylated PEI, and is silent to any other details about the type of alkoxylated PEI’s to use in the electrodeposition composition.
Roeger-Goepfert discloses a composition for metal electroplating comprising an alkoxylated polyalkyleneimine (PAI), abstract. A polyethyleneimine is disclosed as an example, page 7 l. 37, and the alkoxylation is performed by reacting with an alkylene oxide, page 8 l. 29-30, and preferably ethylene oxide or propylene oxide, page 8 l. 38, which reads on claims 3 and 4. Furthermore, it is disclosed that the PAI can have a branched structure, see structure of page 3 l. 30-42, reads on claim 2, and has an alkoxylation of 1.5-10, page 3 l. 7, which overlaps with the degree of alkoxylation of claim 5. 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).
The molecular weight of the polyalkyleneimine is between 300-1,000,000 g/mol, page 2 l. 8. This is a weight average molecular weight, but it is sufficiently broad that it includes polyalkyleneimine polymers possessing a number average molecular weight within the claimed range of claim 6 because commercially available linear PAI polymers such as linear polyethyleneimine have a polydispersity of about 1.3, while commercially available branched polyethyleneimine polymers have a PDI of about 2.5 as evidenced by the Sigma Aldrich datasheets for the linear and branched PEI’s respectively. This range of PDI, for instance, would mean a PEI with a Mw of 25,000 g/mol has a number average molecular weight of 19,231 g/mol for a linear PEI and 10,000 g/mol for a branched PEI, which falls within the claimed Mn range. Additionally, in order for a polymer that is within the teachings of the instant specification to have a Mw that is higher than the 1,000,000 g/mol taught by Roeger-Goepfert, the PDI would have to be improbably high.
Roeger-Goepfert, like Brunner, also discloses the alkoxylated polyalkyleneimine having an average degree of alkoxylation from 1.5-10 exhibits good leveling performance with lower nitrogen content and provide metal deposits without formation of any added defects, page 3 l. 18-22.
Brunner and Roeger-Goepfert are analogous to the claimed invention because they are both in the field of aqueous electrodeposition compositions comprising similar polymers.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Brunner using the ethoxylated or propoxylated polyethyleneimine with branching, a molecular weight of 300-1,000,000 g/mol, and an alkoxylation degree of 1.5-10 in the aqueous electrolytic deposition composition with the motivation of producing an aqueous bath composition with a leveling additive that exhibits good leveling performance with lower nitrogen content and provides metal deposits without formation of added defects, as disclosed by Roeger-Goepfert.
Claims 1, 3-4, 7-10, is rejected under 35 U.S.C. 103 as being unpatentable over Koral et al, US3663389A.
Regarding claims 1, 3-4, and 8-10, Koral teaches an aqueous electrocoating composition comprising water insoluble tetramethylol guanamines (A), and water dispersible non-gelled polymeric material (B), which carry ionic charges, abstract. The non-gelled polymeric material may be anionic or cationic, Col. 3 l. 75 to Col. 4 l. 1, and the cationic water dispersible non-gelled polymeric material may be selected as the reaction products of polyfunctional epoxy compounds (such as the reaction product of isopropylidine-4,4'-bis-phenol with epichlorohydrin) with polyfunctional amines, Col. 8 l. 43-51, which reads on the component (a), epoxy-amine adduct, of claims 1, 8, and 9.
Another cationic polymeric material for use in the aqueous dispersion is a polyethyleneimine, Col. 9 l.15. Koral further teaches that the PEI can be reacted with ethylene oxide, Col. 9 l. 21, which reads on the ethoxylated PEI, component (b), of claims 1, 3, and 4.
Koral teaches that the cationic polymeric materials react with the tetramethylol guanamine and crosslink under the application of heat, Col. 4 l. 43-49, therefore the tetramethylol guanamines act as a crosslinker, which reads on claim 10.
Koral does not explicitly teach combining more than one cationic polymeric material in the aqueous dispersion, but also does not teach away or discourage the combination. Koral separately suggests the combination of the crosslinker with the epoxy-amine adduct, and the crosslinker with the PEI, therefore it would be obvious to one of ordinary skill in the art before the effective filing date to prepare a third composition combining both because it is prima facie obvious to combine two compositions, each of which is taught by prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.” In re Kerkhoven 205 USPQ 1069.
Regarding claim 7, Koral exemplifies a 10% solids content in the coating of example 4 and example 5, Col. 10 l. 55 and l. 70, with a ratio of 75/25 of ionic polymer to guanamine compound in each example. This puts the ionic polymer present in an amount of 7.5 wt.%, which falls within the claimed range.
Although Koral did not use the ethoxylated PEI in these examples, it would be obvious to the skilled artisan to substitute the ionic polymers in the examples with the ethoxylated PEI in a similar 75/25 ratio and dilute to 10 wt.% solids with the motivation of producing another permutation of the aqueous electrolytic deposition coating composition with 7.5 wt.% ethoxylated PEI.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach, suggest, or disclose adding a blocked polyisocyanate to the aqueous compositions. Brunner and Roeger-Goepfert do not mention any crosslinkers needing to be added to the aqueous compositions, and it would not be obvious to add crosslinkers because the compositions are for electroplating copper or metals.
Koral teaches the guanamine compound acts as a crosslinker for the cationic polymeric materials, therefore it would not need an additional crosslinker in the form of a blocked polyisocyanate.
Double Patenting
Claims 1-11 of this application is patentably indistinct from claims 1-11 of Application No. 18/862,591. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of co-pending Application No. 18/862,591 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of ‘591 produces the invention of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Reference claim 1 is directed to: An aqueous cathodically depositable electrodeposition coating material composition comprising (I) at least one binder dispersion comprising at least one cathodically depositable polymer (a) and (II) at least one pigment paste comprising at least one pigment and/or filler, wherein manufacture of the electrodeposition coating material composition comprises mixing the binder dispersion (I) and the pigment paste (II), and wherein the composition also comprises at least one alkoxylated polyethyleneimine (b) and wherein the at least one alkoxylated polyethyleneimine (b) is part of the at least one binder dispersion (I) and/or part of the at least one pigment paste (II).
Reference claim 1 reads on instant claim 1, where the only difference is the composition of ‘591 requires pigment paste and/or filler, while the instant claim 1 does not, but states the composition comprises the components (a) and (b), which means the composition is allowed to have other ingredients. The composition of ’591 is an obvious variant of the instant application.
Reference claims 2-11 are directed to the same subjects as the instant claims 2-11.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765