DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 25, 2025 has been entered.
Response to Amendment
3. The amendment filed by Applicant on April 25, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth 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.
4. Claims 1-2, 4, 6-9, 11, 13, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2008/0076868) in view of Garcia Castro et al (WO 2020/016314) and Campbell et al (US 6,531,560).
It is noted that while the rejection is made over WO 2020/016314 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,608,393 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,608,393.
5. Green et al disclose a coating composition comprising:
A) 20-80%wt ([0011], as to instant claim 13) of a carbamate functional polymer;
B) a cross-linking agent reactive with the carbamate functional polymer (Abstract),
wherein the carbamate functional polymer produced by preparing a backbone polymer, which includes polymerizing one or more ethylenically unsaturated carbamate-free monomers having hydroxy functionality and one or more nonfunctional ethylenically unsaturated monomers, followed by reacting the backbone polymer with one or more additional reactive compounds so to produce the carbamate-functional polymer ([0012], [0010]) and
wherein the cross-linking agent is selected from the group of aminoplasts, diisocyanates ([0015]).
It is noted that the cross-linking agent used in instant invention comprises amino resins and diisocyanates (p. 20, line 29-p. 21, line 20 of instant specification). Therefore, the cross-linking agent component B) in the composition of Green et al will intrinsically and necessarily comprise “at least one reactive functional group that is able to undergo at least one crosslinking reaction with at least one carbamate group present in the carbamate” functional polymer as well (as to instant claim 1).
6. The exemplified component A) includes carbamate-acrylic resin ([0039]).
The carbamate group is having the structure as shown below:
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([0009] of Green et al, as to instant claim 7).
7. Though Green et al recites the component A) being carbamate-acrylic resin and being produced by polymerizing one or more ethylenically unsaturated carbamate-free monomers and one or more nonfunctional ethylenically unsaturated monomers, followed by reacting the backbone polymer with one or more carbamate-based compounds, Green et al does not explicitly recite the acrylic backbone polymer being ethylene-hydroxyethyl (meth)acrylate-alkyl (meth)acrylate copolymer.
8. However,
1) Garcia Castro et al discloses a copolymer comprising:
- 30-90%wt ethylene (as to instant claims 2, 16-17),
- 10-70%wt of a reactive acrylate, specifically hydroxyethyl (meth)acrylate (col. 1, lines 55-63; col. 2, lines 47-67; col. 3, lines 17-20, as to instant claims 1, 4, 18-20) and further - 10-60%wt of alkyl (meth)acrylates (col. 9, lines 65-col. 10, lines 50, col. 11, lines 30-40, as to instant claims 1, 6),
Wherein said copolymer is liquid and is used in coating compositions for single-coat or multicoat clearcoats (Abstract; col. 14, lines 32-35).
2) Campbell et al discloses carbamate-functional polymers used in coating compositions (Abstract; col. 4, line 65-col. 5, line 8), wherein the polymer backbone, used for reaction with carbamate-containing reactants to form said carbamate-functional polymer, comprises not only hydroxyethyl (meth)acrylate monomers (col. 7, lines 2-7; col. 4, lines 9-16), but further units having the following Formula B:
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Formula B,
Wherein R” are H (col. 3, lines 30-38, 48-49);
i.e. the monomer of Formula B comprises ethylene,
wherein the use of such polymers improves adhesion of said coating compositions (col. 4, lines 51-62; col. 4, lines 9-16) and improves scratch and mar resistance (col. 13, lines 10-15).
Campbell et al further teaches the reaction of the polymer backbone comprising hydroxy-functional groups (col. 3, lines 56-58; col. 7, lines 3-6) with compounds having a functional group (specifically, the functional group being alkyl carbamate group, see col. 8, lines 29-35 or methyl carbamate as in col. 17, lines 52-53, as to instant claims 7-9) in the presence of tin-based catalyst (col. 17, lines 50-54, as to instant claim 11), resulting in producing carbamate groups (col. 4, lines 9-15, as to instant claim 1).
It is further noted that the level of conversion of the hydroxy groups to carbamate groups depends on the amount of used alkyl carbamate reactant relative to the amount of hydroxy groups, thereby resulting in at least partial conversion of said hydroxy groups to the carbamate groups.
9. Since a) Green et al discloses a coating composition comprising a polymeric binder component A), and recites the component A) being carbamate-acrylic resin produced by polymerizing one or more ethylenically unsaturated carbamate-free monomers comprising hydroxy groups and one or more nonfunctional ethylenically unsaturated monomers, wherein the backbone comprises a plurality of hydroxyl groups ([0012]), followed by reacting the backbone polymer having said hydroxyl groups with one or more carbamate-based compounds, but does not explicitly recite the acrylic backbone polymer comprising ethylene units, specifically being ethylene-hydroxyethyl (meth)acrylate-alkyl (meth)acrylate copolymer,
b) Garcia Castro et al discloses a liquid copolymer comprising:
ethylene, hydroxyethyl (meth)acrylate and alkyl (meth)acrylates as comonomers and wherein said copolymer is specifically cited as being used in coating compositions for single-coat or multicoat clearcoats, and
c) Campbell et al explicitly teaches the use of both hydroxy functional acrylic monomers and ethylene as comonomers forming the backbone in carbamate-functional polymers, used in coating compositions, and providing improved adhesion properties and improved scratch resistance to said coating compositions,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Garcia Castro et al, Campbell et al and Green et al, and to use, or obvious to try to use the copolymer of Garcia Castro et al comprising both acrylic comonomers, also including hydroxy groups, and ethylene as the hydroxy-group containing acrylic backbone polymer for further reaction with carbamate compound in the coating composition of Green et al, so to further improve adhesion properties and scratch resistance of the composition and since it would have been obvious to choose material based on its suitability, especially since Campbell et al teaches that ethylene can be used as the comonomer in carbamate-functional resins used in coating compositions having improved adhesion and scratch resistance. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
10. It is noted that, though Green et al in view of Garcia Castro et al and Campbell et al do not explicitly recite the component A) being produced in the presence of a catalyst, the limitation of instant claim 1 “prepared by reacting at least one ethylene copolymer EC with at least one carbamate compound in the presence of at least one catalyst” is a product-by-process limitation. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
11. Since the composition of Green et al in view of Garcia Castro et al and Campbell et al is substantially the same as that claimed in instant invention, i.e. comprises a carbamate-functional polymer having both hydroxy-functional (meth)acrylate and ethylene units as comonomers in the polymer backbone, with the relative amounts of said comonomers being in the ranges that are either the same or overlapping with those claimed in instant invention, therefore, the composition of Green et al in view of Garcia Castro et al and Campbell et al will intrinsically and necessarily have, or would be reasonably expected to have, the properties, including improved scratch resistance, as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
12. With respect to the evidence of unexpected results of instant invention, as presented in Examples of instant specification, it is noted that:
1) the improved scratch resistance of the inventive compositions, as shown by gloss retention, is presented by only three inventive compositions C-I1, C-I2 and C-I3, based on binders B-I2, B-I5 and B-I6 (Tables 7-8 of instant specification).
2) The binders B-I2, B-I5 and B-I6 are made from the polymer backbone comprising specifically 34-40%wt ethylene, 40-46%wt of 2-hydroxy ethyl methacrylate and 10-20%wt of alkyl (meth)acrylate (Table 2-3 of instant specification), reacted with methyl carbamate and having carbamate equivalent of 336.2-391.8 (Table 4 of instant specification).
3) The composition comprising 20.7-38.9%wt of the ethylene comonomer-containing carbamate-functional polymer (Table 6).
4) However, the scope of instant claims is significantly broader than the scope of the three compositions presented in Table 8 of instant specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
13. Claims 1-2, 4, 6-13, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2008/0076868) in view of Garcia Castro et al (WO 2020/016314), Campbell et al (US 6,531,560), Barancyk et al (US 6,228,953) and Ramesh et al (US 2005/0197473).
It is noted that while the rejection is made over WO 2020/016314 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,608,393 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,608,393.
14. The discussion with respect to Green et al in view of Garcia Castro et al and Campbell et al set forth in paragraphs 4-12 above, is incorporated here by reference.
15. Though Green et al in view of Garcia Castro et al do not explicitly recite the molar ratio of the carbamate-containing reactant of alkyl carbamate and hydroxy groups, the reaction between the acrylic backbone and the alkyl carbamate taking place in the present of a tin-based catalyst, and the amount of said tin-based catalyst,
Barancyk et al discloses a process for preparing carbamate-functional polymers comprising reacting
a) hydroxyl functional acrylic polymers comprising alkyl (meth)acrylate comonomers and hydroxyethyl (meth)acrylate (col. 2, lines 59-67; col. 3, lines 7-12) with
b) a lower alkyl carbamate, specifically methyl carbamate (col. 6, lines 33-41, col. 7, lines 15-25; as to instant claims 1, 7-9) in the presence of
c) 0.05-1%wt of dibutyltin oxide catalyst (col. 7, line 65-col. 8, line 5, as to instant claims 11-12).
16. As to instant claim 10, Barancyk et al recites that the amount of lower alkyl carbamate used depends on the amount of hydroxyl functional acrylic monomers used; higher hydroxyl functionality will require more lower alkyl carbamate (col. 8, lines 51-56). Further, Ramesh et al discloses a reaction between an acrylic polymer and an alkyl carbamate, wherein Ramesh et al explicitly teaches that the total number of moles of the carbamate compound is equal to the number of hydroxyl functionalities of the hydroxyl-functional acrylic polymer ([0054], Abstract), i.e. the molar ratio of carbamate to hydroxyl groups is at least 1:1.
17. Since the alkyl carbamate is taught in the art as being used as carbamate-based reactant to form carbamate-functional acrylic polymers by reaction of transcarbamoylation between said carbamate and hydroxyl groups of the acrylic polymer, as shown by Barancyk et al, further in the presence of tin-based catalysts and at the molar ratio of carbamate to hydroxyl groups of at least 1:1, as shown by Barancyk et al and Ramesh et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Barancyk et al, Ramesh et al and Green et al in view of Garcia Castro et al and Campbell et al, and to use, or obvious to try to use the alkyl carbamate as the reactant to form the carbamate-functional polymer of Green et al in view of Garcia Castro et al and Campbell et al in the presence of tin-based catalysts as taught by Barancyk et al and Ramesh et al, since such reaction of transcarbamoylation is taught in the art and it would have been obvious to a one of ordinary skill in the art to apply such reaction to form the component A) of the coating composition of Green et al in view of Garcia Castro et al and Campbell et al as well. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
18. Since the composition of Green et al in view of Garcia Castro et al, Campbell et al, Barancyk et al and Ramesh et al is substantially the same as that claimed in instant invention, i.e. comprises a carbamate-functional polymer having both hydroxy-functional (meth)acrylate and ethylene units as comonomers in the polymer backbone, with the relative amounts of said comonomers being in the ranges that are either the same or overlapping with those claimed in instant invention, therefore, the composition of Green et al in view of Garcia Castro et al, Campbell et al, Barancyk et al and Ramesh et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including improved scratch resistance, as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
19. With respect to the evidence of unexpected results of instant invention, as presented in Examples of instant specification, it is noted that:
1) the improved scratch resistance of the inventive compositions, as shown by gloss retention, is presented by only three inventive compositions C-I1, C-I2 and C-I3, based on binders B-I2, B-I5 and B-I6 (Tables 7-8 of instant specification).
2) The binders B-I2, B-I5 and B-I6 are made from the polymer backbone comprising specifically 34-40%wt ethylene, 40-46%wt of 2-hydroxy ethyl methacrylate and 10-20%wt of alkyl (meth)acrylate (Table 2-3 of instant specification), reacted with methyl carbamate and having carbamate equivalent of 336.2-391.8 (Table 4 of instant specification).
3) The composition comprising 20.7-38.9%wt of the ethylene comonomer-containing carbamate-functional polymer (Table 6).
4) However, the scope of instant claims is significantly broader than the scope of the three compositions presented in Table 8 of instant specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
20. Claims 1-2, 4, 6-9, 11, 13, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2008/0076868) in view of Greene et al (US 4,273,695) and Campbell et al (US 6,531,560).
21. Green et al disclose a coating composition comprising:
A) 20-80%wt ([0011], as to instant claim 13) of a carbamate functional polymer;
B) a cross-linking agent reactive with the carbamate functional polymer (Abstract),
wherein the carbamate functional polymer produced by preparing a backbone polymer, which includes polymerizing one or more ethylenically unsaturated carbamate-free monomers having hydroxy functionality and one or more nonfunctional ethylenically unsaturated monomers, followed by reacting the backbone polymer with one or more additional reactive compounds so to produce the carbamate-functional polymer ([0012], [0010]) and
wherein the cross-linking agent is selected from the group of aminoplasts, diisocyanates ([0015]).
It is noted that the cross-linking agent used in instant invention comprises amino resins and diisocyanates (p. 20, line 29-p. 21, line 20 of instant specification). Therefore, the cross-linking agent component B) in the composition of Green et al will intrinsically and necessarily comprise “at least one reactive functional group that is able to undergo at least one crosslinking reaction with at least one carbamate group present in the carbamate” functional polymer as well (as to instant claim 1).
22. The exemplified component A) includes carbamate-acrylic resin ([0039]).
The carbamate group is having the structure as shown below:
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([0009] of Green et al, as to instant claim 7).
23. Though Green et al recites the component A) being carbamate-acrylic resin and being produced by polymerizing one or more ethylenically unsaturated carbamate-free monomers and one or more nonfunctional ethylenically unsaturated monomers, followed by reacting the backbone polymer with one or more carbamate-based compounds, Green et al does not explicitly recite the acrylic backbone polymer being ethylene-hydroxyethyl (meth)acrylate-alkyl (meth)acrylate copolymer.
24. However,
1) Greene et al discloses a curable coating composition comprising
A’) a copolymer of:
20-70%mol of ethylene,
20-60%mol of methyl methacrylate (as to instant claims 5-6);
1-15%mol of hydroxyalkyl ester of (meth)acrylic acid, specifically 2-hydroxyethyl methacrylate (col. 2, lines 14-17, as to instant claims 3-4, 18-20); and
B’) a cross-linking agent (Abstract).
The exemplified copolymer comprises 25.9%wt (56%mol) of ethylene, 59.5%wt (36%mol) of MMA and 9.8%wt (4.5%mol) of 2-hydroxyethyl methacrylate (col. 4, lines 26-33).
2) Campbell et al discloses carbamate-functional polymers used in coating compositions (Abstract; col. 4, line 65-col. 5, line 8), wherein the polymer backbone, used for reaction with carbamate-containing reactants to form said carbamate-functional polymer, comprises not only hydroxyethyl (meth)acrylate monomers (col. 7, lines 2-7; col. 4, lines 9-16), but further units having the following Formula B:
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Formula B,
Wherein R” are H (col. 3, lines 30-38, 48-49);
i.e. the monomer of Formula B comprises ethylene,
wherein the use of such polymers improves adhesion of said coating compositions (col. 4, lines 51-62; col. 4, lines 9-16) and improves scratch and mar resistance (col. 13, lines 10-15).
Campbell et al further teaches the reaction of the polymer backbone comprising hydroxy-functional groups (col. 3, lines 56-58; col. 7, lines 3-6) with compounds having a functional group (specifically, the functional group being alkyl carbamate group, see col. 8, lines 29-35 or methyl carbamate as in col. 17, lines 52-53, as to instant claims 7-9), in the presence of tin-based catalyst (col. 17, lines 50-54, as to instant claim 11) resulting in producing carbamate groups (col. 4, lines 9-15, as to instant claim 1).
It is further noted that the level of conversion of the hydroxy groups to carbamate groups depends on the amount of used alkyl carbamate reactant relative to the amount of hydroxy groups, thereby resulting in at least partial conversion of said hydroxy groups to the carbamate groups.
25. Since a) Green et al discloses a coating composition comprising a polymeric binder component A), and recites the component A) being carbamate-acrylic resin produced by polymerizing one or more ethylenically unsaturated carbamate-free monomers and one or more nonfunctional ethylenically unsaturated monomers, wherein the backbone comprises a plurality of hydroxyl groups ([0012]), followed by reacting the backbone polymer having said hydroxyl groups with one or more carbamate-based compounds, but does not explicitly recite the acrylic backbone polymer being ethylene-hydroxyethyl (meth)acrylate-alkyl (meth)acrylate copolymer,
b) Greene et al discloses a copolymer comprising:
ethylene, 2-hydroxyethyl (meth)acrylate and methyl methacrylate as comonomers and wherein said copolymer is specifically cited as being used in coating compositions, and
c) Campbell et al explicitly teaches the use of both hydroxy functional acrylic monomers and ethylene as comonomers forming the backbone in carbamate-functional polymers, used in coating compositions, and providing improved adhesion properties and scratch resistance to said coating compositions,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Greene et al, Campbell et al and Green et al, and to use, or obvious to try to use the copolymer of Greene et al as the hydroxy-group containing acrylic backbone polymer for further reaction with carbamate compound in the coating composition of Green et al, so to further improve adhesion properties and scratch resistance of the composition of Green et al and since it would have been obvious to choose material based on its suitability, especially since Campbell et al explicitly teaches the use of both hydroxy-functional acrylic monomers and ethylene as the comonomers for making backbone in carbamate-functional polymers used in coating compositions having improved scratch resistance. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
26. It is noted that, though Green et al in view of Greene et al and Campbell et al do not explicitly recite the component A) being produced in the presence of a catalyst, the limitation of instant claim 1 “prepared by reacting at least one ethylene copolymer EC with at least one carbamate compound in the presence of at least one catalyst” is a product-by-process limitation. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
27. Since the composition of Green et al in view of Greene et al and Campbell et al is substantially the same as that claimed in instant invention, i.e. comprises a carbamate-functional polymer having both hydroxy-functional (meth)acrylate and ethylene units as comonomers in the polymer backbone, with the relative amounts of said comonomers being in the ranges that are either the same or overlapping with those claimed in instant invention, therefore, the composition of Green et al in view of Greene et al and Campbell et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including improved scratch resistance, as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
28. With respect to the evidence of unexpected results of instant invention, as presented in Examples of instant specification, it is noted that:
1) the improved scratch resistance of the inventive compositions, as shown by gloss retention, is presented by only three inventive compositions C-I1, C-I2 and C-I3, based on binders B-I2, B-I5 and B-I6 (Tables 7-8 of instant specification).
2) The binders B-I2, B-I5 and B-I6 are made from the polymer backbone comprising specifically 34-40%wt ethylene, 40-46%wt of 2-hydroxy ethyl methacrylate and 10-20%wt of alkyl (meth)acrylate (Table 2-3 of instant specification), reacted with methyl carbamate and having carbamate equivalent of 336.2-391.8 (Table 4 of instant specification).
3) The composition comprising 20.7-38.9%wt of the ethylene comonomer-containing carbamate-functional polymer (Table 6).
4) However, the scope of instant claims is significantly broader than the scope of the three compositions presented in Table 8 of instant specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
29. Claims 1-2, 4, 6-13, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Green et al (US 2008/0076868) in view of Greene et al (US 4,273,695), Campbell et al (US 6,531,560), Barancyk et al (US 6,228,953) and Ramesh et al (US 2005/0197473).
30. The discussion with respect to Green et al in view of Greene et al and Campbell et al set forth in paragraphs 20-28 above, is incorporated here by reference.
31. Though Green et al in view of Greene et al and Campbell et al do not explicitly recite the molar ratio of the carbamate-containing reactant of alkyl carbamate and hydroxy groups, the reaction between the acrylic backbone and the alkyl carbamate taking place in the present of a tin-based catalyst, and the amount of said tin-based catalyst,
Barancyk et al discloses a process for preparing carbamate functional polymers comprising reacting:
a) hydroxyl functional acrylic polymers comprising alkyl (meth)acrylate comonomers and hydroxyethyl (meth)acrylate (col. 2, lines 59-67; col. 3, lines 7-12) with
b) a lower alkyl carbamate, specifically methyl carbamate (col. 6, lines 33-41, col. 7, lines 15-25; as to instant claims 1, 7-9) in the presence of
c) 0.05-1%wt of dibutyltin oxide catalyst (col. 7, line 65-col. 8, line 5, as to instant claims 11-12).
32. As to instant claim 10, Barancyk et al recites that the amount of lower alkyl carbamate used depends on the amount of hydroxyl functional acrylic monomers used; higher hydroxyl functionality will require more lower alkyl carbamate (col. 8, lines 51-56). Further, Ramesh et al discloses a reaction between an acrylic polymer and an alkyl carbamate, wherein Ramesh et al explicitly teaches that the total number of moles of the carbamate compound is equal to the number of hydroxyl functionalities of the hydroxyl-functional acrylic polymer ([0054], Abstract), i.e. the molar ratio of carbamate to hydroxyl groups is at least 1:1.
33. Since the alkyl carbamate is taught in the art as being used as carbamate-based reactant to form carbamate-functional acrylic polymers by reaction of transcarbamoylation between said carbamate and hydroxyl groups of the acrylic polymer, as shown by Barancyk et al, further in the presence of tin-based catalysts and at the molar ratio of carbamate to hydroxyl groups of at least 1:1, as shown by Barancyk et al and Ramesh et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Barancyk et al, Ramesh et al and Green et al in view of Greene et al and Campbell et al, and to use, or obvious to try to use the alkyl carbamate as the reactant to form the carbamate-functional polymer component A) of Green et al in view of Greene et al and Campbell et al in the presence of tin-based catalysts as taught by Barancyk et al and Ramesh et al, since such reaction of transcarbamoylation is taught in the art and it would have been obvious to a one of ordinary skill in the art to apply such reaction to form the component A) of the coating composition of Green et al in view of Greene et al and Campbell et al as well. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
34. Since the composition of Green et al in view of Greene et al, Campbell et al, Barancyk et al and Ramesh et al is substantially the same as that claimed in instant invention, i.e. comprises a carbamate-functional polymer having both hydroxy-functional (meth)acrylate and ethylene units as comonomers in the polymer backbone, with the relative amounts of said comonomers being in the ranges that are either the same or overlapping with those claimed in instant invention, therefore, the composition of Green et al in view of Greene et al, Campbell et al, Barancyk et al and Ramesh et al will intrinsically and necessarily have the properties, including improved scratch resistance, or would be reasonably expected to have said properties having the values as those claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
35. With respect to the evidence of unexpected results of instant invention, as presented in Examples of instant specification, it is noted that:
1) the improved scratch resistance of the inventive compositions, as shown by gloss retention, is presented by only three inventive compositions C-I1, C-I2 and C-I3, based on binders B-I2, B-I5 and B-I6 (Tables 7-8 of instant specification).
2) The binders B-I2, B-I5 and B-I6 are made from the polymer backbone comprising specifically 34-40%wt ethylene, 40-46%wt of 2-hydroxy ethyl methacrylate and 10-20%wt of alkyl (meth)acrylate (Table 2-3 of instant specification), reacted with methyl carbamate and having carbamate equivalent of 336.2-391.8 (Table 4 of instant specification).
3) The composition comprising 20.7-38.9%wt of the ethylene comonomer-containing carbamate-functional polymer (Table 6).
4) However, the scope of instant claims is significantly broader than the scope of the three compositions presented in Table 8 of instant specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Response to Arguments
36. Applicant's arguments filed on April 11, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
Conclusion
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764