DETAILED ACTION
Claim Status
Claim(s) 1-11 is/are pending.
Claim(s) 1-11 is/are rejected.
Claim(s) 12-14 is/are cancelled by Applicant.
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 .
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 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.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-11 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-24 of U.S. Patent No. 12,319,831 (WITT-SANSON ET AL).
in view of EP 3 348 622 A1 (WITT-SANSON - EP ‘622) or WITT-SANSON ET AL (US 2020/0377758),
in view of KAPLAN ET AL (US 6,313,234),
in view of MARAL ET AL (US 2018/0142120).
U.S. Patent No. 12,319,831 claims a food and/or beverage container or a monobloc aerosol can which is at least partially coated with a coating derived from a coating composition comprising:
(a) a polyester imide (PEI) polymer having an acid value of ≥10 mg KOH/g;
(b) a crosslinker comprising a hydroxyalkyl amide, a hydroxyalkyl urea and/or a carbodiimide;
wherein the coating composition is substantially free of bisphenol A (BPA), bisphenol F (BPF), bisphenol A diglycidyl ether (BADGE) and bisphenol F diglycidyl ether (BFDGE). Features not explicitly claimed (e.g., OH values of 5 mg KOH/g or less; etc.) are known in or obvious in view of the prior art (see below).
WITT-SANSON - EP ‘622 and WITT-SANSON ET AL ‘758 each disclose a coating composition comprising
(a) 10-99.9 wt% (e.g., 60-99 wt%, etc.) of a polyester imide (PEI) polymer having:
• an acid value or acid number (AN) of ≥10 mg KOH/g (e.g., 10-150 mg KOH/g; 22-120 mg KOH/g; etc.);
• a hydroxyl value (OHV) which is “any suitable hydroxyl value (OHV)” (e.g., but not limited to, 10 to 300 mg KOH/g);
(b) 1-20 wt% of an acid-reactive crosslinker operable to crosslink the acid functionality on the polyester imide polymer (e.g., hydroxy (alkyl) amide resins, such as β-hydroxy (alkyl) amide resins; hydroxy(alkyl) urea resins; carbodiimide resins; oxazolines; hydroxy-functional silicone resins; etc.);
wherein the coating composition is substantially free of bisphenol A (BPA), bisphenol F (BPF), bisphenol A diglycidyl ether (BADGE) and bisphenol F diglycidyl ether (BFDGE). The coating compositions can be liquid coating compositions applied to substrates (e.g., metals such as steel, tinplate, tin-free steel, aluminum, etc.) to form coated articles or packaging materials (e.g., food and/or beverage cans; containers for aerosol applications, such as monobloc aerosol cans and/or tubes; etc.). (WITT-SANSON - EP ‘622 entire document, e.g., paragraph 0002-0005, 0007, 0053, 0057, 0073-0076, 0078-0082, 0086-0088, 0161-0163, 0180, 0187, etc.) (see corresponding portions of WITT-SANSON ET AL ‘758)
KAPLAN ET AL ‘234 discloses that it is well known in the art to utilize carboxyl-functional polyester-type resins with acid values of 15-100 mg KOH/g and OH values of at most 10 mg KOH/g in combination with hydroxy alkyl amide crosslinking agents in curable coating compositions in order to produce coatings for substrates (e.g., metals, etc.). (line 55, col. 2 to line 2, col. 3; etc.)
MARAL ET AL ‘120 discloses that it is well known in the art to utilize polyester-type resins with “any suitable gross hydroxyl value (OHV)” -- e.g., an OH value of about 0 to 20 mg KOH/g -- as the resin component of a curable coating compositions (e.g., solvent-based liquid compositions) which are substantially free of BPA, BPF, BADGE and BFDGE in order to produce coatings for substrates (e.g., metals, etc.) which are safe for food contact and are free of potentially unsafe bisphenol-type compounds, particularly use in food or beverage packaging. (paragraph 0001-0003, 0039, 0076-0080, 0090, etc.)
Regarding claims 1-11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known carboxy-functional PEI resin with: (i) acid values of at least 10 mg KOH/g (e.g., acid values of 15-100 mg KOH/g as suggested in KAPLAN ET AL ‘234); and (ii) OH values which are “any suitable hydroxyl value” (as suggested in WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758), such as very low OH values of less than 10 mg KOH/g (as suggested in KAPLAN ET AL ‘234) and as low as 0 mg KOH/g (as suggested in MARAL ET AL ‘120); as the PEI resin component (a) in the coatings claimed in U.S. Patent No. 12,319,831 in order to avoid undesirable and/or competing side-reactions (e.g., etherification, etc.) and/or steric interference (e.g., blocking of acid groups intended to be reactive with acid-reactive crosslinkers, etc.) caused by large amounts of hydroxyl groups in polyester-type resins in curable coatings.
Further regarding claims 4-6, one of ordinary skill would have used: (a) known amounts of PEI resin; (b) known types and amounts of crosslinkers; as disclosed in WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758 in the coating composition claimed in U.S. Patent No. 12,319,831.
Regarding claim 7, one of ordinary skill in the art would have utilized the coating composition claimed in U.S. Patent No. 12,319,831 in conventional coating composition formulations (e.g., liquid coating compositions, as suggested in WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758).
Regarding claim 8, one of ordinary skill in the art would have applied the coating composition claimed in U.S. Patent No. 12,319,831 to conventional substrates (e.g., metals, as suggested in WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758) used for food and/or beverage packaging or monobloc aerosol cans and/or tubes.
Regarding WITT-SANSON ET AL ‘758, Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Claim Rejections - 35 USC § 103 (AIA )
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.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• EP 3 348 622 A1 (WITT-SANSON - EP ‘622) or WITT-SANSON ET AL (US 2020/0377758),
in view of KAPLAN ET AL (US 6,313,234),
in view of MARAL ET AL (US 2018/0142120).
WITT-SANSON - EP ‘622 and WITT-SANSON ET AL ‘758 each disclose a coating composition comprising
(a) 10-99.9 wt% (e.g., 60-99 wt%, etc.) of a polyester imide (PEI) polymer having:
• an acid value or acid number (AN) of ≥10 mg KOH/g (e.g., 10-150 mg KOH/g; 22-120 mg KOH/g; etc.);
• a hydroxyl value (OHV) which is “any suitable hydroxyl value” (e.g., but not limited to, 10 to 300 mg KOH/g);
(b) 1-20 wt% of an acid-reactive crosslinker operable to crosslink the acid functionality on the polyester imide polymer (e.g., hydroxy (alkyl) amide resins, such as β-hydroxy (alkyl) amide resins; hydroxy(alkyl) urea resins; carbodiimide resins; oxazolines; hydroxy-functional silicone resins; etc.);
wherein the coating composition is substantially free of bisphenol A (BPA), bisphenol F (BPF), bisphenol A diglycidyl ether (BADGE) and bisphenol F diglycidyl ether (BFDGE). The coating compositions can be liquid coating compositions, wherein the coating compositions are applied to substrates (e.g., metals such as steel, tinplate, tin-free steel, aluminum, etc.) to form coated articles or packaging materials (e.g., food and/or beverage cans; containers for aerosol applications, such as monobloc aerosol cans and/or tubes; etc.). (WITT-SANSON - EP ‘622 entire document, e.g., paragraph 0002-0005, 0007, 0053, 0057, 0073-0076, 0078-0082, 0086-0088, 0161-0163, 0180, 0187, etc.) (see corresponding portions of WITT-SANSON ET AL ‘758) However, the reference does not specifically mention polyester-type resin with OH values of 5 mg KOH/g or less.
KAPLAN ET AL ‘234 discloses that it is well known in the art to utilize carboxyl-functional polyester-type resins with acid values of 15-100 mg KOH/g and OH values of at most 10 mg KOH/g in combination with hydroxy alkyl amide crosslinking agents in curable coating compositions in order to produce coatings for substrates (e.g., metals, etc.). (line 55, col. 2 to line 2, col. 3; etc.)
MARAL ET AL ‘120 discloses that it is well known in the art to utilize polyester-type resins with “any suitable gross hydroxyl value” -- e.g., an OH value of about 0 to 20 mg KOH/g -- as the resin component of a curable coating compositions (e.g., solvent-based liquid compositions) which are substantially free of BPA, BPF, BADGE and BFDGE in order to produce coatings for substrates (e.g., metals, etc.) which are safe for food contact and are free of potentially unsafe bisphenol-type compounds, particularly for use in food or beverage packaging. (paragraph 0001-0003, 0039, 0076-0080, 0090, etc.)
Regarding claims 1-11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known carboxy-functional PEI resin with: (i) acid values of at least 10 mg KOH/g (e.g., acid values of 15-100 mg KOH/g as suggested in KAPLAN ET AL ‘234); and (ii) OH values which are “any suitable hydroxyl value” (as disclosed in WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758) such as very low OH values of less than 10 mg KOH/g (as suggested in KAPLAN ET AL ‘234) and as low as 0 mg KOH/g (as suggested in MARAL ET AL ‘120); as the PEI resin component (a) used in combination with an acid-reactive crosslinker (b) in the coating compositions of WITT-SANSON - EP ‘622 or WITT-SANSON ET AL ‘758 in order to reduce undesirable and/or competing side-reactions (e.g., etherification, etc.) and/or steric interference (e.g., blocking of acid groups intended to be reactive with acid-reactive crosslinkers, etc.) caused by large amounts of hydroxyl groups in polyester-type resins in curable coatings.
Regarding WITT-SANSON ET AL ‘758, Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HOPPE ET AL (US 5,741,602) disclose curable coatings comprising acid-functional polyester-type resins with low OH values.
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March 7, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787