DETAILED ACTION
Summary
This is a non-final office action for application 18/263,383 filed on 28 July 2023. The preliminary amendment filed on the same date is acknowledged.
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 .
Specification
Table 12 and Table 13 are displayed on top of each other such that the bottom six rows of one table are on top of the top six rows of the other table rendering these six rows unreadable in each table. Please resolve this issue so that each table can be made fully readable.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: The label “H” is not mentioned specification (see cur spec: [13]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 14, 20 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 14, 20 and 22, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 14 recites “such as” three times while Claim 20 and Claim 22 each recited “such as” once.
Regarding Claim 14, the phrase "for example", recited twice in the claim, renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Similarly, Claim 14 also thrice recites “including” which is similar indefinite language. It is not clear whether the specific diols listed after each instance of “including” is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1, 3, 5, 9-11, 14, 22, 92-96, 98 and 100 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PROUVOST (US-9187213-B2).
The PROUVOST (US-9187213-B2) reference is in the IDS dated 28 July 2023.
Regarding Claim 1, PROUVOST teaches a coating composition including a film-forming amount copolyester resin (Abstract). PROUVOST teaches that its coating composition may contain a vinyl polymer, preferably an acrylic copolymer having a glycidyl group (which is an epoxide group) (Col 13: 13-17) or an acrylic copolymer having a hydroxyl group (Col 13: 61-63). This satisfies the (i) requirement of the claim of an acrylic agent comprising an epoxide or hydroxy functional group. PROUVOST exemplifies a coating composition containing a polyester and an acrylic resin containing glycidyl methacrylate (Table 3). PROUVOST does not characterize its acrylic resin as a feather reducing agent, but it is presumed to serve the function as satisfies the structural limitations of the claim. Also, note that articles with a coating containing polyester resin and an acrylic resin containing glycidyl methacrylate are tested for feathering obtaining a low amount of 0.1 mm (Table 4, composition in Table 3).
Regarding Claim 3, PROUVOST teaches packaging articles, for example food and beverage cans having a novel coating composition (Abstract). PROUVOST exemplifies coating an aluminum panel having a conventional chrome pre-treatment (Col 24: 36-38).
PROUVOST teaches a coating composition including a film-forming amount copolyester resin (Abstract). PROUVOST teaches that its coating composition may contain a vinyl polymer, preferably an acrylic copolymer having a glycidyl group (which is an epoxide group) (Col 13: 13-17) or an acrylic copolymer having a hydroxyl group (Col 13: 61-63). This satisfies the (i) requirement of the claim of an acrylic agent comprising an epoxide or hydroxy functional group. PROUVOST exemplifies a coating composition containing a polyester and an acrylic resin containing glycidyl methacrylate (Table 3). PROUVOST does not characterize its acrylic resin as a feather reducing agent, but it is presumed to serve the function as satisfies the structural limitations of the claim. Also, note that articles with a coating containing polyester resin and an acrylic resin containing glycidyl methacrylate are tested for feathering obtaining a low amount of 0.1 mm (Table 4, composition in Table 3).
Regarding Claim 5, PROUVOST teaches packaging articles, for example food and beverage cans having a novel coating composition (Abstract). PROUVOST exemplifies coating an aluminum panel having a conventional chrome pre-treatment (Col 24: 36-38). PROUVOST teaches forming a cured beverage can from its coated article (Col 24: 59-67; Claim 1).
PROUVOST teaches a coating composition including a film-forming amount copolyester resin (Abstract). PROUVOST teaches that its coating composition may contain a vinyl polymer, preferably an acrylic copolymer having a glycidyl group (which is an epoxide group) (Col 13: 13-17) or an acrylic copolymer having a hydroxyl group (Col 13: 61-63). This satisfies the (i) requirement of the claim of an acrylic agent comprising an epoxide or hydroxy functional group. PROUVOST exemplifies a coating composition containing a polyester and an acrylic resin containing glycidyl methacrylate (Table 3). PROUVOST does not characterize its acrylic resin as a feather reducing agent, but it is presumed to serve the function as satisfies the structural limitations of the claim. Also, note that articles with a coating containing polyester resin and an acrylic resin containing glycidyl methacrylate are tested for feathering obtaining a low amount of 0.1 mm (Table 4, composition in Table 3).
Regarding Claim 9, PROUVOST teaches the invention of Claim 1. PROUVOST generally teaches that suitable carriers of its composition can be organic solvents (Col 15:25). PROUVOST exemplifies SOLVESSO 100 aromatic hydrocarbon solvent and the DOWANOL PMA solvent (Table 3).
Regarding Claim 10, PROUVOST teaches the invention of Claim 1. PROUVOST teaches that polyester molecules of its invention are typically formed form one or more polyacids and one or more polyols (Col 5: 43-45). PROUVOST exemplifies polyesters formed from polyacids and polyols (Table 1; Table 2).
Regarding Claim 11, PROUVOST teaches the invention of Claim 10. PROUVOST teaches that suitable polyacids include adipic, azelaic, cyclohexane dicarboxylic, fumaric, isophthalic, maleic, phthalic, sebacic, succinic, terephthalic acids, anhydrides and ester variants thereof, and mixtures thereof. (Col 5: 53-56). PROUVOST exemplifies terephthalic and isophthalic acid (Table 1; Table 2) and sebacic acid (Table 2).
Regarding Claim 14, PROUVOST teaches the invention of Claim 1. PROUVOST teaches many of the recited polyol molecules (Col 5: 57-65). PROUVOST exemplifies ethylene glycol, neopentyl glycol, trimethylol propane, propylene glycol (Table 1; Table 2) and cyclohexane dimethanol (Table 2).
Regarding Claim 22, PROUVOST teaches the invention of Claim 1. PROUVOST generally teaches that its coating compositions contain at least about 60 wt% of the polyester polymer based on the total weight of resin solids present in its coating composition (Col 12: 14-22) which satisfies the requirement that the polyester is 40% or more.
Regarding Claim 92, PROUVOST teaches the invention of Claim 1. PROUVOST exemplifies 0.1 mm feathering which satisfies the recited limitation of less than or equal to 0.8 mm.
Regarding Claim 93, PROUVOST teaches the invention of Claim 1. PROUVOST performs a similar wedge bend test as is recited (Col 21: 15-45) where PROUVOST teaches that a successful test is 70%, meaning that it has a failure section of less than 30% of a 120 mm sample, or 36 mm. (Col 15:38-45). PROUVOST exemplifies coated articles with a 100% wedge bend test (Col 25: Table 6), which corresponds to 0% failure, or 0 mm. The test method is not identical, but 0 mm under the test taught by PROUVOST is deemed as satisfying to having a wedge bend of less than or equal to 30 mm as recited using the test disclosed in the instant specification.
Regarding Claim 94, PROUVOST teaches the invention of Claim 1. PROUVOST generally teaches that its compositions have a blush rating of 7 or more, optimally 9 or above (Col 21: 4-13). PROUVOST exemplifies blush values of 8 to 10 (Table 4). This satisfies the requirement that the blush is 4 or more.
Regarding Claim 95, PROUVOST teaches the invention of Claim 1. PROUVOST performs the same ASTM D 3359 test as used in the instant examples (Col 20: 59-68; cur spec: [333]) reporting on a 0-10 scale which corresponds to the percentage divided by 10 (Col 20: 64-68). PROUVOST generally teaches adhesion ratings of at least 8 (or 80%) (Col 21: 1-3). PROUVOST exemplifies coatings with adhesion of 10 (or 100%)(Table 4) which satisfies the recited requirement that the adhesion is 90% or more.
Regarding Claim 96, PROUVOST teaches the invention of Claim 1 where PROUVOST teaches that its coating composition may contain a vinyl polymer, preferably an acrylic copolymer having a glycidyl group (which is an epoxide group) (Col 13: 13-17) and exemplifies an acrylic resin containing glycidyl methacrylate (Table 3). The presence of pendant epoxy groups in the glycidyl methacrylate units make this an epoxy resin.
Regarding Claim 98, PROUVOST teaches the invention of Claim 1. PROUVOST teaches that its coating composition further comprises a crosslinking resin (Col 12: 23-30). PROUVOST exemplifies crosslinking resins (Table 3).
Regarding Claim 100, PROUVOST teaches the invention of Claim 5 where PROUVOST teaches a food or beverage container (Abstract; Claim 1).
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 8 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over PROUVOST (US-9187213-B2).
Regarding Claim 8, PROUVOST teaches the invention of Claim 1 above. PROUVOST teaches that suitable carriers of its coating composition include water (Col 15: 25). PROUVOST further teaches that if water-dispersibility is desired that the polyester polymer of its present invention may be prepared as an aqueous dispersion or solution (Col 11: 9-16). PROUVOST does not exemplify an aqueous coating composition, but it would be obvious to one of ordinary skill in the art to modify the examples of PROUVOST and formulate is coating composition as an aqueous coating composition based on the teachings of the specification.
Regarding Claim 17, PROUVOST teaches the invention of Claim 1 above. PROUVOST further teaches that it polyester resin may have unsaturated monomers grafted into the polyester to form an acrylic-polyester copolymer (Col 11: 48-53). PROUVOST does not exemplify a polyester-acrylic copolymer but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of PROUVOST and use a polyester-acrylic copolymer as its binder material based on the teachings of the specification.
Regarding Claims 18-19, PROUVOST teaches the invention of Claim 17. PROUVOST teaches that polyester molecules of its invention are typically formed form one or more polyacids and one or more polyols (Col 5: 43-45) including the polyacids fumaric acid and maleic acid and anhydrides of (Col 5: 53-55). PROUVOST teaches grafting acrylic monomers onto the polyester by way of inclusion of unsaturated monomers in the polyester such as maleic anhydride. This satisfies Claim 18 and the specific teaching of maleic anhydride satisfies Claim 19.
Claim 20 are rejected under 35 U.S.C. 103 as being unpatentable over PROUVOST (US-9187213-B2) in view of BIRIATINSKY (US-20050196629-A1).
Regarding Claim 20, modified PROUVOST teaches the invention of Claim 18 above where PROUVOST teaches a grafted polyester-acrylic copolymer. PROUVOST does not teach specific acrylic monomers for its polyester-acrylic copolymer. PROUVOST (Col 11: 56) cites BIRIATINSKY for examples of techniques to form the polyester-acrylic copolymer of its invention. BIRIATINSKY teaches coatings for containers comprised of a copolymer that is a reaction product of a polyester formed from polyacid and a polyhydric alcohol and at least one (meth)acrylic acid ester and an ethylenically unsaturated acid (Abstract). BIRIATINSKY teaches many (meth)acrylic acid esters that are recited by the claim and may be used in combination ([0056]) and exemplifies ethyl acrylate and acrylic acid ([0197]). It would be obvious to further modify the invention of PROUVOST with the teachings of BIRIATINSKY and one or more of the (meth)acrylic acid esters taught by BIRIATINSKY. One would be motivated to do so because PROUVOST cites BIRIATINSKY for examples of how to produce its polyester-acrylic copolymer.
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.
Claim 3, 5 and 100 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 23 of copending Application No. 18/263,478 in view of PROUVOST (US-9187213-B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims teach all the limitation of the instant claims in view of PROUVOST. The mappings between the instant claims and the copending claims are as follows.
Regarding Claim 3, Copending Claim 23, which includes the limitations of copending Claim 1, recites a coated substrate comprising a polymeric binder and the same selection of six feather reducing agents as is recited in instant claim 3. The copending claims do not recite that the polymer binder is a polyester binder material. PROUVOST, in an invention of a coating composition for food and beverage cans (Abstract) which contains an acrylic resin with epoxy groups (Table 3) and has low feathering (Table 4) teaches that its binder material is a polyester resin (Abstract). It would be obvious to modify the copending claims with the teachings of PROUVOST and use a polyester resin as its binder for the purpose of obtaining low feathering.
Regarding Claim 5, Copending Claim 23, which includes the limitations of copending Claim 1, recites a coated substrate comprising a polymeric binder and the same selection of six feather reducing agents as is recited in instant claim 5. The copending claims do not recite that the polymer binder is a polyester binder material or that the coated substrate is a coated package. PROUVOST, in an invention of a coating composition for packaging articles such as food and beverage cans (Abstract) which contains an acrylic resin with epoxy groups (Table 3) and has low feathering (Table 4) teaches that its binder material is a polyester resin (Abstract). It would be obvious to modify the copending claims with the teachings of PROUVOST and use a polyester resin as its binder for the purpose of obtaining low feathering and to use a packaging article as the coatings substrate for the purpose of creating a food or beverage can.
Regarding Claim 100, Instant Claim 100 adds a limitation to Instant claim 5 that the package is a food and/or beverage package. In the rejection of Claim 5, PROUVOST makes obvious a package for the coating substrate for the purpose of creating a food or beverage can (Abstract).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764