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 .
Response to Preliminary Claim Amendment filed 06/07/2023
2. New claim 16 was added, which is supported at paragraph [0044] of applicants’ published application, i.e., US PG PUB 2024/0059820.
Thus, no new matter is present at this time.
Claim Objections
3. Claims 1 and 14 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to add the phrase “of the alkyl (meth)acrylate monomer” after the phrases “wherein the alkyl” recited in lines 5 and 7 of claim 1.
As to Claim 14: The applicants are advised to replace the claimed phrase “A coated substrate coated” with the new phrase “A substrate coated”.
The applicants are also advised to delete the claimed “any of”.
Appropriate corrections are required.
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.
5. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Larson et al. (WO 2015/1283611; utilized US 2016/0355626 as its Equivalent) in view of Deubel et al. (US 2014/0322786).
It is noted that Larson et al. (WO 2015/128361) is used for date purposes only, and all paragraph numbers cited below refer to its Equivalent, namely US 2016/0355626.
The broadest claims are directed to a thermosetting epoxy functional (meth)acrylate resin comprising, as copolymerized monomers: i) from about 10 wt. % to about 40 wt. % of an epoxy functional unsaturated monomer; ii) from about 10 wt. % to about 20 wt. % of an alkyl (meth)acrylate monomer, wherein the alkyl comprises a minimum of 6 carbon atoms, iii) from about 30 wt. % to about 70 wt. % of an alkyl (meth)acrylate monomer wherein the alkyl comprises 1 to 5 carbon atoms, iv) from about 0.5 wt. % to 40 wt. of a dialkyl vinylphosphonate monomer, v) from about 1 wt. % to about 50 wt. % of a vinyl aromatic monomer, and vi) from about 0 wt % to 0.4 wt % of a phosphonic acid monomer, wherein each monomer wt. % is based on the total weight of copolymerized monomers in the resin.
The claimed “0-0.4 wt% of a phosphonic acid monomer” is interpreted as including zero amount of phosphonic acid monomer. Thus, the claim does not require the presence of a phosphonic acid monomer.
As to Claims 1-16: Larson et al. disclose a thermosetting epoxy functional acrylic resin (Paragraph [0001]). According to Larsen et al., the term “(meth)acrylate” refers to either acrylate or methacrylate and the term “(meth)acrylic” refers to either acrylic or methacrylic (Paragraph [0126]). This resin taught by Larson et al. comprises, as copolymerized monomers, 10-40 wt.% of one or more epoxy functional unsaturated monomer, e.g., glycidyl (meth)acrylate, 10-20 wt% of one or more hydrophobic acrylic monomers including bicyclic cycloalkyl (meth)acrylates, such as isobornyl (meth)acrylates (which according to present claims 4 and 5 correspond to the claimed alkyl (meth)acrylate monomer wherein its alkyl comprises a minimum of 6 carbon atoms (ii)), 50-70 wt.% of at least one nonionic monomer selected from butyl methacrylate or methyl methacrylate (which corresponds to the claimed alkyl (methacrylate) monomer wherein the alkyl comprises 1-5 carbon atoms and also overlaps with the claimed 30-70 wt% of the alkyl (meth)acrylate monomer), and additionally 3-12 wt.% of a vinyl aromatic monomer, e.g., styrene (encompassed by the claimed 1-50 wt% of a vinyl aromatic monomer) (Paragraphs [0009], [0018], [0031]-[0032], and see also claim 7 of Larsen et al.). Larson et al. also disclose a powder coating composition comprising the above described thermosetting epoxy functional acrylic resin, including two different thermosetting epoxy functional acrylate resins, and a crosslinker capable of crosslinking the resin, wherein the crosslinker may include an organic dicarboxylic acid, anhydride, or an adduct thereof with a polyester or a polyisocyanate (Paragraphs [0011]-[0025] and [0046]). Larson et al. further disclose that the powder coating composition may additionally comprise one or more adjuvants chosen from a hydrophobic submicron particle, an adhesion promoter, a light stabilizer, and an ultraviolet (UV) absorber (Paragraphs [0012] and [0050]). Moreover, Larson et al. disclose a coated substrate coated with the powder coating composition, wherein the substrate is aluminum or a forged alloy (Paragraphs [0008] and [0010]).
While Larson et al. disclose addition of a phosphorus acid functional monomer including phosphonate monomers in their resin (Paragraphs [0042] and [0043]), they do not specify these monomers as including the dialkyl vinylphosphonate monomer recited in claims 1-3.
Nevertheless, Deubel et al. disclose the addition of at least 10 wt.% of dialkyl vinylphosphonate monomers including those containing dimethylphosphonate monomer (which overlaps with the claimed 0.5-40 wt% of a dialkyl vinylphosphonate monomer) to prepare advantageous copolymers useful for coating substrates (Paragraphs [0023]-[0024], [0073] and [0095]). See also MPEP section 2144.95 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed amount of the dialkyl vinylphosphonate monomer including those containing dimethylphosphonate monomer taught by Deubel et al. as one of the phosphorus acid functional monomers in the copolymerized monomers of the resin discussed in Larson et al., with a reasonable expectation of successfully using the same for coating substrates.
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.
6. Claims 1-8 and 10-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,834,634 (hereinafter referred to as “the patent”) in view of Deubel et al. (US 2014/0322786).
The claims of the patent and the present application are directed to an epoxy functional acrylic (methacrylate) resin. The claims of the patent also recite that its resin comprises as copolymerized monomers, i) from about 10 wt. % to about 40 wt. % of one or more epoxy functional unsaturated monomers (corresponding to presently claimed epoxy functional unsaturated monomer (i)); ii) from about 10 wt. % to about 20 wt. % of one or more hydrophobic acrylic monomers including bicycloalkyl (meth)acrylate such as isobornyl (meth)acrylate (corresponding to the presently claimed alkyl (meth)acrylate monomer wherein the alkyl comprises a minimum of 6 carbon atoms (ii)), and iii) from greater than 50 wt. % to about 75 wt. % of at least one nonionic comonomer that is different from the hydrophobic acrylic monomers ii) including butyl methacrylate or methyl methacrylate (corresponding to the presently claimed alkyl (meth)acrylate wherein the alkyl comprises 1-5 carbon atoms (iii) and overlaps with the presently claimed 30-70 wt.% of the same), and 0.5-12 wt.% of a vinyl aromatic monomer, such as styrene (encompassed by the presently claimed 1-50 wt.% of a vinyl aromatic monomer). The claims of the patent and the present application further recite a power coating composition comprising the epoxy functional acrylic (methacrylate) resin including different epoxy functional acrylic (methacrylate) resins, and a crosslinker capable of crosslinking the resin, wherein the crosslinker is an organic dicarboxylic acid or anhydride, or an adduct thereof with a polyester or a polyisocyanate. Moreover, the claims of the patent and the present application recite that their powder coating composition additionally comprises one or more adjuvants selected from the group consisting of a hydrophobic submicron particle, an adhesion promoter, a light stabilizer, an ultraviolet (UV) absorber and a combination thereof. Lastly, the claims of the present application and the present application recite a coated substrate coated with a powder coating composition, said powder coating composition comprising the thermosetting epoxy functional (meth)acrylate resin and a crosslinker for the resin, wherein the substrate is aluminum or a forged alloy.
However, the claims of the patent do not specifically mention the addition a dialkyl vinylphosphonate monomer including those comprising a dimethylphosphonate monomer and its particular amount as recited in claims 1-3 of the present application.
Nevertheless, Deubel et al. disclose the addition of at least 10 wt.% of dialkyl vinylphosphonate monomers including those containing dimethylphosphonate monomer (which overlaps with the presently claimed 0.5-40 wt% of a dialkyl vinylphosphonate monomer) to prepare advantageous copolymers useful for coating substrates (Paragraphs [0023]-[0024], [0073] and [0095]). See also MPEP section 2144.95 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amount of the dialkyl vinylphosphonate monomer including those containing dimethylphosphonate monomer taught by Deubel et al. in the copolymerized monomers of the resin recited in the claims of the patent, with a reasonable expectation of successfully using the same for coating substrates.
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)-270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 06/07/2023.