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 .
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.
Claims 18-34 are rejected under 35 U.S.C. 103 as being unpatentable over Moens (EP 2325229 A1).
In paragraph 51 Moens discloses a polyester which can be a hydroxyl-functional polyester and comprises units derived from terephthalic and/or isophthalic acid, which are dicarboxylic acids meeting the limitations of (A1) of claim 18, linear chain dicarboxylic acids, also meeting the limitations of (A1) of claim 18, ethylene glycol, meeting the limitations of (B3) of claim 18, dianhydrohexitol, ethylene glycol, and moieties of one or more other polyols. In paragraph 61 Moens discloses that glycerol, meeting the limitations of (B1) of claim 18, is a preferred other polyol. In paragraph 59 Moens discloses that isosorbide, meeting the limitations of (B2) of claim 18 where the compound has structure (B2a) and where n and m are both 0, is the most preferred dianhydrohexitol.
The linear chain dicarboxylic acid of Moens is an aliphatic compound meeting the limitations of (A1) of claim 19. Glycerol carries three OH groups and no COOH group and therefore meets the limitations of (B1) of claim 20. The isosorbide of Moens meets the limitations of (B2) of claim 21, noting that since both m and n are 0, the isosorbide possesses the claimed structure for all R1 and R2 groups.
In paragraph 62 Moens discloses that the hydroxy-functional polyesters have a hydroxyl number of 10 to 310 mg KOH/g, overlapping the range recited in claim 25, and a similar acid value, overlapping the range recited in claim 26. In paragraph 50 Moens discloses that the polyesters more preferably have a number average molecular weight of 750 to 8500, overlapping the range recited in claim 27, and implying a molecular weight range at least overlapping the range recited in claim 28, since the polyesters would have to have an unrealistically high polydispersity of greater than 20 (or even higher if the broader preferred number average molecular weight range of Moens were used) in order for the weight average molecular weight range of the polyesters of Moens to not overlap the range recited in claim 28. In paragraph 87 Moens discloses that the polyester can be reacted with (meth)acrylic acid in an organic solvent; the reaction mixture therefore meets the limitations of claim 29.
In paragraph 102 Moens discloses compositions comprising the polyester and at least one cross-linker capable of reacting with the polyester. In paragraphs 103 and 107-108 Moens discloses that the cross-linker can be a polyisocyanate, which will contain N=C=O or blocked N=C=O groups. Moens therefore discloses a composition comprising a polyester polyol meeting the limitations of component (K1) of claim 30, and a polyisocyanate meeting the limitations of component (K2) of claim 30. In paragraph 102 Moens discloses that the polyester polyol (hydroxyl-functional polyester) can be used in combination with a differently-functionalized polyester, meeting the limitations of component (ii) of component (K1) of claim 30, including a (meth)acryloyl-functional polyester, meeting the limitations of the polymer of claim 31. In paragraph 111 Moens discloses that the (meth)acryloyl-functional polyester can be formulated in combination with at least one photo-initiator and photo-activator, and in paragraphs 114-115 Moens discloses that the photo-initiator and photo-activator can be compounds such as benzaldehyde, tributylamine, and diethylamine, which are effective as organic solvents. The composition of Moens therefore meets the limitations of the “organic solvent-based” composition of claims 30-31, noting that the “organic solvent-based” does not imply any specific concentration of the organic solvent. In paragraphs 121-125 Moens discloses that the composition can comprise additives and pigments, as recited in claim 32, and in paragraph 69 Moens discloses that a catalyst can be added to the polyester reaction mixture near the end of the polyesterification, in order to accelerate crosslinking during curing. The polyester in the composition of Moens therefore meets the limitations of claim 32.
In paragraphs 126-132 and 158-162 (including Table 1), Moens discloses substrates coated with the composition, as recited in claim 33, and which will have a coating layer formed from the composition, as recited in claim 34.
The differences between Moens and the currently presented claims are:
i) Moens does not specifically disclose the molar ratio of glycerol OH groups to the total OH groups from glycerol, isosorbide, and ethylene glycol. This relates to claim 18 and its dependent claims.
ii) Moens does not specifically disclose the ratio of OH groups from components A and B to the ratio of COOH groups from component A. This relates to claim 24.
iii) Some of the ranges of Moens overlap or encompass the claimed ranges rather than falling within them.
With respect to i), In paragraph 51 Moens discloses that the polyester comprises 0 to 40% by weight of the glycerol (other polyol), 5 to 40% by weight of the isosorbide (dianhydrohexitol), and 5 to 35% by weight of ethylene glycol. The molecular weight of glycerol is 92.09, the molecular weight of isosorbide is 146.14, and the molecular weight of ethylene glycol is 62.07. The maximum proportion of OH groups derived from glycerol is therefore (40 / 92.17 * 3) / [(40 / 92.17 *3) + (5 / 146.14 * 2) + (5 / 62.07 * 2)], which equals 85%. The molar ratio of OH groups from glycerol to the total amount of OH groups from glycerol, isosorbide, and ethylene glycol is therefore 0 to 85%, overlapping the range recited in claims 18 and 22 and encompassing the range recited in claim 23.
With respect to ii), Moens discloses in paragraph 51 that the moieties derived from dicarboxylic acid make up at least 15% by weight of the polyester, and less than 90%. As the dicarboxylic acids carry 2 COOH groups and no OH groups, the molecular weight of terephthalic or isophthalic acid is about 166.14, and the molecular weight of succinic acid (disclosed in paragraph 60 of Moens as a preferred linear chain dicarboxylic acid) is about 118.09, the maximum mole ratio of OH to COOH groups in the polyester of Moens is [(40 / 92.17 *3) + (10 / 146.14 * 2) + (35 / 62.07 * 2)] / [(10 / 166.14 * 2) + (5 / 118.09 * 2)], which equals about 12.5. If the preferred concentration ranges in claims 52-56 are used (20% glycerol, 30% ethylene glycol, 10% isosorbide, 30% isophthalic/terephthalic acid, 10% succinic acid), this maximum OH/COOH ratio reduces to about 3.3. The minimum OH/COOH ratio is clearly less than 1.05, since the acidic moieties can be the predominant components of the polyester. The range of OH/COOH ratios in the polyester of Moens therefore encompasses the range recited in claim 24.
With respect to iii), see MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 18-34 are rendered obvious by Moens.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The International Search Report cites two additional X references. Meckel-Jonas (EP 3660072 A1) discloses polyester polyols containing units based on triglycerides, which are esters of glycerol, and therefore will not have at least three OH groups. Lindekens (U.S. PG Pub. No. 2014/0364530) is directed to (meth)acrylated polyesters.
Beccaria (U.S. Pat. No. 9,475,956) discloses in column 3 lines 4-27 polyester resins formed from a mixture of components including isosorbide, aliphatic triol, and diacids.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771