DETAILED ACTION
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 .
This communication responds to the application and amended claim set filed July 14, 2023. Claims 1-29 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-21, in the reply filed on April 23, 2026 is acknowledged. Claims 1-21 are under examination.
Drawings
The drawings are objected to because the single drawing is labelled as “FIGURE 1 ” “Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered.” (37 CFR 1.84(u)(1).) The appropriate designation is “FIGURE” or “Figure.”
Claim Objections
Claim 8-15 are objected to because of the following informalities:
In claims 8-15, line 1, it is suggested that the word “The waterborne composition” be replaced with “The waterborne dispersion” to ensure consistency. Appropriate correction is required.
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.
Claims 1-3 and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108559090 A; full English Machine translation incorporated herewith) in view of Craun et al. (US Patent No. 5342864 A as listed on the IDS dated 7/14/2023).
Regarding claim 1, Wang et al. teach a method for preparing a waterborne dispersion of an epoxy-modified acrylic-resin [0034], wherein the resin is functionalized as follows:
i) reacting an epoxy ester resin with an unsaturated fatty acid such as oleic acid, linoleic acid, etc. (claim 6) (which correspond to iii of second formed polymeric stage b) to obtain an epoxy ester resin (step 1 of claim 1),
ii) the modified epoxy resin react with a hydrophilic acrylic resin (step 2 and 3 of claim 1) containing acrylic monomers such as acrylic acid, methacrylic acid (which correspond to iv of third-formed polymeric stage c), methyl methacrylate, styrene, divinyl benzene (which correspond to v of third-formed polymeric stage c), diacetone acrylamide (which correspond to vi of third-formed polymeric stage c) (claim 6, [0017], [0043], [0063]) ; followed by the addition of adipamide hydrazine (adipic dihydrazide), catalyst and solvent. After the reaction was completed, a water soluble base such as triethylamine was added to neutralize ([0012], [0018], claim 7) and deionized water ([0034], step 3 of claim 1). Although Wang et al. do not refer to functionalized “particles”, it is noted that the process inherently lead to dispersed polymeric multistage diketone functionalized particles which are suspended in the aqueous medium. Wang et al. teach the waterborne dispersion is used as a paint film with good salt spray resistance, excellent hardness and adhesion, good water resistance and storage stability and greatly reduces the emission of VOC ([0034],[0036]).
Wang et al. are silent on the epoxy compound having at least two epoxy groups. Wang et al. are further silent on the first-formed polymeric stage as recited in the instant claim.
However, Craun et al. teach coating compositions containing aqueous dispersions of higher molecular weight epoxy resins produced by advancing the molecular weight of a low molecular weight diepoxide (col. 2:30-40) such as diglicidyl ether of bisphenol A (col.3:37, col. 6:27-28) with diphenol or bisphenol to produce an aqueous dispersed high molecular weight epoxy resin that can be further modified with ethylenic unsaturated monomers (abstract). Craun et al. further teach that it is preferred that excess molar equivalents of epichlorohydrin are reacted with bisphenol-A to produce epoxy resins where up to two moles of epichlorohydrin co-react with one mole of bisphenol-A to produce epoxide terminated, high molecular weight epoxy resin (col. 4:13-21), which implies the epoxy is in excess to maintain epoxide functionality in the high molecular weight epoxy for later crosslinking. Given that both references teach stable epoxy backbone aqueous dispersions for coatings that are focused on VOC reduction, therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the high molecular weight epoxy resin as taught by Craun et al. in place of the conventional epoxy resin of Wang et al. with the expected result of improved stability and coating performance and VOC reduction (col. 2:50-60; col.3:18-21).
Regarding claim 2 and 3, Wang et al. in view of Craun et al. tach the polymeric functionalized particle as discussed in the rejection of claim 1, wherein the functionalized epoxy-acrylic resin is neutralized with an organic base, and under high-speed shear, an appropriate amount of deionized water is added to finally obtain a waterborne epoxy-modified acrylic resin (see rejection of claim 1 and [0022] of Wang et al. ). Wang et al. in view of Craun et al. are silent on the amounts of the components as recited in the instant claims.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of the polymeric multistage functionalized particles, the water-soluble base, the adipamide hydrazide, ADH and water to produce a aqueous dispersion with excellent stability, coating performance and reduced VOC ([0024]-[0026], [0036]). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of the epoxy compound, polyol, fatty acid, acrylic acid, styrene and the diacetone acrylamide to improve the physical and mechanical properties as well as high solids content and low viscosity and excellent coating performance so that the paint film has good salt spray resistance (>300h), excellent hardness and adhesion, good water resistance, and good storage stability ([0035]-[0036]).
Regarding claim 6, the limitation of the specific epoxy compound was discussed in the rejection of claim 1, wherein Wang et al. in view of Craun et al. teach the epoxy compound is diglycidyl ether of bisphenol A (DGEBPA)(col.3:52, col. 6:27-28), as required by the instant claim.
Regarding claim 7, Wang et al. in view of Craun et al. teach the waterborne dispersion as discussed in the rejection of claim 1, wherein the polyol is selected from bisphenol A, bisphenol F, bisphenol S (col.4:25-26).
Regarding claim 8, Wang et al. teach the fatty acid is one or more of oleic acid, linolenic acid, tung oil acid, among others ([0016], claim 5) as required by the instant claim.
Regarding claim 9, Wang et al. teach the acrylic resin includes acrylic acid and methacrylic acid, as water-soluble groups, which improve the hydrophilicity of the resin (claim 6,[0024]), as required by the instant claim.
Regarding claim 10, Wang et al. teach the acrylic resin includes methyl methacrylate and styrene, as hard monomers, that improve the hardness of the resin; butyl acrylate and lauryl acrylate, as soft monomers, that improve the flexibility of the resin and facilitate film formation [0024], as required by the instant claim.
Regarding claim 11, Wang et al. teach the waterborne dispersion comprises diacetone acrylamide, (claim 6, [0024]), as required by the instant claim.
Regarding claim 12, Wang et al. teach the waterborne dispersion comprises triethylamine, triethanolamine, N,N'-dimethylethanolamine as the water soluble base, (claim 7, [0024]), as required by the instant claim.
Regarding claim 13, Wang et al. teach the waterborne dispersion, wherein the pH is from 8-9 [0012], as required by the instant claim.
Regarding claim 14, Wang et al. teach the waterborne dispersion, wherein the component comprising a dihydrazide functionality is adipic acid dihydrazide (abstract) or adipamide hydrazine [0015], claims 1 and 5).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108559090 A; full English Machine translation incorporated herewith) in view of Craun et al. (US Patent No. 5342864 A) as set forth above for claims 1-3 and further in view of Harawaka et al. (JP2008013601 A2 as listed on the IDS dated 6/12/2025; English Machine translation provided by Applicant).
Regarding claim 4, Wang et al. in view of Craun et al. teach the water-borne dispersion of claim 1 as set forth above and it is incorporated herein by reference.
Wang et al. in view of Craun et al. are silent on the volume average particle size as recited by the instant claim.
However, Harawaka teaches a fatty acid-modified resin aqueous dispersion for forming a coating film comprising as constituent units an epoxy resin (a1 such as bisphenol A, bisphenol F, novolac type resins; a fatty acid (a2) such as castor oil, a cyclic acid anhydride (a3) and polymerizable unsaturated monomers (b) dispersed in an aqueous medium, wherein (b) includes acrylates, styrene, vinyl toluene (ethylenically unsaturated monomer not containing a carboxylic acid group), compounds having a carboxyl group such as maleic acid, crotonic acid, b-carboxyethyl acrylate, compounds having carbonyl groups such as diacetone acrylamide and combinations thereof (page 4). Harawaka teaches that the fatty acid-modified resin improves the production stability and storage stability of the aqueous dispersion by further including a basic substance (a4) as a constituent unit (page 5, first and second paragraph). Furthermore, the aqueous resin dispersion comprises a hydrazine derivative including adipic acid dihydrazide (paragraph 12, page 6), wherein the hydrazine groups react with carbonyl groups that contributes to the crosslinking. Harawaka et al. teach the average particle size of the dispersed particles is 500 nm or less, preferably from a range of 80 to 400 nm, more preferably 100 to 300 nm to improve the transparency of the formed coating film, water resistance, etc (page 6). It would have been obvious to one of ordinary skill in the art at the time of the invention to form an aqueous dispersion according to Wang et al. in view of Craun et al. having an average particle size of 100-300 nm, as Harawaka et al. demonstrate this range as being suitable for a similar waterborne dispersion. This represents the use of a suitable range of average particle size in a similar waterborne dispersion application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108559090 A; full English Machine translation incorporated herewith) in view of Craun et al. (US Patent No. 5342864 A) as set forth above for claims 1-3 and further in view of Pedersen et al. (US Patent No. 5830952 A as listed on the IDS dated 7/14/2023).
Regarding claim 5, Wang et al. teach the polymeric functionalized particles have a number average molecular weight (Mn) of 1500-60000 [0037].
Wang et al. in view of Craun et al. are silent on the weigh average molecular weight (Mw) as recited in the instant claim.
However, Pedersen et al. teach a coating composition comprising a water dispersible polymer, wherein the water-dispersible polymer is prepared from: (a) an epoxy compound having about two epoxy groups, such as an epoxy resin, (b) a linking compound having (i) conjugated carbon--carbon double bonds or a carbon--carbon triple bond and (ii) a moiety capable of reacting with an epoxy group, such as sorbic acid, and (c) acrylic monomers, at least a portion of which are capable of rendering the polymer water dispersible, such as acrylic acid, wherein the epoxy portion (a) of the polymer is covalently linked to the polymerized acrylic portion (c) by linking compound (b). The coating composition contains the water-dispersible polymer, a fugitive base to solubilize the polymer, a curing agent, and a carrier containing water (abstract, claims). Pedersen et al. further teach the water dispersible polymer has a weight average molecular weight (Mw) of about 35,000 to about 75,000 and preferably about 45,000 to about 65,000 and a number average molecular weight (Mn) of about 6,000 to about 25,000 (col. 7:58-67). It would have been obvious to one of ordinary skill in the art at the time of the invention to form a water-borne dispersion according to Wang et al. in view of Craun et al. having an average molecular weight of 35,000 to about 75,000, as Pedersen et al. demonstrate this range as being suitable for similar water-borne dispersions having Mn ranges that overlaps. This represents the use of a suitable range of average particle size in a similar water-borne dispersion application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108559090 A; full English Machine translation incorporated herewith) in view of Craun et al. (US Patent No. 5342864 A) as set forth above for claims 1-3 and further in view of Harawaka et al. (JP2008013601 A2) and Pedersen et al. (US Patent No. 5830952 A).
Regarding claim 15, Wang et al. in view of Craun et al. teach the water-borne dispersion of claim 1 as set forth above and it is incorporated herein by reference. As for the limitation of the specific epoxy compound, specific polyol, specific fatty acid, the specific iv) monomer, the specific v) monomer, the specific water soluble base and the specific dyhydrazide component, note that the discussion supra for claims 6-14 applies.
Wang et al. in view of Craun et al. are silent on the amounts of the components in the waterborne dispersion and the amounts of the components of the polymeric multi-stage diketone -functionalized particles as recited in the instant claims. Wang et al. in view of Craun et al. are further silent on the volume average particle size as recited by the instant claim. Furthermore, Wang et al. in view of Craun et al. are silent on the weigh average molecular weight (Mw) as recited in the instant claim.
Referring to the limitation of the loading amounts of the compositional components of the waterborne dispersion and the polymeric multi-stage diketone functionalized particles, note that the discussion supra for claims 2-3 presently applies. Referring to the limitation of the average particle size of the functionalized particles, note that the discussion supra for claim 4 presently applies. As for the limitation of the weight average molecular weight (Mw) of the polymeric multi-stage diketone functionalized particles, note that the discussion supra for claim 5 presently applies.
Claims 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108559090 A; full English Machine translation incorporated herewith) in view of Craun et al. (US Patent No. 5342864 A) as set forth above for claims 1-3, 6-14 and further in view of Betremieux et al. (US 2016-0289489 A1).
Regarding claim 16, Wang et al. in view of Craun et al. teach the water-borne dispersion of claim 1 as set forth above and it is incorporated herein by reference.
Wang et al. in view of Craun et al. are silent on the polymeric diketone-functionalized particles E as recited in the instant claim.
However, in the same field of endeavor Betremieux et al. teach an aqueous dispersion of a polymer made from multi-structured polymer particles for aqueous coatings comprising a core polymer phase P1 derived from the emulsion polymerization of a monomer composition M1, a second polymer phase P2 derived from the emulsion polymerization of a monomer composition M2 and a third outer polymer phase P3 derived from the emulsion polymerization of a monomer composition M3, wherein P1, P2 and P3 are derived, respectively, from said monomer compositions M1, M2 and M3, consisting of (meth)acrylic monomers or of mixtures of (meth)acrylic monomers with at least one vinyl aromatic monomer, wherein M1 comprises methyl methacrylate, butyl acrylate, TMPTA and methacrylic acid [0105]-[0112]; M2 comprises styrene, butyl acrylate, diacetone acrylamide, methyl acrylate [0113]-[0124]), M3 comprises methyl methacrylate, butyl acrylate, methacrylic acid, acrylic acid and diacetone acrylamide ([0125]-[0134]) (title, abstract, claims 1, 7,8, 12). Betremieux et al. offers the motivation of incorporating the multi-structured polymer particles due to its ability to improve film formation, cohesion, hardness, adhesion, wet abrasion, blocking resistance and imprint resistance of the coating film [0002]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the multi-structured polymer particles taught by Betremieux et al. on the waterborne dispersion of Wang et al. in view of Craun et al.
Regarding claim 17, Wang et al. in view of Craun et al. and further in view of Betremieux et al. are silent on the amounts of the components in the waterborne dispersion as recited in the instant claim.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of the polymeric multistage functionalized particles A and E, the water-soluble base, the adipamide hydrazide, ADH and water to produce a aqueous dispersion with excellent stability, coating performance and reduced VOC ([0024]-[0026], [0036]).
Regarding claim 18, Wang et al. in view of Craun et al. and further in view of Betremieux et al. teach 5-60 wt.% of polymer P1 (core), 40-85 wt.% of P2 and 5-25 wt.% of P3 (outer shell) (claim 1). By examiner calculations without including the water-soluble transfer agents, the amount of polymer phase P1 (core monomers) is 525 g ([0104]-[0110]), the amount of polymer phase P2 (intermediate shell monomers) is 2345 g ([0113]-[0121]) and the amount of polymer phase P3 (outer shell monomers ) is 630 g ([0126]-[0130]), which implies a total mass of 3500g. The amount of diacetone acrylamide in the polymer phases P2 and P3 is 47.60 gr ([0121],[0130]). Thus the weight percent of the ethylenically unsaturated monomer is 98.64 wt.% and the weight percent of the DAA is 1.36 wt.%, as required by the instant claim.
Regarding claim 19, Wang et al. in view of Craun et al. and further in view of Betremieux et al. teach methyl methacrylate, butyl acrylate, methacrylic acid, acrylic acid (Section 2.4 to 2.6).
Regarding claim 20, Wang et al. in view of Craun et al. and further in view of Betremieux et al. teach diacetone acrylamide ([0121],[0130]).
Regarding claim 21, Wang et al. in view of Craun et al. and further in view of Betremieux et al. teach the waterborne dispersion wherein the E) polymeric diketone functionalized particles comprise core shell particles (abstract, claim 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure (listed on the IDS dated 06/12/2025)
JP 2008013601 A1 by Harakawa et al.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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