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 .
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.
Claims 1-12 and new claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto et al.(US (US 20050176873), cited in previous Office Action in view of Skillman et al (US 20170335056), necessitated by Amendment.
Morimoto teaches a polyester composition comprising a polyester resin constituted from the following
components:
a) acidic part:
99.5% mol terephthalic acid;
0.5% mol trimellitic acid;
b) diol part:
15% mol ethylene glycol;
20% mol 1,4-cyclohexane- dimethanol;
65% mol propylene glycol (1,2-propanediol), (see 0043),
where acid value is equal 510 eq/ton, Table 1, Example 1d at 0142).
Regarding a new limitation of claim 1 and new claims 13 and 14, Morimoto discloses a curing (crosslinking) agent (see 0032).
However, the reference fails to teach its amount.
Skillman discloses a water dispersible polyester composition comprising a polyester resin, which can be constituted from terephthalic acid (see 0059), trimellitic acid (see 0073), ethylene glycol, propylene glycol 1,4-cyclohexane- dimethanol (see 0060), containing 0.01-50 wt parts of a crosslinking agent to 100 parts of the coating composition (see 0094). Thus, Stillman’s polyester has the same elements as Morimoto’s one. In addition, both references teach a polyester dispersion used for coatings.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) , 325 U.S. at 335, 65 USPQ at 301, see also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) and MPEP 2144.07.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Stillman‘s crosslinker amount in Morimoto’s composition, since a known material based on its suitability for its intended use.
In reference to claim 2, Morimoto discloses that polyester has a branched structure, because trifunctional trimellitic acid used in synthesis (see definition of branched polyester in instant Application, which can be found in printed publication of instant Application at 0052).
In reference to claim 3, Morimoto teaches the claimed amount of diols (b) and (c) in the Example 1d
above.
However, the reference teaches only 15% mol of ethylene glycol, whereas claim 3 recites 20-80 % mol
range for this component.
Note that Morimoto teaches that the amount of ethylene glycol can be as high as 50% mol (see Table 1,
Example 1c at 0142).
Regarding claims 4 and 5, Morimoto teaches naphthalene dicarboxylic acid, 1,4-cyclohexane dicarboxylic
acid and adipic acid and unsaturated fumaric acid (see 0045).
Note that the reference fails to disclose the components above in the Examples.
However, a genus does not always anticipate a claim to a species within the genus. However, when the
species is clearly named, the species claim is anticipated no matter how many other species are
additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing
date of the invention to expect to use the diacids above and claimed amount of ethylene glycol in
Morimoto's composition, since they clearly named in the reference.
Regarding claim 6 and new claim 16, Morimoto et al. fails to teach a quantity of tetrahydrofuran insolubles.
However, Morimoto teaches the same polyester as Applicant used for the same purposes. In addition,
note that Morimoto's polyester dispersion is applied on an internal surface of a food can (see 0232),
which suggest that its solubility in hydrophilic media is below detection limit.
It would have been obvious to a person of ordinary skills in the art before the effective
filing date of the invention to expect to expect the same solubility for Morimoto's and Applicant's
polyesters, since they have the same structure.
Regarding claim 7, Morimoto discloses 0.3 mass of catalyst on 100 parts of composition (see Table 4,
Example 1 at 0155)
In reference to claims 8-12, Morimoto discloses a polyester resin aqueous dispersion (see Claim 1) and a
coating used on metal cans (see 0231).
Regarding new claim 15, Morimoto teaches 0.01-3 parts of catalyst for 100 parts by weight of the polyester resin (see 0028).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of Stillman as applied to claims 1-16 above, and further in view of Kuo et al (US 20160115348), necessitated by Amendment.
Morimoto and Stillman teach unsaturated polycarboxylic acids (see Morimoto at 0042).
However, the references fail to teach their amount.
Kuo discloses a coating composition formed from polyester comprising terephthalic acid (see 0077), trimellitic acid (see 0078) ethylene glycol, propylene glycol 1,4-cyclohexane- dimethanol (see 0095 and 0097), which contains 10-25% of an unsaturated polycarboxylic acid to 100 mols of the polyester (see claim 18). Thus, Kuo’s polyester has the same elements as Morimoto’s one. In addition, both references teach a polyester dispersion used for coatings.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) , 325 U.S. at 335, 65 USPQ at 301, see also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) and MPEP 2144.07.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use amount of Kuo‘s unsaturated acid in Morimoto’s composition, since a known material based on its suitability for its intended use.
Response to Arguments
Applicant’s arguments with respect to claims 1-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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