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 .
Election/Restrictions
Claims 32-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 September 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 26 is objected to because of the following informalities: in Claim 26, the word “clam” should be written “claim.” Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 29 is 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.
Claim 29 recites the limitation “deposited to provide a relatively soft, flexible, primer layer.” The limitation is indefinite, because Claim 24, from which Claim 29 depends, requires “providing conditions effective for each of the multiple powder coating compositions to form a hardened adherent coating.” Thus, the limitation of Claim 29 is ambiguous, since it is not clear a) whether the “first powder coating composition” is a powder coating composition of Claim 24 which must be hardened, b) whether a “soft, flexible, primer layer” is encompassed by “a hardened adherent coating,” or c) whether “deposited to provide a first powder coating composition” refers to a soft state prior to hardening. Examiner considers the limitation to include any of the above interpretations, while not excluding any other reasonable interpretation, which arises from the prior art.
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(s) 12,14, 21, 22, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stowitz (US 2018/0046114) in view of Bariatinsky et al. (US 2005/0196629).
Regarding Claims 12 and 14, Stowitz (US’114) teaches a method of coating a metal substrate suitable for use in forming metal packaging, including for food packaging [0037,0048,0123], the method comprising: providing a metal substrate [0002]; providing a metal packaging powder coating composition, wherein the powder coating composition comprises powder polymer particles [0095]; selectively applying the powder coating composition on at least a portion of the metal substrate to form a patterned coating (e.g. decoration, including shapes 23A, 23B, 30C and text 30,30A, 30B) (Fig. 1; [0013-0014,0126]); and providing conditions effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate (e.g. curing the toner) [0018]. US’114 fails to expressly teach that the composition is suitable for use on a food-contact surface of the metal packaging container or that the coating includes less than 50 ppm extractables. Bariantsky et al. (US’629) is analogous art in the field of coating internal surfaces of food packaging, and further teaches that the completed coating, including those applied by powder coating, should not contain extractible quantities of undesirable compounds (i.e. extractables) [0102,0014]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’114 to provide a metal packaging powder coating composition suitable for use on a food-contact surface of a metal packaging container or a metal closure such that it has no contaminants, which is less than 50 ppm, because US’629 suggests that powder coatings suitable for use on a food-contact surface of a metal packaging container not have extractables.
Regarding Claim 14, US’114 teaches that the powder coating composition further comprises one or more charge control agents in contact with the powder polymer particles [0098].
Regarding Claim 21, US’114 the hardened (i.e. cured) adherent patterned coating forms markings (e.g. decoration, including shapes 23A, 23B, 30C and text 30,30A, 30B) (Fig. 1; [0013-0014,0126]).
Regarding Claim 22, the hardened adherent patterned coating is in the form of a ring-shaped (e.g. star shape 23A forming a closed loop, or ring) coating on a metal substrate (Fig. 1).
Regarding Claim 31, US’114 shows various patterns, including images and text (Fig. 1). The combination of US’114 in view of US’629 fails to teach a gradient. However, it would have been obvious to provide one or more powder coating compositions in a manner to form a gradient pattern as a prima facie obvious aesthetic design change, for example a gradient of geometry (e.g. dots to lines to polygons), a gradient of colors, a gradient of line thickness, a gradient from small to large patterns, a gradient of small font to large font text, etc.
Claim(s) 12, 14-15, 21, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rarey et al. (US 4,041,901) in view of Bariatinsky et al. (US 2005/0196629).
Regarding Claim 12, Rarey et al. (US’901) teach a method of coating a metal substrate suitable for use in forming metal packaging, the method comprising: providing a metal substrate (metal can 23) (Fig. 2; col. 3, lines 34-38); providing a metal packaging powder coating composition, wherein the powder coating composition comprises powder polymer particles (epoxy toner particles) (col. 4, lines 12-18); selectively applying the powder coating composition on at least a portion of the metal substrate to form a patterned coating (“electrostatic printing or coating,” col. 4, lines 16-18; col. 10, lines 30-59; col. 3, lines 20-50); and providing conditions effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate (e.g. applying and heat fusing or curing dry powder coating materials) (col. 3, lines 54-56). US’901 fails to expressly teach that the composition is suitable for use on a food-contact surface of the metal packaging container or that the coating includes less than 50 ppm extractables. Bariantsky et al. (US’629) is analogous art in the field of coating internal surfaces of food packaging, and further teaches that a completed coating, including those applied by powder coating, for a metal packaging container (e.g. a can) should not contain extractible quantities of undesirable compounds (i.e. extractables) [0002-0004,0102,0014]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the method of US’901 to provide a metal packaging powder coating composition suitable for use on a food-contact surface of a metal packaging container or a metal closure such that it has no contaminants, which is less than 50 ppm, because US’629 suggests that powder coatings suitable for use on a food-contact surface of a metal packaging container, including a can, not have extractables.
Regarding Claim 14, US’901 teaches magnetic carrier particles (col. 5, lines 9-15).
Regarding Claim 15, US’901 teaches the method comprises electrically grounding the metal substrate while selectively applying the powder coating composition on the at least a portion of the substrate (col. 10, lines 39-43).
Regarding Claim 21, the hardened adherent patterned coating of US’901 forms markings of side seams and contrasts with the container body (col. 3, lines 51-64).
Regarding Claim 23, US’901 teaches that electrostatic deposition allows application of a sufficient thickness of developer particles (i.e. powder polymer particles, including 30-micron blue pigmented epoxy particles) to completely cover sharp edges of welded side seams (col. 10, lines 54-59; col. 3, lines 51-54) and suggests a doctor blade 92 to control an amount of developer particles transported to the printing or coating zone (Fig. 2; col. 5, lines 27-43). US’901 fails to teach expressly depositing different amounts to form a coating with different thicknesses across the coated surface. However, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify US’901 to control the amount of powder coating composition, for example, with the doctor blade, to vary a coating thickness as needed across the coated surface so that a sufficient thickness is provided to cover seams.
Claim(s) 16, 24-25, 28, and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rarey et al. (US 4,041,901) in view of Bariatinsky et al. (US 2005/0196629) as applied to Claims 12 and 15 above, and further in view of Handels et al. (US 6,342,273).
Regarding Claim 16, US’901 teaches adhering developer particles (toner and carrier particles) to a main drum 90 magnetically and transferring particles to a secondary drum 112 magnetically (col. 6, lines 41-56; col. 1, lines 8-12). The combination of US’901 in view of US’629 fails to teach electrostatically adhering a powder coating of multiple powder coating compositions to a transporter surface, imaging member, or intermediate transfer member before directing a powder coating composition to a portion of the metal substrate, wherein electrostatically adhering the at least one powder coating composition comprises electrically biasing the transporter surface, imaging member, or intermediate transfer member before electrostatically adhering the at least one powder coating composition to the a transporter surface, imaging member, or intermediate transfer member. Handels et al. (US’273) is analogous art in electrographic coating and, like US’901, teaches electrostatic coating of a substrate, including a metal substrate, by selectively coating a powder coating composition (e.g. a developer -- powder paint particles -- and carrier particles) on at least a portion of the substrate to form a coating (col. 9, lines 18-31), including a patterned coating (e.g. image) (col. 11, lines 51-57), and providing conditions (fusing and/ or curing) effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate (col. 7, lines 10-11). The powder coating can include powder polymer particles (col. 7, lines 38-40, line 49 to col. 8, line 12). In addition, US’273 teaches that particles can be transferred either directly to a substrate in an electric field or first to a transfer medium by a strong electric field between the magnetic roller and the transfer medium and then to a substrate (Abstract; col. 12, lines 16-20). The teaching that the paint particles (also “developer”) “adhere electrostatically” to the transfer medium suggests that the transfer medium was electrostatically biased before the paint particles could adhere io it. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’901 in view of US’629 by electrostatically adhering a powder coating of multiple powder coating compositions to a transporter surface, imaging member, or intermediate transfer member before directing a powder coating composition to a portion of the metal substrate, wherein electrostatically adhering the at least one powder coating composition comprises electrically biasing the transporter surface, imaging member, or intermediate transfer member before electrostatically adhering the at least one powder coating composition to the a transporter surface, imaging member, or intermediate transfer member, because US’273 suggests that analogous developer, including powder paint polymer particles) can be transferred to a transfer medium from a magnetic drum by a strong electric field between the drum and the transfer medium and electrostatically adhered to the transfer medium before transferring the powder polymer particle to the substrate, also in an electric field.
Regarding Claims 24-25, US’901 teaches a developer, including magnetic carrier particles and powder polymer particles, with nickel as a specific metal for magnetic carrier particles and blue-pigmented epoxy as a specific powder polymer particle (col. 1, lines 10-12; col. 10, lines 48-59). US’901 fails to teach multiple metal packaging powder coating compositions, wherein each powder coating composition comprises powder polymer particles, and at least two of the multiple metal packaging powder coating compositions are different. US’273 also teaches a developer mix, including magnetic carrier particles and powder polymer particles, but in addition to teaching a nickel magnetic carrier particle and an epoxy powder polymer particle (col. 8, lines 35-42; col. 3, lines 6-8) also teaches other magnetic carrier particles (id.) and powder polymer particles of other polymers of various chemical composition (col. 3, lines 24-25; col. 4, lines 1-42 and 45-48). Thus, it would have been obvious to modify the process of the combination of US’901 in view of US’629 by providing multiple metal packaging powder coating compositions (including those which are chemically different) and directing each of the powder coating compositions to a portion of the metal substrate; and providing conditions effective for each of the multiple powder coating compositions to form a hardened adherent coating of varied composition on different portions of a container (e.g. to form an image or to cover a side seam), because US’273 suggests a wide variety of compositions which can be used as powder compositions for coating a metal container.
Regarding Claim 28, US’901 teaches that a powder composition provides a function as forming an image or a function as covering seams (col. 3, lines 20-33). US’273 teaches powder coatings of various compositions and functions, including those to function as a primer (col. 11, lines 14-18) and those to function as a clear coat (col. 15, lines 12-14). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’901 in view of US’629 by providing different powder coating compositions with different functions, because US’901 and US’273 teach different functions and US’273 suggests different compositions for performing different functions.
Regarding Claim 30, US’901 fails to teach a textured or smooth coating. US’273 suggests a smooth (also equivalent to high gloss) coating (Table III; col. 11, line 38-41; col. 1, lines 37-38). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’901 in view of US’629 by providing a smooth coating, because US’273 suggests that a smooth, high gloss coating is desirable. Moreover, it would have been obvious to modify the process of US’901 to provide a smooth coating as a prima facie obvious aesthetic design choice.
Claim(s) 24-28 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stowitz (US 2018/0046114) in view of Bariatinsky et al. (US 2005/0196629) as applied to Claim 12 above, and further in view of Handels et al. (US 6,342,273).
Regarding Claims 24-25, US’114 teaches providing a metal packaging powder coating composition comprises providing multiple metal packaging powder coating compositions [0014], wherein a powder coating composition can comprise powder polymer particles [0095], and at least two of the multiple metal packaging powder coating compositions are different (e.g. different colors); directing the powder coating composition comprises directing each of the multiple powder coating compositions to at least a portion of the metal substrate; and providing conditions comprises providing conditions effective for each of the multiple powder coating compositions to form a hardened adherent coating [0011,0028,0035].
The combination of US’114 in view of US’629 fails to teach that each powder coating composition comprises powder polymer particles. US’273 is analogous art in electrographic coating and, like US’114, teaches electrostatic coating of a substrate, including a metal substrate, by selectively coating a powder coating composition (e.g. a developer -- powder paint particles -- and carrier particles) on at least a portion of the substrate to form a coating (col. 9, lines 18-31), including a patterned coating (e.g. image) (col. 11, lines 51-57), and providing conditions (fusing and/ or curing) effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate (col. 7, lines 10-11). The powder coating can include powder polymer particles (col. 7, lines 38-40, line 49 to col. 8, line 12). US’273 also teaches a developer mix, including a variety of magnetic carrier particles and powder polymer particles (col. 8, lines 35-42; col. 3, lines 6-8), including powder polymer particles with various chemical composition (col. 3, lines 24-25; col. 4, lines 1-42 and 45-48). It would have been obvious to modify the process of the combination of US’114 in view of US’629 by providing multiple metal packaging powder coating compositions (including those which are chemically different) and directing each of the powder coating compositions to a portion of the metal substrate; and providing conditions effective for each of the multiple powder coating compositions to form a hardened adherent coating of varied composition on different portions of a container (e.g. to form an image or to cover a side seam), because US’273 suggests a wide variety of chemical compositions which can be used as powder compositions for coating a metal container.
Regarding Claim 26, US’114 suggests patterning with more than one color [0013-0014]. The combination of US’114 in view of US’629 fails to teach color-on-color. US’273 teaches an analogous process in which analogous polymer paint powder coatings, including a variety of pigments, are applied in layers (col. 11, lines 14-22; col. 7, lines 3-6). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’114 in view of US’629 by printing color-on-color with powder coating compositions of different colors, because US’273 suggests printing in multiple layers with polymer paint powder coatings and US’114 suggests printing in various colors. Moreover, choosing to print in various colors “color-on-color” is a prima facie obvious aesthetic design choice.
Regarding Claim 27, the combination of US’114 in view of US’629 fails to teach a clear coat. US’273 teaches a clear polymer powder coating (col. 15, lines12-15) and suggests printing in multiple layers (col. 11, lines 19-22). The combination of US’114 in view of US’629 and US’273 fails to teach depositing the clear coating as an outermost coating. However, top clear coats were conventional at the time of invention, and it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’114 in view of US’629 and US’273 by depositing the clear coat of US’273 as an outermost coating as a gloss coating or as a protective coat to permit an underlying color of an underlying coating or substrate to show through.
Regarding Claim 28, US’114 teaches that different powder coating compositions provide different functions. For example, it teaches the function of a first toner to provide a first color and a second toner to provide a different color (Fig. 1; [0014,0022]). US’273 also teaches that one of multiple coatings can function as a pretreatment primer for paint layers (col. 11, lines 7-22).
Regarding Claim 30, the combination of US’114 in view of US’629 fails to teach a textured or smooth coating. US’273 suggests a smooth (also equivalent to high gloss) coating (Table III; col. 11, line 38-41; col. 1, lines 37-38). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of US’114 in view of US’629 by providing a smooth coating, because US’273 suggests that a smooth, high gloss coating is desirable. Moreover, it would have been obvious to modify the process of US’114 to provide a smooth coating as a prima facie obvious aesthetic design choice.
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.
Claims 12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11,248,127 in view of Bariatinsky et al. (US 2005/0196629). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US’127 and present Claim 12 are both drawn to a method of coating a metal substrate for use in forming metal packaging and require steps of providing a metal substrate; providing a metal packaging powder coating composition, wherein the powder coating composition comprises powder polymer particles; selectively applying the powder coating composition on at least a portion of the metal substrate to form a coating; and providing conditions effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate. The claims in US’127 fail to recite a patterned coating. However, applying in a pattern, including a solid pattern, edge coating, corner coating, seam coating, coating in various colors, etc. is obvious and is also a prima facie obvious aesthetic design choice.
Additionally, US‘127 fails to expressly teach that the composition is suitable for use on a food-contact surface of the metal packaging container or that the coating includes less than 50 ppm extractables. US’629 is analogous art in the field of coating internal surfaces of food packaging, and further teaches that a completed coating, including those applied by powder coating, for a metal packaging container (e.g. a can) should not contain extractible quantities of undesirable compounds (i.e. extractables) [0002-0004,0102,0014]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the claimed method of US’127 to provide a metal packaging powder coating composition suitable for use on a food-contact surface of a metal packaging container or a metal closure such that it has no contaminants, which is less than 50 ppm, because US’629 suggests that powder coatings suitable for use on a food-contact surface of a metal packaging container, including a can, not have extractables.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 9 of U.S. Patent No. 11,834,585 in view of Bariatinsky et al. (US 2005/0196629). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US’585 and present Claim 1 both require steps of providing a metal substrate (“to at least a portion of a metal substrate,” Claim 1, US’585); providing a metal packaging powder coating composition, wherein the powder coating composition comprises powder polymer particles; selectively applying the powder coating composition on at least a portion of the metal substrate to form a coating; and providing conditions effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate. The claims in US’585 fail to recite a patterned coating. However, applying in a pattern, including a solid pattern, edge coating, corner coating, seam coating, coating in various colors, etc. is obvious and is also a prima facie obvious aesthetic design choice.
Additionally, US‘585 fails to expressly teach that the composition is suitable for use on a food-contact surface of the metal packaging container or that the coating includes less than 50 ppm extractables. US’629 is analogous art in the field of coating internal surfaces of food packaging, and further teaches that a completed coating, including those applied by powder coating, for a metal packaging container (e.g. a can) should not contain extractible quantities of undesirable compounds (i.e. extractables) [0002-0004,0102,0014]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the claimed method of US’585 to provide a metal packaging powder coating composition suitable for use on a food-contact surface of a metal packaging container or a metal closure such that it has no contaminants, which is less than 50 ppm, because US’629 suggests that powder coatings suitable for use on a food-contact surface of a metal packaging container, including a can, not have extractables.
Present Claim 13 corresponds to Claim 9, US’585.
Present Claim 14 – Claims 1 and 6, US’585
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9 of U.S. Patent No. 12,173,183 in view of Bariatinsky et al. (US 2005/0196629). Although the claims at issue are not identical, they are not patentably distinct from each other because both require steps of providing a metal substrate; providing a metal packaging powder coating composition, wherein the powder coating composition comprises powder polymer particles; selectively applying the powder coating composition on at least a portion of the metal substrate to form a coating; and providing conditions effective for the powder coating composition to form a hardened adherent patterned coating on at least a portion of the metal substrate. The claims in US’183 fail to recite a patterned coating. However, applying in a pattern, including a solid pattern, edge coating, corner coating, seam coating, coating in various colors, etc. is obvious and is also a prima facie obvious aesthetic design choice.
Additionally, US‘183 fails to expressly teach that the composition is suitable for use on a food-contact surface of the metal packaging container or that the coating includes less than 50 ppm extractables. US’629 is analogous art in the field of coating internal surfaces of food packaging, and further teaches that a completed coating, including those applied by powder coating, for a metal packaging container (e.g. a can) should not contain extractible quantities of undesirable compounds (i.e. extractables) [0002-0004,0102,0014]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the claimed method of US’183 to provide a metal packaging powder coating composition suitable for use on a food-contact surface of a metal packaging container or a metal closure such that it has no contaminants, which is less than 50 ppm, because US’629 suggests that powder coatings suitable for use on a food-contact surface of a metal packaging container, including a can, not have extractables.
Present Claim 13 – Claim 9, US’183
Present Claim 14 – Claims 1, 6, US’183
Response to Arguments
Applicant’s amendment to the claims, filed 12 December 2025, with respect to the rejection of Claim 27 under 35 USC 112(b) has been fully considered and overcomes the previous rejection of Claim 27 under this paragraph. The rejection of Claim 27 under 35 USC 112(b) has been withdrawn.
Applicant’s amendment to the claims, filed 12 December 2025, with respect to the rejection(s) of claim(s) 12, 14-15 ,21, and 22 under 35 USC 102(a)(1) have been fully considered and overcome the previous rejections under this paragraph. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the obviousness of claim(s) 12, 14-15 ,21, and 22 under 35 USC 103.
Applicant's arguments, filed 12 December 2025, with respect to the rejections of Claim 29 under 35 USC 112(b) and of Claims 12-16 and 21-31 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument concerning the rejection of Claim 29 under 35 USC 112(b) (Remarks, p. 9), the rejection is based on indefiniteness not on lack of support. As explained in the rejection, Claim 12 requires “a powder coating composition” and a “hardened coating formed from the powder coating composition”; Claim 24 requires “multiple metal packaging powder coating compositions” and “providing conditions comprising providing conditions effective for each of the multiple powder coating compositions to form a hardened adherent coating.” Neither Claim 12 nor Claim 24 requires a “first powder coating composition” or a “second powder coating composition.” Claim 29, which depends from Claim 24, requires “a first powder coating composition … to provide a relatively soft, flexible, primer layer” and “a second powder coating composition . . . to provide a relatively hard, abrasion-resistant top coating.” Neither powder coating composition is definitely associated with any of the “powder coating composition” in Claims 12 or 24 and it is not clear whether the first “soft, flexible, primer layer” is hardened, since it is expressly describes as soft and flexible. Therefore, the argument is not persuasive.
In response to Applicant’s argument concerning the definition of “food-contact surface” (Remarks, pp. 7-8), the claims only recite suitability of the recited powder coating composition for use on a food-contact surface and do not require any of a metal packaging for food, a food-contact surface onto which the powder coating composition is to be deposited, nor that the coating be formed inside a metal substrate. Thus, the argument is not within the scope of the claims. Moreover, it is known to apply powder coatings to the inside of food packaging, including the inside of cans and to form coatings without extractables (see rejections). Moreover, the claims do not require any liquids inside a product formed by the claimed method.
Applicant does not provide any arguments against double patenting rejections (Remarks, p. 10), which are therefore maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Niederst et al. (US 2013/0206756) (powder coating used for inside of pipes and food and beverage containers)
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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