DETAILED ACTION
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
Applicant's election with traverse of Claims 1-11 and 16-20 in the reply filed on 04 August 2025 is acknowledged. The traversal is on the ground(s) that US 2015/0072151 to Saito et al. does not teach the technical feature common among the identified groups of inventions (see Response at Pgs. 8-9). This argument is moot in view of the grounds of rejection set forth herein over US 2017/0247563 to Saito et al.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 22 January 2024 has been considered by the examiner.
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.
1. Claims 1-11 and 16-20 are 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.
With regard to Claim 1, there is no antecedent basis for i) “… blocked or non-blocked isocyanate groups of the isocyanate crosslinking agent …”; and ii) “… hydroxyl groups of the polyester resin …” For purposes of examination, the polyester resin is presumed to comprise hydroxyl groups, and the isocyanate crosslinking agent is presumed to comprise isocyanate groups that are either blocked or non-blocked. Claims 2-11 and 16-20 are similarly rejected to the extent they depend from Claim 1 and do not resolve the noted ambiguity.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
2. Claims 1, 3-5, 8-11, 17, and 20 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US 2017/0247563 to Saito et al. (“Saito”).
With regard to Claims 1, 3-4, and 17, Saito teaches a powder coating composition comprising at least one fluoropolymer resin, at least one polyester resin, and an isocyanate crosslinking agent (see ¶ [0031]). According to Saito, the polyester resin comprises hydroxyl functionality, and the isocyanate is a blocked isocyanate (see Id.; ¶¶ [0057], [0159]-[0163], [0175]). Saito further teaches molar ratio of isocyanate groups to crosslinkable groups within the claimed range (see ¶ [0220]).
With regard to Claim 5, Saito teaches inclusion of composition constituents at amounts within the claimed range (see ¶ [0221]).
With regard go Claim 8, Saito teaches the claimed fluoropolymer resins (see ¶¶ [0054]-[0055]).
With regard to Claim 9, Saito teaches the claimed isocyanate crosslinking agents (see ¶ [0161]).
With regard to Claims 10 and 20, Saito teaches particle volume median diameters within the claimed range (see ¶ [0233]).
With regard to Claim 11, Saito teaches inclusion of additives as claimed (see ¶¶ [0208], [0236]-[0238]).
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.
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.
3. Claims 2, 6-7, 16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Saito as applied to Claim 1, and further in view of US 2020/0010717 to Brustle et al. (“Brustle”).
With regard to Claims 2, 6-7, 16, and 18-19, Saito does not expressly teach semi-crystalline polyester resin. Brustle is similarly directed to powder coating compositions, and teaches inclusion of the claimed types of semi-crystalline polyester resin therein, noting that the inclusion of semi-crystalline polyester resin yields improved deformability and smoother surfaces (see Abstract; ¶¶ [0032], [0050]). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have incorporated semi-crystalline polyester resin in the powder coating compositions of Saito in order to obtain compositions with improved properties as taught by Brustle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1715
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