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
Applicant’s election without traverse of Group I, Claims 1-14 (a seamless can) and Species A1 (a resole-type phenolic curing agent, Claims 1-3 and 5-14) in the reply filed on 1/30/2026 is acknowledged.
Claims 4 and 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/30/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: the first occurrence of an abbreviation in the claims should be accompanied by the full terminology of the abbreviation. Hence, “MEK” on line 10 of claim 1 should be accompanied by “methyl ethyl ketone” prior to the abbreviation. Appropriate correction is required
Claim 11 is objected to because of the following informalities: on line 8, “m2” should read “m2” with the “2” as a superscript not a subscript. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the first occurrence of the abbreviation “ERV” in the claims (claim 13, line 3) should be accompanied by the full terminology for the abbreviation, particularly given that “ERV” can refer to various different concepts. 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.
Claims 1-3 and 5-14 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. Claim 1 recites the limitation “ordinary temperature” on line 10, however, given that “ordinary temperature” does not have a well-established meaning in the art and that the present specification does not clearly define the limitation and broadly recites “ordinary temperature (20°C)” on page 38, line 2 (of the substitute specification, clean copy) with respect to the degree of coverage, while reciting “ordinary temperature (approximately 20°C)” in Paragraph 0103 with respect to measuring Gel Fraction (A) in the examples, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-3 and 5-14 do not remedy the above and are indefinite for the same reasons wherein it is further noted that dependent claim 10 also recites the term “ordinary temperature” on line 7.
Claims 7 and 11-12 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. The term “central portion” in claim 7 is a relative term which renders the claim indefinite. The term “central portion” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is not clear as to which “central” portion of the can trunk is required to have a thickness of 20 to 75% of a thickness of which “central” portion of the can bottom, and similarly, which portion of the inner surface coating film “at the central portion” is required to have a thickness of 20 to 75% of a thickness of which portion of the inner surface coating film “at the central portion” of the can bottom, e.g., within what distance from a central or middle point of the can trunk and/or can bottom is considered a “central portion”? Claims 11 and 12 similarly refer to “a central portion of a can trunk” without clearly specify which portion of the can trunk is considered “a central portion” and hence claims 11 and 12 are indefinite for the same reasons as discussed above with respect to claim 7.
Claim 8 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. The term “substantially identical” in claim 8 is a relative term which renders the claim indefinite. The term “substantially identical” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, it is unclear how identical the thickness ratios need to be, or how different the thickness ratios can be, in order to be considered “substantially identical”, e.g., within 20% of each other, within 10%, within 5%, within 2%, etc.?
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 5-9, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakuragi (JP2021123719A, please refer to the attached machine translation for the below cited sections). Sakuragi discloses a seamless can produced from a coated metal sheet that is drawn and ironed (Paragraphs 0001-0002) to provide a drawn and wall-ironed seamless can (as in instant claim 14) having a coating on its inner surface that has flavor adsorption resistance (Paragraphs 0007, 0013, 0019, and 0046-0052) and is formed from a coating composition comprising a polyester resin as a main resin, a resol-type phenol resin and/or amino resin as a curing agent in a content of preferably 4 to 30 parts by mass per 100 parts by mass of the main resin, and an acid curing catalyst in a content of less than 0.3 parts by mass per 100 parts by mass of the main resin (Paragraph 0009; as in instant claim 5). Sakuragi discloses that the baking conditions of the coating composition are appropriately adjusted depending on the type of polyester resin, curing agent, metal substrate, and coating amount utilized, and that in order to obtain sufficient curability, the coating composition is heated and cured as described in Paragraph 0043, with curability of the working examples evaluated by MEK extraction in boiling MEK, under reflux at 80°C, performed at the boiling point (79.6°C) for 1 hour as detailed in Paragraph 0069 with respect to an inner surface coating only (similar to the claimed “being immersed in MEK at 80°C for 60 minutes as in instant claim 6), and the MEK extraction rate % being defined by formula (5) as 100 x (W1-W2)/(W1-W3), with W1 being the mass of the coated test piece (similar to the claimed W3a), W2 being the mass of the extracted test piece after MEK immersion (similar to the claimed W4a), and W3 being the mass of the test piece after removal of the coating (similar to the claimed W5a) such that the MEK extraction rate % taught by Sakuragi is equivalent to 100% minus the claimed Gel fraction (B) of instant claim 6; and given that at least Examples 3-5 have MEK extraction rates of 10% or more and less than 20%, corresponding to a gel fraction of 90% or less and greater than 80%, with a glass transition temperature (Tg) of the mixed polyester resin being 81°C, i.e., higher than the extraction temperature, with a first polyester resin having a Tg of 80°C and a second polyester resin having a Tg of 82°C (Examples, Table 1) such that there would be no substantially difference between MEK extraction at 80°C vs. the claimed “ordinary temperature” of instant claim 1 (as in instant claim 6), the Examiner takes the position that Sakuragi discloses the claimed invention with sufficient specificity to anticipate instant claims 1, 5-6, and 14.
With respect to instant claims 2-3, as noted above, Sakuragi discloses that the curing agent may be a resol-type phenolic resin present in a content of preferably 4 to 30 parts by mass per 100 parts by mass of the main resin (Paragraph 0009), with m-cresol resol-type phenolic resin being particularly preferred (Paragraph 0026) and a content thereof being even more preferably 6 to 20 parts by mass per 100 parts by mass of the polyester resin which is the main resin (Paragraph 0031); and given that Sakuragi specifically discloses working examples, particularly the above noted Examples 3-5, utilizing an m-cresol-type resol phenol resin as the curing agent in a content of 10 parts by mass with respect to 100 parts by mass of the polyester resin (Paragraph 0055, Table 1), the Examiner takes the position that Sakuragi discloses the claimed invention with sufficient specificity to anticipate instant claims 2-3.
With respect to instant claims 7-8, Sakuragi discloses that it is preferable that the thickness of the central part of the can body side wall is 20 to 75%, preferably 20 to 60%, more preferably 30 to 50%, of the thickness of the can bottom central part; and that when a can is formed from a coated metal sheet by a drawing and ironing process, the thickness of the paint/coating film on the can body becomes thin due to the process, similar to the thickness of the metal substrate, and is preferably 20 to 75% in the center of the can body side wall with respect to the thickness of the coating film in the center of the can bottom, preferably 20 to 60%, more preferably 30 to 50%, e.g., “substantially identical” thickness ratios as in instant claim 8 (Paragraph 0050). Hence, Sakuragi anticipates instant claims 7-8.
With respect to instant claim 9, Sakuragi discloses that a coating may be provided on the inner and/or outer surfaces, and specifically discloses that the working examples, particularly those as noted above, are provided with an exterior coating formed from an exterior coating composition comprising polyester resin, amino resin as the curing agent, and an acid catalyst (Paragraphs 0058 and 0065) as in instant claim 9, thereby anticipating instant claim 9.
With respect to instant claims 11-12, although Sakuragi does not specifically disclose heat shrinkage rate properties when the temperature is raised from 30°C to 200°C as instantly claimed, the Examiner takes the position that said properties would be inherent to the inner coating disclosed by Sakuragi, particularly as in the above examples, comprising the same coating components as instantly claimed, in amounts as in the instant invention, baked at 250°C, having a gel fraction and/or MEK extraction properties as claimed, and formed by essentially the same method as in the instant invention, and particularly given that Sakuragi specifically discloses that the coating produced utilizing the resol-type phenolic resin as a curing agent in a content as in the instant invention provides a coating having heat resistance (Paragraphs 0030-0031; Examples). Hence, absent any evidence to the contrary, the Examiner takes the position that Sakuragi anticipates instant claims 11-12.
With respect to instant claim 13, Sakuragi evaluates the can processability of the working examples utilizing a can body ERV test as described in Paragraph 0071, with Example 3 having a current value of less than 50 mA, Example 4 having a current value of 50mA or more and less than 100 mA, and Example 5 having a current value of 100 mA or more and less than 300 mA (Table 1), and hence Sakuragi discloses the claimed invention with sufficient specificity to anticipate instant claim 13.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1-3, 5-8, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagai (US2016/0115346A1, corresponds to EP3012100A1 cited on the IDS dated 9/2/2025). Nagai discloses a drawn and ironed seamless can (as in instant claim 14) formed from a resin-coated metal sheet comprising a polyester primer on at least one surface of a metal sheet, wherein the polyester primer layer is formed from a composition comprising a polyester resin and a resol-type phenolic resin derived from an m-cresol as a curing agent in a content of 5 to 43 parts by mass per 100 parts by mass of the polyester resin; and the polyester primer has an MEK extractability in a range of 3 to 40% determined as described in Paragraphs 0110-0111 when the primer coated metal sheet is immersed in boiling MEK (BP: 79.6°C) for 60 minutes, corresponding to a gel fraction (B) of the instantly claimed invention of 97 to 60%, with working Examples 3 and 7 utilizing 5 parts by mass of an m-cresol-based resol-type phenolic resin as a curing agent (as in instant claims 2-3) and 2 parts by mass of an acid curing catalyst (CYCAT 602 manufactured by Nihon Cytec Industries Co.), both with respect to 100 parts by mass of polyester resin, providing a polyester primer that has an MEK extractability of 40% and 25%, respectively, and thus a gel fraction (B) of 60% and 75%, respectively (Entire document, particularly Abstract, Paragraphs 0014-0025, 0055, 0089, Examples, Table 1); and given that there would be no substantial difference in the MEK extractability of the resol-cured polyester primers of Examples 3 and 7 at “ordinary temperature” versus MEK boiling point, the Examiner takes the position that Nagai discloses the claimed invention with sufficient specificity to anticipate instant claims 1-3, 6 and 14.
With respect to instant claim 5, Nagai discloses that as a curing catalyst, it is desired to use an acid catalyst in an amount of 0.01 part by mass to 3 parts by mass per 100 parts by mass of the whole resin components or polyester resin and curing agent (Paragraph 0055), and given that curing agent is present in an amount of 5 to 43 parts by mass per 100 parts by mass of the polyester resin (Paragraph 0054), Nagai discloses a content for the curing catalyst that substantially encompasses the claimed “less than 0.5 parts by mass with respect to 100 parts by mass of the polyester resin” and hence the Examiner takes the position that Nagai discloses the claimed content with sufficient specificity to anticipate instant claim 5.
With respect to instant claims 7-8, Nagai discloses that it is desired that the thickness of the side wall of the seamless can has been reduced down to 20 to 95% (fully encompassing the claimed 20 to 75% thickness ratio range), and specifically, 25 to 85% of the original thickness of the coated metal plate due to the bend-stretching or ironing as a result of subjecting the coated metal sheet to draw-redraw working (Paragraph 0082), and given the working examples disclosed by Nagai and the lack of clarity with respect to instant claims 7-8 as discussed above, the Examiner takes the position that Nagai discloses the claimed invention with sufficient specificity to anticipate instant claims 7-8.
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.
Alternatively, claims 1-3, 5-9, and 11-14, as well as claim 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuragi as applied above to claims 1-3, 5-9, and 11-14 and further discussed below.
The teachings of Sakuragi are discussed in detail above and incorporated herein by reference, and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-3, 5-9, and 11-14 for the reasons discussed in detail above, the Examiner alternatively takes the position that the claimed gel fraction and heat shrinkage properties would have been obvious over the teachings of Sakuragi, particularly in light of the working examples and MEK extractability taught by Sakuragi as discussed in detail above, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-3, 5-9, and 11-14 alternatively would have been obvious over the teachings of Sakuragi.
With respect to instant claim 10, given that Sakuragi teaches that the seamless can may have a coating on its inner and/or outer surface (Paragraph 0052), and that the coating composition comprising the polyester having a Tg of 60°C or higher as the main agent may be cured by a resol-type and/or amino resin as the curing agent (Paragraph 0009), wherein the coating composition is baked to obtain sufficient curability whether on the inner and/or outer surface (Paragraph 0043), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further add an amino resin as an additional curing agent to any of the inner coating compositions taught by Sakuragi in the examples and/or to add a resol-type phenolic resin as an additional curing agent to the outer coating composition utilized in the working examples from the standpoint of heat resistance of the coating as taught by Sakuragi (Paragraph 0030), providing a coating on the outer surface having similar curability and/or MEK extraction properties as in any of the examples thereby reading upon and/or suggesting a gel fraction as in instant claim 10, and hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 10 would have been obvious over the teachings of Sakuragi.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP2019-069536A, hereinafter referred to as “Sakuragi 2019” (please refer to the attached machine translation for the below cited sections). Sakuragi 2019 teaches an organic resin-coated metal sheet suitably used as a material for seamless cans formed by harsh processes such as deep drawing and ironing, wherein the coated metal sheet comprises a metal plate and a cured coating film on at least one side thereof, formed from a coating composition comprising a base resin, preferably a polyester resin as a main resin; a resol-type phenolic resin and/or an amino resin as a curing agent in an amount of 5 to 50 parts by weight per 100 parts by weight of the main resin in order to provide sufficient curability and heat resistance (Paragraph 0022); and an acid catalyst in an amount of 0.02 to 5 parts by weight, preferably 0.1 to 3 parts by weight, per 100 parts by weight of the main resin (Paragraph 0007-0010, 0022, 0025, and 0034), with working examples evaluated for curability of the cured coating composition by MEK extraction at boiling point for 1 hour as described in Paragraph 0039 (Examples). Sakuragi 2019 specifically teaches an example, Example 3, comprising 100 parts by mass of a polyester resin having a Tg of 80°C, 15 parts by mass of an m-cresol-based resol-type phenolic resin as a curing agent (as in instant claim 2), and 0.25 parts by mass of an acid catalyst (as in instant claim 5); and the resulting cured coating has an MEK extraction rate of 20-30% and thus a gel fraction (B) as defined in the instant invention of 80-70% (Paragraphs 0038-0039 and 0043-0044, Table 1), and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize the resulting coating on the inner and/or outer surface of the seamless can and that one skilled in the art would reasonably expect no substantial difference between the MEK extraction rate at “ordinary temperature” versus the MEK boiling point of said exemplified coating (as in instant claim 6), the Examiner takes the position that the claimed invention as recited in instant claims 1-2, 5-6, and 14 would have been obvious over the teachings of Sakuragi 2019.
With respect to instant claim 3, as noted above, Sakuragi 2019 teaches that the resol-type phenolic resin as the curing agent may be present in a content of 5 to 50 parts by weight per 100 parts by weight of the main resin, overlapping the claimed range, in order to provide sufficient curability and heat resistance, more preferably 10 to 40 parts by mass (touching the claimed range at 10 parts by mass), and given that all of the working examples utilizing 15 parts by weight of a resol-type curing agent provide MEK extractability rates of less than 20% or 20-30% for the case Example 3, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize any amount of curing agent within the range taught by Sakuragi 2019 such as 5 parts by mass with respect to 100 parts by mass of the polyester resin as the main resin, falling within the claimed range as recited in instant claim 3, and given that one skilled in the art would reasonably expect a similar or slightly lower MEK extraction rate when utilizing a slightly lower amount of the resol-type phenolic resin curing agent than in the examples, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Sakuragi 2019.
With respect to instant claims 7-8, Sakuragi 2019 teaches that the side walls of the seamless can are preferably thinned to 20 to 95% (fully encompassing the claimed 20 to 75% thickness ratio range), particularly 25 to 85% of the original thickness of the organic resin-coated metal sheet by bending and stretching through drawing and redrawing or further ironing (Paragraph 0034), thereby teaching and/or suggesting a thickness of the thinned side walls with respect to a central portion of the can bottom, e.g., original thickness, as recited in instant claim 7, and given that the bending, stretching, drawing, and ironing are conducted on the coated metal sheet comprising the above polyester primer such that one skilled in the art before the effective filing date of the claimed invention would reasonably expect the metal substrate and polyester primer layer to be thinned at the same ratio, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 7-8 would have been obvious over the teachings of Sakuragi 2019.
With respect to instant claims 9-10, it is again noted that Sakuragi 2019 clearly teaches that the coating may be provided on at least one side of the metal plate as discussed above such that providing the coating film on both sides of the metal plate would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, and given that Sakuragi 2019 teaches that the curing agent may be a resol-type phenolic resin and/or an amino resin as in instant claim 9 wherein instant claim 9 does not require any particular content of the amino resin in the outer surface coating, and that the coating composition, whether as an inner and/or outer coating, is baked to provide sufficient curability as evaluated by MEK extraction rate, with an MEK extraction rate of less than 20% being most preferred and corresponding to and/or rendering obvious a gel fraction of greater than 80%, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 9-10 would have been obvious over Sakuragi 2019.
With respect to instant claims 11-12, given that Sakuragi 2019 teaches that the amounts of curing agent and acid catalyst are such that the coating film has sufficient heat resistance for a heat treatment after can body formation (Paragraphs 0022-0023), that the resulting seamless can is subjected to at least one heat treatment to remove residual strain in the organic resin coating layer (Paragraph 0034), and that the coated metal sheets in the examples are baked at 250°C with the resulting coated metal sheets evaluated for adhesion by testing at 250°C, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the cured coating films taught by Sakuragi 2019, particularly as in the working examples, to exhibit minimal shrinkage upon heating to 200°C (e.g., lower than the above 250°C), such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Sakuragi 2019.
With respect to instant claim 13, given that Sakuragi 2019 provides a clear teaching and/or suggestion that the seamless cans may be utilized for filling beverages (Paragraphs 0002-0003) and that it is well established in the art that an acceptable ERV value for such beverage cans is 5.0 mA or below (Official Notice), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 13 would have been obvious over the teachings of Sakuragi 2019.
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 1-2 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/294352 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 3 encompasses all of the limitations of instant claim 1, and given that an “m-cresol based resol-type phenolic resin” is an obvious species of “resol-type phenolic resin” in the art and that a seamless is typically formed by being drawn and walled-ironed, instant claims 1-2 and 14 would have been obvious over copending claim 3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8-14 of copending Application No. 18/294352 in view of Sakuragi 2019 (discussed in detail above and incorporated herein by reference). With respect to instant claims 1-3 and 5-13, it is noted that copending claim 1 is similarly directed to a seamless can comprising an inner surface coating film on a can inner surface side wherein the inner surface coating film contains a polyester resin and has a gel fraction (A) as instantly claimed, and although copending claim 3 does recite that the inner surface coating film contains a resol-type phenolic resin and/or amino resin as a curing agent (as noted above), copending claim 1 does not recite said curing agent(s) which is the only difference between the instantly claimed invention as recited in instant claim 1 and copending claim 1. However, given that Sakuragi 2019 teaches a similar seamless can comprising a polyester resin inner surface coating film on an inner surface of the seamless can wherein the polyester coating includes a resol-type phenolic resin and/or amino resin, particularly an m-cresol-based resol-type phenolic resin as a curing agent (as in instant claim 2) in a content of preferably 5 to 50 parts by mass per 100 parts by mass of the polyester resin as the main resin (reading upon and/or rendering obvious the content range as recited in instant claim 3) and an acid catalyst in a content of 0.02 to 5 parts by mass per 100 parts by mass of the main resin (as in instant claim 5), in order to provide sufficient curability of the coating film which is measured in the working examples of Sakuragi 2019 by MEK immersion similar to determining a gel fraction as in the instant invention and the copending claims (Sakuragi 2019: Entire document, particularly Paragraphs 0020-0022 and Examples, and/or as noted above), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further include a curing agent, particularly an m-cresol-based resol-type phenolic resin as taught by Sakuragi 2019, and an acid catalyst as taught by Sakuragi 2019, in contents taught by Sakuragi 2019, reading upon the curing agent, acid catalyst and content ranges thereof as recited in instant claims 1-3 and 5 in order to provide the desired curability and/or gel fraction for a particular end use of the seamless can. Hence, instant claim 1-3 and would have been obvious over copending claim 1 in view of Sakuragi 2019 given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
With respect to instant claims 6-13, the limitations thereof are recited in copending claims 2 and 8-14, respectively, and hence instant claims 6-13 would have been obvious over copending claims 2 and 8-14, respectively, in view of Sakuragi 2019 for the same reasons as discussed above with respect to instant claim 1 over copending claim 1 in view of Sakuragi 2019.
With respect to instant claim 14, given that a seamless can is typical formed as a drawn and wall-ironed can is in the invention taught by Sakuragi 2019, instant claim 14 would have been obvious over the seamless can as recited in copending claim 1 in view of Sakuragi 2019 for the same reasons as discussed above with respect to instant claim 1 over copending claim 1 in view of Sakuragi 2019.
This is a provisional nonstatutory double patenting rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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, Callie Shosho can be reached at 571-272-1123. 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.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights