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 Interpretation
The invention, a coated article, is defined almost entirely in terms of product-by-process language. That is to say, for instance, the coating layer is said to be applied via a coil coating process and the coating is indicated as having been “derived from” a liquid silicone-modified polyester. The silicone-modified polyester, in turn, is stipulated to have been obtained by the initial reaction of a hydroxy-functional silicone- it is noted that the claim does not make clear whether or not the hydroxyl groups are silicon-bound, or silanol group, or carbon-bound, or carbinol groups and, hence, the claims are considered to embrace precursor compounds of both types- and a hydroxy-functional compound followed by the reaction of this intermediate with a carboxylic acid-functional compound.
Applicant is reminded that "[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983)
In this connection, it is noted that, while not expressly disclosed one way or the other, it is presumed that the polymer layer, upon being cured, will be a solid and therefore the state that the coating takes prior to forming a cured layer is of no consequence. Similarly, the current record does not demonstrate that coating a planar metal substrate via a coil coating operation would be patentably distinguished from one obtained by another coating technique. Finally, the silicone-modified polyester need not prepared from the same precursors set forth in claim 21 provided that its structure is not differentiated from that realized upon carrying out the aforementioned preparative approach.
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 21-25 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.
It is not clear how “optimal”, as in optimal weathering, adhesion, hardness, etc. is to be defined in the context of the instant invention.
The aim of claim 23 is unclear to the extent that it says that the coating operation (coil coating according to claim 21) is carried out at the specified temperature and duration yet it is actually the coated substrate that appears to be subjected to these conditions. While it is the Examiner’ supposition that 200-250◦ for 8 to 25 seconds are the conditions under which curing of the coated substrate occurs, not those under which coating is carried out, the language of the claim makes it difficult to establish intent.
Concerning claim 24, the metal/alloy subject to hot-dip galvanizing or electro-galvanizing is not specified.
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 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burrill, EP 100 623.
Applicant is directed to Example 1 where there is described the preparation of a siloxane-modified polyester. The copolymer is prepared by a method wherein dimethyl terephthalate, trimethylolpropane, and neopentyl glycol are first copolymerized to provide a hydroxyl-functional polyester which the Examiner infers to mean that the polyols were added in stoichiometric excess relative to the number of moles of ester groups contributed by the terephthalic acid methyl ester. Subsequently, the hydroxyl-functional polyester is reacted with a silanol-functional methylphenylsiloxane resin in solution and in the presence of a transesterification/transetherification catalyst to furnish a copolymer bearing residual silanol and carbinol moieties. Subsequently, the copolymer product is additionally diluted and combined with an amino-functional silane, and Ti condensation catalyst, and coated on aluminum panels by flow coating. Finally, the coated panels are permitted to air dry and then baked in an oven to promote curing.
See also page 6 where steel substrates are also contemplated as are other solution coating techniques including spraying, dip coating, and roller coating. The last of these is particularly salient because coil coating, as the Examiner understands it, refers to a roll-to-roll (or coil to coil) coating operation but the actual means of coating is roller coating.
The Examiner acknowledges that the prior art approach by which the copolymer is formed is different but contends that its structure would not be distinguishable from a process where the claimed hydroxy-functional silicone is silanol-functional methylphenylsiloxane resin, the hydroxy-functional alcohol is one of neopentyl glycol or trimethylolpropane, and the carboxylic acid-functional compound is a polyester obtained from dimethyl terephthalate, trimethylolpropane, and neopentyl glycol. (The breadth of the claims is such that the hydroxy-functional silicone compound may be a silanol-functional methylphenylsiloxane resin, the hydroxy-functional alcohol a mixture of neopentyl glycol and trimethylolpropane, and the carboxylic acid-functional compound, a polyester obtained from dimethyl terephthalate, trimethylolpropane, and neopentyl glycol.) Indeed, the claimed method essentially represents a re-ordering of the steps of the prior art method wherein, instead of reacting a hydroxy-functional silicone with a polyester that utilizes a stochiometric excess of polyol (hydroxy-functional compound) relative to carboxylic acid-functional compound, thus assuring that the polyester will feature terminal/peripheral carbinol groups by way of transesterification/transetherification, a hydroxy-functional silicone is first transesterified/transetherified with a hydroxy-functional compound and, thereafter the transesterified/transetherified is reacted with a carboxylic acid-functional compound.
Regarding claim 22, it is reiterated here that the concept of optimal weathering, hardness, etc. is unknown but, inasmuch as the claimed and prior art planar metal surfaces featuring a layer of coated/cured polyester-modified silicone are currently indistinguishable, it may be presumed that the prior art article will inherently be in possession of these.
As for claim 23, the prior art coating is admittedly cured under at lower temperatures as it is one of the objectives of that disclosure to identify compositions that can be cured under less stringent conditions than are other silicone-modified polyester coatings. This is, however, a further limiting disclosure of the process portion of product-by-process claim 21 and does not serve to create a distinction between the claimed- and prior art articles.
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Burrill, EP 100 623. The Examiner concedes that Burrill is not forthcoming as to the applications of the (mild/soft/low carbon) steel (page 1, line 9) that constitutes one embodiment of the metal substrates but the Examiner takes notice of the fact that artisans skilled in architecture/building design will recognize low carbon steel as being useful in the claimed capacity for its malleability, ductile characteristics, and relative affordability. (A primary documented disadvantage of low carbon steel is its susceptibility to corrosion but, of course, the main thrust of the prior art invention is to furnish a protective coating.)
OTHER REFERENCES CONSIDERED
Kang et al., U.S. Patent # 5,227,435 is cited as being of interest. Applicant will recognize Kang as representing a foundation for rejection in several applications within the same patent family. Kang, unlike Burrill actually does teach the same mode of preparing silicone modified polyesters, i.e. by first reacting a silanol-functional polysiloxane with a hydroxy-functional compound. Subsequently, the transetherification product is esterified with a compound(s) bearing a plurality of carboxylic acid groups to provide the target copolymer. The process is more comprehensively covered in column 2, line 45 through column 5, line 46. A first exemplification that utilizes a blend of ethylene glycol and neopentyl glycol in the first step, terephthalic acid and adipic acid in a first esterification step, and trimellitic anhydride (a derivative of trimellitic acid) in a second esterification step is summarized in Example 1. One deficiency of Kang is that it is not at-all forthcoming as to the target substrates for which the coating is designed although the Examiner takes notice of the fact that metal substrates are particularly applicable in powder coating operations due to their intrinsic conductivity, there is no suggestion that an article of interest would be planar.
U.S. Patent # 11,299,594 is notable for its description of a hydroxy-functional silicone polymer being etherified with a blend of mono- and polyhydric alcohols and the resulting intermediate being reacted in the melt with a dicarboxylic acid blend. There is even mention of roller coating (column 10, lines 11-18) thus suggesting that the copolymer products may be applied as liquids but this document does not antedate the effective filling date of this application.
CN 103450465 discloses another corresponding process of making a silicon-modified polyester but is published one day after the effective filling date of this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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November 10, 2025
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765