CTNF 18/392,766 CTNF 84007 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority This application claims the benefit of TW 112148928 with an effective filing date of 15 December 2023 as reflected in the filing receipt mailed on 08 February 2024. Information Disclosure Statement The information disclosure statements (IDSs) submitted are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner. Specification 07-29 AIA The disclosure is objected to because of the following informalities: The use of the terms IRGANOX, ASTM, etc., which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks . Appropriate correction is required. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-8 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Pfeil et al. (US5612394, patented 18 March 1997, hereinafter Pfeil) . Pfeil is in the known prior art field of aqueous epoxy resin dispersions, see Abstract, where the epoxy resin is hydrophilic, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39. Regarding the limitations of instant application claim 1, Pfeil discloses a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the product hydrophilic epoxy resin in instant application claim 1 . Regarding the limitations of instant application claims 6-8, Pfeil discloses a hydrophilic epoxy resin dispersion, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, for “the production of coatings, especially corrosion-resistant baking primers, fillers and topcoats on, preferably, metallic substrates, and also for the preparation of interior and exterior coatings for crown caps and screw closures and for coil-coating materials which still undergo severe deformation after crosslinking, and relates in particular to their use for the interior coating of cans for beverages and preserves”, see Col. 5, Lns. 1-21. The dispersion coating comprises a “ratio of epoxy resin (A) to addition polymer (C) is generally from 99.5:0.5 to 20:80, preferably between 5:95 and 50:50, % by weight. This polymer (C) may if desired be composed of monomers which contain carboxyl groups and/or glycidyl groups, preferably to the extent of from 2.5 to 25% by weight. The amount of curing agent (D) is generally chosen such that, taking into account the reactive groups which may be present in (C), a ratio of equivalents of COOH to epoxide groups of from 0.5:1 to 5:1, preferably 0.6:1 to 1.5:1, is reached. The content of dispersant (B) is related to all the water-insoluble components of the dispersion, i.e., to the epoxy resin (A), the polymer (C) and, if appropriate, to the curing agent (D) if the latter is not soluble in water, and is generally between 2.5 and 25% by weight, preferably between 5 and 15% by weight. The composition of the dispersant in terms of (B-1):(B-2) is between 0:100 and 100:0, preferably greater than 75:25”, see Col. 11, Lns. 39-65, and “a mixture is prepared of from 20 to 99% by weight, preferably from 40 to 60% by weight, of the condensation product and an aqueous medium comprising (based on the total mixture) up to 50% by weight, preferably up to 30% by weight, of an organic solvent and up to 80% by weight, preferably from 15 to 60% by weight, of water, and this mixture is used as dispersant (B-1) or (B)”, see Col. 7, Lns. 40-64, i.e., a dispersion comprising the hydrophilic epoxy resin product at 20% by weight and water at 20 to 30% by weight, where “the epoxy resin (A) is first prepared by condensation of components (A-1) and (A-2) and, if desired, (A-3), at elevated temperatures, in general at from 100° to 220° C. and preferably at 150° to 180° C., in the presence of a catalyst which accelerates the condensation”, see Col. 12, Lns. 33-51, and A-1 are suitable aromatic polyols, such as aromatic polycarboxylic acids including terephthalic acid, A-2 is “2,2-bis(4-hydroxyphenyl)propane (bisphenol A)”, with an “epoxide equivalent mass” of “between 100 and 2000 g/mol, in particular between 100 and 350 g/mol”, “modifying compounds (A-3) are compounds having at least two functional groups which are able to react with the epoxide groups of component (A-1), and which compounds cannot be classified under the aromatic polyols (A-2)”, such as polyethylene glycol, see Col. 5, Ln. 16-Col. 6, Ln. 42, where curing agents (D), such as trimellitic anhydride are used to cure the epoxy resin, see Col. 10, Lns. 1-59, i.e. the hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride, meeting: Within the range of bisphenol epoxy resin epoxy equivalent drawn to the process of production of the product in instant application claim 6 ; The specific bisphenol A drawn to the process of production of the product in instant application claim 7 ; and, The aqueous coating dispersion within the range of the hydrophilic epoxy resin and within the range of water in the coating in instant application claim 8 . Regarding the product-by-process limitations of instant application claims 1-7, Pfeil discloses a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the product hydrophilic epoxy resin in instant application claim 1 . Instant application claim 1 states the product “being formed by reacting a multi-carboxylic acid compound with a bisphenol epoxy resin, wherein the multi-carboxylic acid compound is formed by reacting a first compound with an anhydride compound, and wherein the first compound is formed by reacting poly(ethylene glycol) with bis(2-hydroxyethyl) benzenedicarboxylate or dialkyl benzenedicarboxylate, wherein the bis(2-hydroxyethyl)benzenedicarboxylate has a chemical structure of …” . Instant application claims 2-7 are drawn to limitations associated with the process of producing the product hydrophilic epoxy resin in instant application claim 1. MPEP 2113(I) states “even 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) (citations omitted)”. Pfeil discloses a hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride; therefore, the process of production is not given patentable weight, meeting the production process limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, and in instant application claim 7 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeil et al. (US5612394, patented 18 March 1997, hereinafter Pfeil) . Regarding the limitations of instant application claim 1, Pfeil discloses a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the product hydrophilic epoxy resin in instant application claim 1 . Regarding the limitations of instant application claims 6-8, Pfeil discloses a hydrophilic epoxy resin dispersion, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, for “the production of coatings, especially corrosion-resistant baking primers, fillers and topcoats on, preferably, metallic substrates, and also for the preparation of interior and exterior coatings for crown caps and screw closures and for coil-coating materials which still undergo severe deformation after crosslinking, and relates in particular to their use for the interior coating of cans for beverages and preserves”, see Col. 5, Lns. 1-21. The dispersion coating comprises a “ratio of epoxy resin (A) to addition polymer (C) is generally from 99.5:0.5 to 20:80, preferably between 5:95 and 50:50, % by weight. This polymer (C) may if desired be composed of monomers which contain carboxyl groups and/or glycidyl groups, preferably to the extent of from 2.5 to 25% by weight. The amount of curing agent (D) is generally chosen such that, taking into account the reactive groups which may be present in (C), a ratio of equivalents of COOH to epoxide groups of from 0.5:1 to 5:1, preferably 0.6:1 to 1.5:1, is reached. The content of dispersant (B) is related to all the water-insoluble components of the dispersion, i.e., to the epoxy resin (A), the polymer (C) and, if appropriate, to the curing agent (D) if the latter is not soluble in water, and is generally between 2.5 and 25% by weight, preferably between 5 and 15% by weight. The composition of the dispersant in terms of (B-1):(B-2) is between 0:100 and 100:0, preferably greater than 75:25”, see Col. 11, Lns. 39-65, and “a mixture is prepared of from 20 to 99% by weight, preferably from 40 to 60% by weight, of the condensation product and an aqueous medium comprising (based on the total mixture) up to 50% by weight, preferably up to 30% by weight, of an organic solvent and up to 80% by weight, preferably from 15 to 60% by weight, of water, and this mixture is used as dispersant (B-1) or (B)”, see Col. 7, Lns. 40-64, i.e., a dispersion comprising the hydrophilic epoxy resin product at 20% by weight and water at 20 to 30% by weight, where “the epoxy resin (A) is first prepared by condensation of components (A-1) and (A-2) and, if desired, (A-3), at elevated temperatures, in general at from 100° to 220° C. and preferably at 150° to 180° C., in the presence of a catalyst which accelerates the condensation”, see Col. 12, Lns. 33-51, and A-1 are suitable aromatic polyols, such as aromatic polycarboxylic acids including terephthalic acid, A-2 is “2,2-bis(4-hydroxyphenyl)propane (bisphenol A)”, with an “epoxide equivalent mass” of “between 100 and 2000 g/mol, in particular between 100 and 350 g/mol”, “modifying compounds (A-3) are compounds having at least two functional groups which are able to react with the epoxide groups of component (A-1), and which compounds cannot be classified under the aromatic polyols (A-2)”, such as polyethylene glycol, see Col. 5, Ln. 16-Col. 6, Ln. 42, where curing agents (D), such as trimellitic anhydride are used to cure the epoxy resin, see Col. 10, Lns. 1-59, i.e. the hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride, meeting: Within the range of bisphenol epoxy resin epoxy equivalent drawn to the process of production of the product in instant application claim 6 ; The specific bisphenol A drawn to the process of production of the product in instant application claim 7 ; and, The aqueous coating dispersion within the range of the hydrophilic epoxy resin and within the range of water in the coating in instant application claim 8 . Regarding the limitations of instant application claims 9-11, Pfeil teaches the “dispersant (B) is a condensation product (B-1) of a polyol (B-1-a) and an epoxide compound (B-1-b) that has at least two epoxide groups, which is optionally blended with other, preferably nonionic surfactants (B-2)”, see Col. 6, Ln. 42-Col. 7, Ln. 2, where “other dispersants (B-2)” may be bisphenols, see Col. 7, Ln. 66-Col. 8, Ln. 24, and the “composition of the dispersant in terms of (B-1):(B-2) is between 0:100 and 100:0, preferably greater than 75:25”, see Col. 11, Lns. 39-65, and “a mixture is prepared of from 20 to 99% by weight, preferably from 40 to 60% by weight, of the condensation product and an aqueous medium comprising (based on the total mixture) up to 50% by weight, preferably up to 30% by weight, of an organic solvent and up to 80% by weight, preferably from 15 to 60% by weight, of water, and this mixture is used as dispersant (B-1) or (B)”, see Col. 7, Lns. 40-64, i.e., an additive co-solvent of an organic solvent, where “conventional additives in the context of (E), which may possibly be present in the dispersions according to the invention, are the conventional paint additives such as pigments, pigment pastes, antioxidants, leveling agents and thickeners, antifoams/deaerating agents and/or wetting agents, reactive diluents, fillers, catalysts, preservatives, protective colloids and the like”, see Col. 12, Lns. 16-24, meeting: Within the range of the additional bisphenol epoxy resin in instant application claim 9 ; and, Within the range of a specific organic solvent co-solvent additive in instant application claim 10 and in instant application claim 11 . Regarding the product-by-process limitations of instant application claims 1-7, Pfeil discloses a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the hydrophilic product epoxy resin in instant application claim 1 . Instant application claim 1 states the product “being formed by reacting a multi-carboxylic acid compound with a bisphenol epoxy resin, wherein the multi-carboxylic acid compound is formed by reacting a first compound with an anhydride compound, and wherein the first compound is formed by reacting poly(ethylene glycol) with bis(2-hydroxyethyl) benzenedicarboxylate or dialkyl benzenedicarboxylate, wherein the bis(2-hydroxyethyl)benzenedicarboxylate has a chemical structure of …” . Instant application claims 2-7 are drawn to limitations associated with the process of producing the product hydrophilic epoxy resin in instant application claim 1. MPEP 2113(I) states “even 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) (citations omitted)”. Pfeil discloses a hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride; therefore, the process of production is not given patentable weight, meeting the production process limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, and in instant application claim 7 . Pfeil does not teach the limitations of the above instant application claims 9-11 in one single express embodiment or Example. In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Pfeil to select the optimal (A), (B), (C), (D), and (E) components reacted at the optimal sequence at the desired concentrations with a reasonable predictability of success for the purpose of efficiently producing “a heat-curable, aqueous, solvent-free epoxy resin dispersion” with “outstanding storage stability, freedom from amine and paucity” for “coatings, especially corrosion-resistant baking primers, fillers and topcoats on, preferably, metallic substrates, and also for the preparation of interior and exterior coatings for crown caps and screw closures and for coil-coating materials”, see Pfeil, Col. 4, Lns. 16-67; Col. 5, Lns. 1-9; Col. 13, Lns. 53-63. A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying Pfeil to select the optimal (A), (B), (C), (D), and (E) components reacted at the optimal sequence at the desired concentrations as taught by Pfeil with a reasonable predictability of success for the purpose of efficiently producing “a heat-curable, aqueous, solvent-free epoxy resin dispersion” with “outstanding storage stability, freedom from amine and paucity” for “coatings, especially corrosion-resistant baking primers, fillers and topcoats on, preferably, metallic substrates, and also for the preparation of interior and exterior coatings for crown caps and screw closures and for coil-coating materials”, see Pfeil, Col. 4, Lns. 16-67; Col. 5, Lns. 1-9; Col. 13, Lns. 53-63; and MPEP 2143 I. B-D. Furthermore, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Pfeil teaches (A), (B), (C), (D), and (E) components to produce a hydrophilic epoxy resin, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try to select the optimal (A), (B), (C), (D), and (E) components reacted at the optimal sequence at the desired concentrations to produce a hydrophilic epoxy resin. As stated in Sakraida v. Ag Pro, Inc. , 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141. Selection of a known materials, such as the optimal (A), (B), (C), (D), and (E) components of Pfeil, based on their suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges”, such as the concentration of the components in the coating, “is the optimum combination of percentages.” In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05. Merely discovering and claiming a new benefit of an old process cannot render the process again patentable, for example reversing the order of the prior art process steps, selection of any order of performing process steps, and selection of any order of mixing ingredients are all prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04 IV.C. and In re Woodruff , 919 F.2d 1575, 1578 (Fed. Cir. 1990). The following rejection is in the spirit of compact prosecution 07-21-aia AIA Claim s 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeil et al. (US5612394, patented 18 March 1997, hereinafter Pfeil) in view of Nichols et al. (US20050261462, published 24 November 2005, hereinafter Nichols) . Regarding the limitations of instant application claim 1, Pfeil teaches a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the product hydrophilic epoxy resin in instant application claim 1 ; The epoxy resin (A) is first prepared by condensation of components (A-1) and (A-2) and, if desired, (A-3), at elevated temperatures, in general at from 100° to 220° C. and preferably at 150° to 180° C., in the presence of a catalyst which accelerates the condensation”, see Col. 12, Lns. 33-51, and A-1 are suitable aromatic polyols, such as aromatic polycarboxylic acids including terephthalic acid, A-2 is “2,2-bis(4-hydroxyphenyl)propane (bisphenol A)”, with an “epoxide equivalent mass” of “between 100 and 2000 g/mol, in particular between 100 and 350 g/mol”, “modifying compounds (A-3) are compounds having at least two functional groups which are able to react with the epoxide groups of component (A-1), and which compounds cannot be classified under the aromatic polyols (A-2)”, such as polyethylene glycol, see Col. 5, Ln. 16-Col. 6, Ln. 42, where curing agents (D), such as trimellitic anhydride are used to cure the epoxy resin, see Col. 10, Lns. 1-59, i.e. the hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride, meeting: Reacting a multi-carboxylic acid compound with a bisphenol epoxy resin in instant application claim 1 ; and, Reacting the hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride in instant application claim 1 . Regarding the limitations of instant application claim 4, Pfeil teaches “epoxide compounds (A-1) and (B-1) may be any type of polyepoxides having on average at least two epoxide groups per molecule”, such as polyethylene glycols, see Col. 5, Lns. 22-32 and 56-65, and “polyols (B-1-a) are preferably polyether-polyols (polyalkylene glycols) that have average molecular masses (M w ; gel permeation chromatography; polystyrene standard) of from 200 to 20,000 g/mol, preferably between 600 and 12,000 g/mol, in particular from 2000 to 8000 g/mol”, where “[p]olyethylene glycols preferably are used”, see Col. 6, Lns. 46-69, meeting the polyethylene glycol within the molecular weight in instant application claim 4 . Regarding the limitations of instant application claim 5, Pfeil teaches curing agents (D), such as trimellitic anhydride are used to cure the epoxy resin, see Col. 10, Lns. 1-59, meeting the specific anhydride in instant application claim 5 . Regarding the limitations of instant application claims 6 and 7, Pfeil teaches A-2 is “2,2-bis(4-hydroxyphenyl)propane (bisphenol A)”, with an “epoxide equivalent mass” of “between 100 and 2000 g/mol, in particular between 100 and 350 g/mol”, see Col. 5, Lns. 16-65, meeting the specific bisphenol epoxy resin bisphenol A and within the epoxy equivalent range in instant application claim 6 and in instant application claim 7. Regarding the limitations of instant application claim 8, Pfeil discloses a hydrophilic epoxy resin dispersion, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, for “the production of coatings, especially corrosion-resistant baking primers, fillers and topcoats on, preferably, metallic substrates, and also for the preparation of interior and exterior coatings for crown caps and screw closures and for coil-coating materials which still undergo severe deformation after crosslinking, and relates in particular to their use for the interior coating of cans for beverages and preserves”, see Col. 5, Lns. 1-21. The dispersion coating comprises a “ratio of epoxy resin (A) to addition polymer (C) is generally from 99.5:0.5 to 20:80, preferably between 5:95 and 50:50, % by weight. This polymer (C) may if desired be composed of monomers which contain carboxyl groups and/or glycidyl groups, preferably to the extent of from 2.5 to 25% by weight. The amount of curing agent (D) is generally chosen such that, taking into account the reactive groups which may be present in (C), a ratio of equivalents of COOH to epoxide groups of from 0.5:1 to 5:1, preferably 0.6:1 to 1.5:1, is reached. The content of dispersant (B) is related to all the water-insoluble components of the dispersion, i.e., to the epoxy resin (A), the polymer (C) and, if appropriate, to the curing agent (D) if the latter is not soluble in water, and is generally between 2.5 and 25% by weight, preferably between 5 and 15% by weight. The composition of the dispersant in terms of (B-1):(B-2) is between 0:100 and 100:0, preferably greater than 75:25”, see Col. 11, Lns. 39-65, and “a mixture is prepared of from 20 to 99% by weight, preferably from 40 to 60% by weight, of the condensation product and an aqueous medium comprising (based on the total mixture) up to 50% by weight, preferably up to 30% by weight, of an organic solvent and up to 80% by weight, preferably from 15 to 60% by weight, of water, and this mixture is used as dispersant (B-1) or (B)”, see Col. 7, Lns. 40-64, i.e., a dispersion comprising the hydrophilic epoxy resin product at 20% by weight and water at 20 to 30% by weight, meeting: The aqueous coating dispersion within the range of the hydrophilic epoxy resin and within the range of water in the coating in instant application claim 8 . Regarding the limitations of instant application claims 9-11, Pfeil teaches the “dispersant (B) is a condensation product (B-1) of a polyol (B-1-a) and an epoxide compound (B-1-b) that has at least two epoxide groups, which is optionally blended with other, preferably nonionic surfactants (B-2)”, see Col. 6, Ln. 42-Col. 7, Ln. 2, where “other dispersants (B-2)” may be bisphenols, see Col. 7, Ln. 66-Col. 8, Ln. 24, and the “composition of the dispersant in terms of (B-1):(B-2) is between 0:100 and 100:0, preferably greater than 75:25”, see Col. 11, Lns. 39-65, and “a mixture is prepared of from 20 to 99% by weight, preferably from 40 to 60% by weight, of the condensation product and an aqueous medium comprising (based on the total mixture) up to 50% by weight, preferably up to 30% by weight, of an organic solvent and up to 80% by weight, preferably from 15 to 60% by weight, of water, and this mixture is used as dispersant (B-1) or (B)”, see Col. 7, Lns. 40-64, i.e., an additive co-solvent of an organic solvent, where “conventional additives in the context of (E), which may possibly be present in the dispersions according to the invention, are the conventional paint additives such as pigments, pigment pastes, antioxidants, leveling agents and thickeners, antifoams/deaerating agents and/or wetting agents, reactive diluents, fillers, catalysts, preservatives, protective colloids and the like”, see Col. 12, Lns. 16-24, meeting: Within the range of the additional bisphenol epoxy resin in instant application claim 9 ; and, Within the range of a specific organic solvent co-solvent additive in instant application claim 10 and in instant application claim 11 . Regarding the product-by-process limitations of instant application claims 1-7, Pfeil discloses a hydrophilic epoxy resin, see Col. 3, Lns. 49-60; Col. 4, Lns. 5-67; Col. 1o, Lns. 36-39, meeting the product hydrophilic epoxy resin in instant application claim 1 . Instant application claim 1 states the product “being formed by reacting a multi-carboxylic acid compound with a bisphenol epoxy resin, wherein the multi-carboxylic acid compound is formed by reacting a first compound with an anhydride compound, and wherein the first compound is formed by reacting poly(ethylene glycol) with bis(2-hydroxyethyl) benzenedicarboxylate or dialkyl benzenedicarboxylate, wherein the bis(2-hydroxyethyl)benzenedicarboxylate has a chemical structure of …” . Instant application claims 2-7 are drawn to limitations associated with the process of producing the product hydrophilic epoxy resin in instant application claim 1. MPEP 2113(I) states “even 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) (citations omitted)”. Pfeil discloses a hydrophilic epoxy resin (A) obtained by reacting compound (A-1) terephthalic acid and (A-3) polyethylene glycol to obtain a multi-carboxylic acid then reacting with bisphenol A (A-2) and curing with (D) a trimellitic anhydride; therefore, the process of production is not given patentable weight, meeting the production process limitations in instant application claim 1, in instant application claim 2, in instant application claim 3, in instant application claim 4, in instant application claim 5, in instant application claim 6, and in instant application claim 7 . Pfeil does not teach the instant application claim 1 product-by-process limitations of being formed by wherein the multi-carboxylic acid compound is formed by reacting a first compound with an anhydride compound, and wherein the first compound is formed by reacting poly(ethylene glycol) with bis(2-hydroxyethyl) benzenedicarboxylate or dialkyl benzenedicarboxylate, wherein the bis(2-hydroxyethyl) benzenedicarboxylate has a chemical structure of PNG media_image1.png 158 408 media_image1.png Greyscale ; and wherein the dialkyl benzenedicarboxylate has a chemical structure of PNG media_image2.png 134 302 media_image2.png Greyscale , wherein each of R 1 is independently H or C 1-4 alkyl group, and each of R 2 is independently C 1-4 alkyl group; and, The limitations of instant application claims 2 and 3. Nichols is in the known prior art of “methods of making titanium-catalyzed, polyethylene terephthalate resins”, see Abstract. Regarding the limitations of instant application claims 1-5, Nichols teaches methods of making polyethylene terephthalate resins by “reacting a terephthalate component and a diol component (i.e., a terephthalate moiety and a diol moiety) in the presence of a titanium catalyst to form polyethylene terephthalate precursor s , which are then polymerized via melt phase polycondensation to form polymers of polyethylene terephthalate of a desired molecular weight”, see Para. [0027], where “dimethyl terephthalate and excess ethylene glycol” is reacted “to form bis(2-hydroxyethyl)-terephthalate monomers” in excess ethylene glycol, see Paras. [0101]-[0102];[0119], “the reactive carrier is a polyol (e.g., polyethylene glycol) having a molecular weight that permits the polyol to be pumped at near ambient temperatures (e.g., less than 60° C.) and that is introduced to the polyethylene terephthalate polymers in quantities such that bulk properties of the polyethylene terephthalate polymers are not significantly affected (e.g., quantities such that its concentration in the polymers is less than about one weight percent)”, see Para. [0126], the “molecular weight of the reactive carrier is typically less than 6000 g/mol, preferably less than 4000 g/mol, more preferably between about 300 and 2000 g/mol, and most preferably between about 400 and 1,000 g/mol”, see Para. [0129], meeting: The reacting to form the first compound in instant application claim 1 ; The bis(2-hydroxyethyl)benzenedicarboxylate is bis(2-hydroxyethyl) terephthalate in instant application claim 1 and in instant application claim 2 ; The dialkyl benzenedicarboxylate is a dimethyl benzene dicarboxylate, such as dimethyl terephthalate, in instant application claim 1 and in instant application claim 3 ; Within the polyethylene glycol molecular weight range in instant application claim 4 ; “[A]dditives can be incorporated via reactive carrier into the polyethylene terephthalate resins”, where “branching agents” are reacted with the polyester resin and “late addition via reactive carrier significantly reduces the time additives are exposed to high polycondensation temperatures”, see Paras. [0123]-[0128], i.e., the branching agents added to the polyester resin create multi-carboxylic compounds. “Chain branching agents can be introduced, for example, during esterification or melt phase polymerization”, such as “trimellitic anhydride (TMA) … pyromellitic dianhydride (PMDA) … 1,4,5,8-naphthalene tetracarboxylic dianhydride”, see Paras. [0123]-[0128]; [0149]-[0150], meeting: Reacting the first compound polyester by late addition, such as in the melt phase, with an anhydride to create a multi-carboxylic acid compound in instant application claim 1 ; The specific anhydride trimellitic anhydride in instant application claim 5 ; In reference to the above claims, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Pfeil to select the optimal (A), (B), (C), (D), and (E) components reacted at the optimal sequence at the desired concentrations as taught by Nichols with a reasonable predictability of success for the purpose of efficiently producing high clarity, heat- setting “polyethylene terephthalate resins” useful in films, see Nichols, Paras. [0012];[0022];[0030];[0046];[0067];[0123]. A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying Pfeil to select the optimal (A), (B), (C), (D), and (E) components reacted at the optimal sequence at the desired concentrations as taught by Nichols with a reasonable predictability of success for the purpose of efficiently producing high clarity, heat-setting “polyethylene terephthalate resins” useful in films, see Nichols, Paras. [0012];[0022];[0030];[0046];[0067];[0123]; and MPEP 2143 I. B-D. The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Pfeil and Nichols both teach reacting polyethylene glycols, terephthalates, and anhydrides in the polyester resin industry, a person of ordinary skill in the art has good reason to modify Pfeil by relying upon Nichols before the effective filing date of the claimed invention for knowledge generally available within the polyester resin art regarding the selection of polyethylene glycols, terephthalates, and anhydrides and the sequence of adding the reactants, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing high clarity, heat-setting “polyethylene terephthalate resins” useful in films, see Nichols, Paras. [0012];[0022];[0030];[0046];[0067];[0123]; and, MPEP 2141 and 2143 I. B-D. As stated in Sakraida v. Ag Pro, Inc. , 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141. Selection of a known materials, such as the optimal (A), (B), (C), (D), and (E) components of Pfeil and Nichols, based on their suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges”, such as the concentration of the components in the coating, “is the optimum combination of percentages.” In re Hoeschele , 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05. Merely discovering and claiming a new benefit of an old process cannot render the process again patentable, for example reversing the order of the prior art process steps, selection of any order of performing process steps, and selection of any order of mixing ingredients are all prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04 IV.C. and In re Woodruff , 919 F.2d 1575, 1578 (Fed. Cir. 1990). Conclusion No claims are allowed. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /YO/Examiner, Art Unit 1692 /FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699 Application/Control Number: 18/392,766 Page 2 Art Unit: 1692 Application/Control Number: 18/392,766 Page 3 Art Unit: 1692 Application/Control Number: 18/392,766 Page 4 Art Unit: 1692 Application/Control Number: 18/392,766 Page 5 Art Unit: 1692 Application/Control Number: 18/392,766 Page 6 Art Unit: 1692 Application/Control Number: 18/392,766 Page 7 Art Unit: 1692 Application/Control Number: 18/392,766 Page 8 Art Unit: 1692 Application/Control Number: 18/392,766 Page 9 Art Unit: 1692 Application/Control Number: 18/392,766 Page 10 Art Unit: 1692 Application/Control Number: 18/392,766 Page 11 Art Unit: 1692 Application/Control Number: 18/392,766 Page 12 Art Unit: 1692 Application/Control Number: 18/392,766 Page 13 Art Unit: 1692 Application/Control Number: 18/392,766 Page 14 Art Unit: 1692 Application/Control Number: 18/392,766 Page 15 Art Unit: 1692 Application/Control Number: 18/392,766 Page 16 Art Unit: 1692 Application/Control Number: 18/392,766 Page 17 Art Unit: 1692 Application/Control Number: 18/392,766 Page 18 Art Unit: 1692 Application/Control Number: 18/392,766 Page 19 Art Unit: 1692 Application/Control Number: 18/392,766 Page 20 Art Unit: 1692 Application/Control Number: 18/392,766 Page 21 Art Unit: 1692 Application/Control Number: 18/392,766 Page 22 Art Unit: 1692 Application/Control Number: 18/392,766 Page 23 Art Unit: 1692 Application/Control Number: 18/392,766 Page 24 Art Unit: 1692
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