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 is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim 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.
Claim(s) 1-10, 12, 16-17, and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibanel et al. (WO 2018/085052).
Regarding Claims 1, 9, and 10, Gibanel et al. (WO’052) teach a beverage can end coil coating composition comprising: an acid- or anhydride-functional acrylic latex comprising an emulsion polymerized polymer [006,008]; a carboxyl-reactive crosslinker that is nitrogen-containing and is not derived from formaldehyde [009,055]; and optionally, a lubricant [0145], wherein the coating composition:(i) includes a crosslinker not derived from formaldehyde (i.e. “if any”)[057];(ii) is free of bisphenol A, bisphenol F, and bisphenol S [007-011];(iii) is optionally free of styrene [006-008,010-011];(iv) has a glass transition temperature (Tg), of 20°C to 40°C [0126].
The limitation “as determined by Differential Scanning Calorimetry (DSC), when applied to a cleaned and chrome-free, zirconium- pretreated aluminum panel and cured for 12 seconds to a peak metal temperature of 249°C to achieve a dried film thickness of approximately 11 (i.e., 10-12) grams per square meter” recites testing conditions to determine a property. At issue are properties of the claimed composition, not an intended use or testing procedures for determining the property. WO’052 teaches that “the polymer latex” (i.e. the acrylic latex, described by WO’052) can have a glass transition temperature (Tg) within the recited range.
The limitation “when applied to a cleaned and chrome-free, zirconium-pretreated aluminum panel and cured for 12 seconds to a peak metal temperature of 249°C to achieve a dried film thickness of approximately 11 (i.e., 10-12) grams per square meter and formed into a fully converted (typically, 206) standard opening beverage can end, passes less than 5 milliamps of current, while being exposed for 4 seconds to an electrolyte solution containing 1% by weight of NaCl dissolved in deionized water” recites properties of a product of an intended use of the claimed composition, and the intended use is not given patentable weight for the composition. WO’052 teaches every compositional limitation of Claim 1; therefore, the claimed composition is considered to be capable of forming a film were, hypothetically, the claimed composition to be used in the recited intended use, not given patentable weight.
Also, the limitation “emulsion polymerized polymer” is not given significant weight as a method for making the claimed composition).
Regarding Claim 2, WO’052 teaches that the acrylic latex has an acid number of greater than 40 mg KOH/gram latex [0117].
Regarding Claim 3, WO’052 teaches an acrylic latex with an acid number of less than 100 mg KOH/g [0129].
Regarding Claim 4, WO’052 teaches that the acrylic latex comprises at least 50 wt % of an emulsion polymerized polymer, based on the total solids weight of the acrylic latex [0245]. Also, the limitation “emulsion polymerized polymer” is not given significant weight as a method for making the claimed composition.
Regarding Claim 5, the acrylic latex is formed from polymerization of an ethylenically unsaturated monomer component comprising two or more different monomers [091].
Regarding Claim 6, the the ethylenically unsaturated monomer component includes at least one ethylenically unsaturated acid- or anhydride- functional monomer, including salt thereof, and at least one (meth)acrylate monomer [0120-0121, 0231-0232].
Regarding Claim 7, WO’052 teaches a (meth)acrylate monomer capable of contributing to a Tg greater than 50 C of a polymer (e.g. methyl methacrylate, cyclohexyl methacrylate) [058,0232,0292,0293-0294,0307]. NOTE: The limitation “comprises a (meth)acrylate monomer, a homopolymer of the (meth)acrylate monomer having a Tg of greater than 50 C” is considered to characterize a monomer, and is not construed to require a homopolymer. In addition, precursor monomers are not given significant patentable weight to the claimed composition, which does not requires a polymer (acrylic latex), not precursor monomers.
Regarding Claim 8, WO’052 teaches that the monomer component comprises acrylic acid, ethyl acrylate, and cyclohexyl methacrylate (CHMA) [0312].
Regarding Claim 12, WO’052 teaches a crosslinker with hydroxyl groups, including multiple hydroxyl groups [046]. Specifically, WO’052 teaches crosslinker under the trademark PRIMID QM1260 from EMS-GRILTECH, which has a hydroxyl number of 550-650 mg KOH/g [055].
Regarding Claim 16, WO’052 teaches the coating comprising 4-8.5 wt% of the carboxyl-reactive crosslinker, based on total solids weight of the coating composition [0157-0158,0236].
Regarding Claim 17, WO’052 teaches a powder coating [0177] and also a dried composition [0172,0282,0283]. The recited method of making (i.e. “spray dried”) is not given patentable weight for the claimed composition.
Regarding Claim 21, WO’052 teaches the uncured coating composition of Claim 1. Properties of a cured composition are dependent not only on properties of the uncured coating composition, but also on curing conditions, which are an aspect of an intended use, not given significant patentable weight for the claimed product (a coating composition).
Regarding Claim 22, WO’052 teaches an acrylic latex with ethylenically unsaturated monomer component in an amount of less than 15 wt. % of acid or anhydride functional ethylenically unsaturated monomer [0103]. To the extent that Claim 22 recites method steps and precursors (monomers) of an acrylic latex in the claimed coating composition, steps and precursors in a method of making a claimed composition are not given significant patentable weight to the claimed composition.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibanel et al. (WO 2018/085052).
Regarding Claim 11, WO’052 the coating composition: includes lubricant [0145,0148]; includes at least 50 wt % of the acrylic latex, based on the total solids weight of the coating composition [0143]; includes at least 5 wt % of one or more organic solvents, based on the total weight of the coating composition [0164-0165]. WO’052 teaches that the final acrylic latex includes 34 wt % to 35 wt % total non-volatile solids content [0307] WO’052 fails to teach that the coating composition includes 34 wt % to 35 wt % total non-volatile solids content, based on the total weight of the composition. However, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibanel et al. (WO 2018/085052) in view of Tone et al. (JP 2016053121).
Regarding Claims 13-15, WO’052 fails to teach wherein the acrylic latex and the carboxyl-reactive crosslinker are present in the coating composition in amounts to provide an excess of carboxyl equivalents in the acrylic latex relative to hydroxyl equivalents in the crosslinker. Tone et al. (JP’121) is analogous art in the field of forming films from carboxyl-functional acrylic polymers and hydroxyl-functional crosslinkers and provides evidence that the ratio of carboxyl to hydroxyl groups is a result-effective variable known in the prior art to effect cohesive strength and adhesion [0068]. Moreover, JP’121 suggests a ratio, including an excess of carboxyl groups in a ratio of 0.8 to 1.5 (id.). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of WO’052 by providing a ratio within the recited ranges through routine optimization.
Response to Arguments
Applicant’s amendment to the claims, filed 24 October 2025, with respect to the rejection of Claim 7 under 35 USC 112(b) has been fully considered and overcomes the previous rejection under this paragraph. The rejection of Claim 7 under 35 USC 112(b) has been withdrawn.
Applicant's arguments, filed 24 October 2025, with respect to the rejections of Claims 1-10, 12, and 16-17 under 35 USC 102(a)(1) and of Claims 11 and 13-15 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument that Gibanel fails to teach a Tg of the cured coating composition (Remarks, p. 7), the argument is not persuasive, because properties of a cured coating composition are dependent not only on properties of an uncured coating composition but also on curing conditions, which are an aspect of an intended use, which is not given significant patentable weight for the claimed product.
In response to Applicant’s argument concerning parameters for Tg determination and whether the curing conditions are better characterized as testing parameters or intended use features (Remarks, p. 7), either way the conditions for curing are not given patentable weight for the coating composition itself, since the characteristics of the cured coating, depend, at least in part on curing conditions; Applicant has not demonstrated that the claimed coating composition itself is patentably distinct from that taught by Gibanel or that recited curing characteristics do not characterize a particular curing process, rather than the claimed composition, independent of the recited curing conditions.
In response to Applicant’s argument that because all examples in one section have a solids content (20%) less than a more broadly taught solids content (less that 40 %, more preferably less than about 30%), one would not have been motivated to prepare a coating composition within the range of 30-40% (Remarks, p. 8), the argument is not persuasive and merely dismisses some teachings in favor of others. Applicant has provided no reasons why a person of ordinary skill in the art would have ignored the broader ranges in WO’052 and accepted only narrower and lower ranges in specific embodiments. Moreover, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
In response to Applicant’s argument that Tone is not analogous art (Remarks, p. 8), Tone is relevant to properties of coating compositions including acrylic polymers in combination with carboxyl crosslinkers, which are found in the coating composition of WO’052. Thus, Tone is probative of the effect which varying a ratio of carboxyl in a crosslinking agent to hydroxyl groups in acrylic polymers has on properties of coating compositions containing acrylic polymers and carboxyl-containing cross-linking agents. Moreover, the claims are directed to a coating composition and do not require any particular intended use or exclude any of the intended uses for the composition in Tone. Tone is reasonably pertinent to Applicant’s problem of optimizing concentrations of crosslinker to acrylic polymer to obtain desirable properties.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712