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 .
Status of Claims
Claims 1-8 are pending in the current application.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “a polol monomer.” This recitation appears to contain a typographical error, and should instead recite “a polyol monomer.”
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 1-8 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 "the mixture." There is insufficient antecedent basis for this limitation in the claim. The limitation “the mixture” is not previously recited, and it is unclear what specific claimed components are required to constitute the mixture. For the purposes of examination, the claim is interpreted as instead reciting “adding a polyacid monomer to the prepolymer to form a mixture and subjecting the mixture ….”
Claims 2-8 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from claim 1 as rejected above and do not remedy the aforementioned deficiency.
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.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chu et al. (CN 110903471 A, herein English machine translation utilized for all citations).
Regarding Claim 1, Chu teaches a silicone-modified polyester copolymer resin for powder coatings obtained (prepared) by a melt polycondensation reaction comprising: reacting diols (i.e., polyol monomers) and an organosilicon intermediate (i.e., a silicone resin) to prepare a distillate (i.e., a prepolymer), adding a diacid (i.e., a polyacid monomer) and catalyst to the distillate to conduct a polycondensation reaction to yield the silicone-modified polyester copolymer resin, and then applying a vacuum to remove water and solvent from the reaction until an acid value of around less than 5 mgKOH/g, a hydroxyl value of 35-45 mgKOH/g, a viscosity of 1000-3500 mPa*s at 200oC (10-35 Poise at 200oC), and a glass transition temperature (Tg) of 45-60oC are achieved (Chu, [0002], [0008]-[0014], [0021]-[0023]). Chu’s Tg range and hydroxyl value range both fall within the claimed ranges of 35oC or higher and 20-100 mgKOH/g, respectively, and therefore, both satisfy the claimed ranges (MPEP 2131.03). “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). See MPEP 2113. The silicone-modified polyester copolymer resin of the prior art discloses a product which reasonably appears to be either identical or only slightly different than the claimed product-by-process silicone-modified polyester resin, and therefore, absent any objective evidence showing to the contrary, the addition of the process limitations of claim 1 do not provide a patentable distinction over the prior art.
Regarding Claim 7, Chu teaches a powder coating composition comprising the silicone-modified polyester copolymer resin of claim 1 above, a blocked isocyanate curing agent, and carbon black and iron black pigments (Chu, [0015], [0029]-[0034], Table 2).
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.
Claims 2-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Chu et al. (CN 110903471 A, herein English machine translation utilized for all citations) as applied to claims 1 and 7 above, and further in view of Greene et al. (US 2007/0021579 A1).
Regarding Claim 2, Chu teaches the silicone-modified polyester copolymer resin as discussed above for claim 1. Chu teaches the silicone-modified polyester copolymer resin exhibits an acid value of around less than 5 mgKOH/g, a hydroxyl value of 35-45 mgKOH/g, a viscosity of 1000-3500 mPa*s at 200oC (10-35 Poise at 200oC), and a glass transition temperature (Tg) of 45-60oC (Chu, [0014]). Chu’s acid value overlaps the claimed range of 1 to 10 mgKOH/g, and therefore, renders obvious the claimed range (MPEP 2144.05). Chu’s viscosity range falls within the claimed range of 10-50 P, and therefore, satisfies the claimed range (MPEP 2131.03).
Chu remains silent regarding a number average molecular weight of 2,500-6,000 and remains silent regarding a softening point of 100-300oC.
Greene, however, teaches a siliconized polyester resin (i.e., a silicone-modified polyester resin) for powder coatings having a Tg of preferably 35-50oC, a number average molecular weight of 500-500,000, an acid value of preferably 0.2-10 mgKOH/g, a hydroxyl number of preferably 10-800 mgKOH/g, and a viscosity of preferably 4-60 Poise at 150-200oC, where the resin is formed from an organopolysiloxane silicone resin (Greene, Abstract, [0013]-[0014], [0018]-[0019], [0021]-[0035], [0040]). Greene’s number average molecular weight range encompasses the claimed range of 2,500-6,000, and therefore, renders obvious the claimed range (MPEP 2144.05). Greene teaches the organopolysiloxane silicone resin has a softening point in the range of 30-109oC (Greene, [0033]). Greene’s softening point range overlaps the claimed range of 100-130oC, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Chu and Greene both disclose silicone-modified polyester resins having substantially similar properties and characteristics for powder coating compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Greene’s organopolysiloxane silicone resin as Chu’s organosilicon intermediate to yield a silicone-modified polyester resin that is suitable for powder coating compositions; remains stable at room temperature; is capable of being coated on various substrates; and exhibits good weatherability, heat resistance, adhesion, corrosion resistance, scratch resistance, and mar resistance as taught by Greene (Greene, Abstract, [0009]-[0010], [0046]).
Regarding Claim 3, modified Chu teaches the organopolysiloxane resin can have a T unit structure R1aR2bSiO3/2 that renders obvious the claimed Formula 1 structure when there are 100 mol% of 5 T units in a branched structure, where R1 and R2 are independently and preferably methyl and phenyl groups, a and b are 0 or 1, and can be terminated with conventional end groups (Greene, [0021]-[0033]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried a organopolysiloxane resin structure that renders obvious Formula 1 of claim 1 from the finite number of 100 mol% T unit species disclosed by modified Chu with a predictable and reasonable expectation of success (MPEP 2143).
Regarding Claim 4, modified Chu teaches the organopolysiloxane resin can have R1 and R2 groups being independently and preferably represented by methyl and phenyl groups, where the ratio of phenyl to methyl groups is 5:1 to 1.1:1 (Greene, [0032]-[0033]). Modified Chu’s ratio range falls within the claimed ratio range of 1:0 to 1:1, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 5, modified Chu teaches the organopolysiloxane silicone resin has a weight average molecular weight of preferably 1,200-14,000 and a softening point in the range of preferably 45-60oC (Greene, [0033]). Modified Chu’s weight average molecular weight encompasses the claimed range of 1,200-4,000, and therefore, renders obvious the claimed range (MPEP 2144.05). Modified Chu’s softening point range falls within the claimed range of 20-85oC, and therefore, satisfies the claimed range (MPEP 2131.03). Although modified Chu does not explicitly disclose a number average molecular weight, based upon the substantially similar properties and characteristics of modified Chu’s and the claimed silicone-modified polyester resins and the similar weight average molecular weight ranges, one of ordinary skill in the art would have concluded that the scope of modified Chu’s organopolysiloxane silicone resin reasonably includes embodiments that have number average molecular weights that at least render obvious the claimed range with a predictable and reasonable expectation of success absent any objective evidence showing to the contrary (MPEP 2143, MPEP 2144.05).
Regarding Claim 8, Chu teaches powder coating composition comprising the silicone-modified polyester copolymer resin of claim 1 above, a curing agent, and pigments as discussed for claim 7 above.
Chu remains silent regarding a powder coating composition with content as defined by claim 8.
Greene, however, teaches a siliconized polyester resin (i.e., a silicone-modified polyester resin) for powder coatings, where a powder coating composition comprises 20-90 wt% of the silicone-modified polyester resin, 10-80 wt% of a crosslinker (i.e., a curing agent), and 0.25-70 wt% of a pigment (Greene, Abstract, [0040]). Greene’s silicone-modified polyester resin range encompasses the claimed range of 40-60 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). Greene’s curing agent range overlaps the claimed range of 5-20 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05). Greene’s pigment range overlaps the claimed range of 0.1-50 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Chu and Greene both disclose silicone-modified polyester resins having substantially similar properties and characteristics for powder coating compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Greene’s powder coating composition content values to form Chu’s powder coating composition to yield a silicone-modified polyester resin powder coating that is suitable for powder coating compositions; remains stable at room temperature; is capable of being coated on various substrates; and exhibits good weatherability, heat resistance, adhesion, corrosion resistance, scratch resistance, and mar resistance as taught by Greene (Greene, Abstract, [0009]-[0010], [0046]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chu et al. (CN 110903471 A, herein English machine translation utilized for all citations) as applied to claim 1 above.
Regarding Claim 6, Chu teaches the silicone-modified polyester copolymer resin as discussed above for claim 1. Chu teaches the silicone-modified polyester copolymer resin comprises 37-42 wt% of diols (polyol monomers), 34-47 wt% diacids (polyacid monomers), and 35-45 wt% of organosilicon intermediates (silicone resin intermediates) (Chu, [0008]-[0013]). Chu’s diol and organosilicon intermediate ranges fall within the claimed ranges of 25-45 wt% and 20-50 wt%, respectively, and therefore, satisfy the claimed ranges (MPEP 2131.03). Chu’s diacid range overlaps the claimed range of 20-40 wt%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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