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 of Group I, claims 1-3, in the reply filed on July 16, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 4 (method of making) and 5-10 (method of using) are withdrawn from consideration as being directed to a non-elected invention.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 109233574 (‘574) in view of CN 109294423 (‘423).
Regarding claim 1, CN ‘574 teaches a flexible polymer electrophoretic coating (= a cathodic electrophoretic coating) [ρ [0009]], comprising:
• an emulsion (= the emulsion) [ρ [0012]] and
• a color paste (= the color paste) [ρ [0011]];
wherein the emulsion comprises the following raw materials in parts by weight:
۰ 20-40 parts of an epoxy resin (= 30-40 parts modified epoxy resin) [ρ [0012]];
۰ 2-3 parts of lactic acid (= 1-8 parts neutralizer (ρ [0012]) and preferably, the neutralizing agent is at least one of lactic acid or acetic acid (ρ [0028])); and
۰ 50-70 parts of water (= 30-50 parts deionized water) [ρ [0012]]; and
the color paste comprises the following raw materials in parts by weight:
۰ 5-10 parts of an epoxy resin (= 10-20 parts modified epoxy resin) [ρ [0011]];
۰ 0.5-2 parts of lactic acid (= 1-6 parts neutralizer (ρ [0011]) and preferably, the neutralizing agent is at least one of lactic acid or acetic acid (ρ [0028])); and
۰ parts of a colorant (= 3-23 parts pigment) [ρ [0011]].
CN ‘574 does not explicitly teach the following:
a. Wherein the emulsion comprises 1-5 parts of ethanolamine.
CN ‘574 teaches that:
The emulsion comprises the following components by mass: 30-40 parts modified epoxy resin, 2-8 parts emulsifier, 1-8 parts neutralizer, and 30-50 parts deionized water (ρ [0012]).
CN ‘423 teaches that the neutralizing agent in this invention is one or more of ammonia, ethanolamine, dimethylethanolamine, AMP-95, APS-190 and BD-800 (ρ [0037]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsion taught by CN ‘574 with wherein the emulsion comprises 1-5 parts of ethanolamine. The person with ordinary skill in the art would have been motivated to make this modification because CN ‘574 teaches that the emulsion comprises 1-8 parts of a neutralizer where ethanolamine is a neutralizing agent1 in emulsion coating systems as taught by CN ‘423 in [0037] which would have adjusted the pH of a resin solution.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
b. Wherein the emulsion comprises 1-5 parts of propylene glycol methyl ether acetate.
CN ‘574 teaches that:
The emulsion comprises the following components by mass: 30-40 parts modified epoxy resin, 2-8 parts emulsifier, 1-8 parts neutralizer, and 30-50 parts deionized water (ρ [0012]).
CN ‘423 teaches that:
The co-solvent is one or more of diethylene glycol butyl ether, propylene glycol butyl ether, dipropylene glycol butyl ether, propylene glycol methyl ether acetate and propylene glycol diacetate (ρ [0042]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsion taught by CN ‘574 with wherein the emulsion comprises propylene glycol methyl ether acetate. The person with ordinary skill in the art would have been motivated to make this modification because propylene glycol methyl ether acetate is a co-solvent2 in emulsion coating systems as taught by CN ‘423 in [0042] which would have increased the solubility of a poorly-soluble compound.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
As to “1-5 parts,” considering that CN ‘423 is silent as to the specific concentration of
propylene glycol methyl ether acetate, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the concentration of propylene glycol methyl ether acetate through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
c. Wherein the emulsion comprises 0.1-1 parts of propylene glycol phenyl ether.
CN ‘574 teaches that:
The emulsion comprises the following components by mass: 30-40 parts modified epoxy resin, 2-8 parts emulsifier, 1-8 parts neutralizer, and 30-50 parts deionized water (ρ [0012]).
CN ‘423 teaches that:
In this invention, the film-forming aid is one or more of 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate, tripropylene glycol n-butyl ether, propylene glycol phenyl ether, dipropylene glycol n-butyl ether, diethylene glycol monobutyl ether, and propylene glycol methyl ether (ρ [0032]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the emulsion taught by CN ‘574 with wherein the emulsion comprises propylene glycol phenyl ether. The person with ordinary skill in the art would have been motivated to make this modification because propylene glycol
phenyl ether in emulsion coating systems would have aided in film-forming as taught by CN ‘423 in [0032].
MPEP § 2143(I)(A) states that “combining prior art elements according to known
methods to yield predictable results” may be obvious. The claimed elements were known in the
prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
As to “0.1-1 parts,” considering that CN ‘423 is silent as to the specific concentration of propylene glycol phenyl ether, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the concentration of propylene glycol phenyl ether through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
d. Wherein the color paste comprises 0.1-1 parts of ethanolamine.
CN ‘574 teaches that
The color paste comprises the following components by mass: 10-20 parts modified epoxy resin, 5-15 parts environmentally friendly cosolvent, 1-6 parts neutralizer, 0.1-0.5 parts surfactant, 25-40 parts deionized water, 10-30 parts kaolin, and 3-23 parts pigment (ρ [0011]).
CN ‘423 teaches that the neutralizing agent in this invention is one or more of ammonia, ethanolamine, dimethylethanolamine, AMP-95, APS-190 and BD-800 (ρ [0037]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the color paste taught by CN ‘574 with wherein the color paste comprises 0.1-1 parts of ethanolamine. The person with ordinary skill
in the art would have been motivated to make this modification because CN ‘574 teaches that
the color paste comprises 1-6 parts neutralizer where ethanolamine is a neutralizing agent3 as taught by CN ‘423 in [0037] which would have adjusted the pH of a resin solution.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
e. Wherein the color paste comprises 1-3 parts of propylene glycol methyl ether
acetate.
CN ‘574 teaches that:
The color paste comprises the following components by mass: 10-20 parts modified epoxy resin, 5-15 parts environmentally friendly cosolvent, 1-6 parts neutralizer, 0.1-0.5 parts surfactant, 25-40 parts deionized water, 10-30 parts kaolin, and 3-23 parts pigment (ρ [0011]).
CN ‘423 teaches that:
The co-solvent is one or more of diethylene glycol butyl ether, propylene glycol butyl ether, dipropylene glycol butyl ether, propylene glycol methyl ether acetate and propylene glycol diacetate (ρ [0042]).
It would have been obvious to a person having ordinary skill in the art before the
effective filing date of the claimed invention to modify the color paste taught by CN ‘574 with wherein the color paste comprises propylene glycol methyl ether acetate. The person with ordinary skill in the art would have been motivated to make this modification because propylene glycol methyl ether acetate is a co-solvent4 in emulsion coating systems as taught by CN ‘423 in [0042] which would have increased the solubility of a poorly-soluble compound.
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing
more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
As to “1-3 parts,” considering that CN ‘423 is silent as to the specific concentration of propylene glycol methyl ether acetate, and hence could vary in a wide range, it would have
been obvious to one having ordinary skill in the art to have optimized the concentration of propylene glycol methyl ether acetate through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
f. Wherein the color paste comprises 0.05-0.3 parts of propylene glycol phenyl ether.
CN ‘574 teaches that:
The color paste comprises the following components by mass: 10-20 parts modified epoxy resin, 5-15 parts environmentally friendly cosolvent, 1-6 parts neutralizer, 0.1-0.5 parts surfactant, 25-40 parts deionized water, 10-30 parts kaolin, and 3-23 parts pigment (ρ [0011]).
CN ‘423 teaches that:
In this invention, the film-forming aid is one or more of 2,2,4-trimethyl-1,3-pentanediol monoisobutyrate, tripropylene glycol n-butyl ether, propylene glycol phenyl ether, dipropylene glycol n-butyl ether, diethylene glycol monobutyl ether, and propylene glycol methyl ether (ρ [0032]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the color paste taught by CN ‘574 with wherein the color paste comprises propylene glycol phenyl ether. The person with ordinary skill in the art would have been motivated to make this modification because propylene glycol phenyl ether in emulsion coating systems would have aided in the film-forming as taught by CN ‘423 in [0032]).
MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the
prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness
determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945).”
As to “0.05-0.3 parts,” considering that CN ‘423 is silent as to the specific concentration of propylene glycol phenyl ether, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the concentration of propylene glycol phenyl ether through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
g. 0.1-1 parts of the colorant.
CN ‘574 teaches that:
The color paste comprises the following components by mass: 10-20 parts modified epoxy resin, 5-15 parts environmentally friendly cosolvent, 1-6 parts neutralizer, 0.1-0.5 parts surfactant, 25-40 parts deionized water, 10-30 parts kaolin, and 3-23 parts pigment (ρ [0011]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the colorant taught by CN ‘574 with 0.1-1 parts of the colorant. The person with ordinary skill in the art would have been motivated to make this modification because:
(i) CN ‘574 teaches that by adjusting the usage of each component such as pigment, the electrophoretic coating not only has strong penetration, but also, with the modified epoxy resin
as the main film-forming substance working in conjunction with the pigment, the electrophoretic coating has excellent anti-corrosion properties such as high hiding power, high oil resistance, high hardness, strong adhesion, and acid and alkali resistance. In addition, the formed paint film is uniform and has a low film thickness (ρ [0032]).
(ii) MPEP § 2144.05 states that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close that one skilled in the art would have expected them to have the same properties.”
h. A weight ratio of the emulsion to the color paste is (1-2):1.
CN ‘574 teaches that the pigment paste, emulsion and pure water are mixed to obtain cathodic electrophoretic coating (ρ [0018]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the coating taught by CN ‘574 with a weight ratio of the emulsion to the color paste is (1-2):1. The person with ordinary skill in the art would have been motivated to make this modification because considering that CN ‘574 is silent as to the weight ratio of the emulsion to the color paste, and hence could vary in a wide range, it would have been obvious to one having ordinary skill in the art to have optimized the weight ratio of the emulsion to the color paste through routine experimentation for best results.
MPEP § 2144.05(II)(A)) states that “where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Regarding claim 2, CN ‘423 teaches wherein the ethanolamine is monoethanolamine (= ethanolamine) [ρ [0037]].
Regarding claim 3, CN 574 teaches wherein the colorant is carbon black (= preferably, the pigment includes one of carbon black) [ρ [0031]].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 A neutralizing agent is added to an electrophoretic coating (e-coat) emulsion to change the resin into a water-soluble salt. This allows the solid resin particles to disperse evenly in water, stabilizes the bath pH, and gives the coating the electric charge it needs to move toward the metal part during the coating process.
2 A co-solvent is a secondary liquid added in amounts to a primary solvent to make hard-to-dissolve substances blend easily into a uniform solution.
3 A neutralizing agent is added to an electrophoretic coating (e-coat) emulsion to change the resin into a water-soluble salt. This allows the solid resin particles to disperse evenly in water, stabilizes the bath pH, and gives the coating the electric charge it needs to move toward the metal part during the coating process.
4 A co-solvent is a secondary liquid added in amounts to a primary solvent to make hard-to-dissolve substances blend easily into a uniform solution.
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