: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 .
Response to Amendment
Applicant’s claim amendments and remarks filed 6/30/2026 are entered and have
been fully considered. Applicant has corrected the issues previously objected to, therefore the objection to the abstract is withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1, 3, 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bruchmann et al US20070213501A1.
Regarding claims 1, 3, 6 and 16, Bruchmann teaches a hyperbranched polyester based on di-, tri- or polycarboxylic acids and di-, tri- or polyols, abstract. The hyperbranched polyester is used in coatings and inks ¶[0002], as a binder component ¶[0144], and the coatings and inks include colorants such as organic pigments ¶0138]. Bruchmann also teaches that a concentrated pigment dispersion can be prepared with a portion of the ink components, which reads on the claimed pigment paste.
The hyperbranched polyester is obtained by reacting a dicarboxylic acid (A2) or derivative thereof, which may be aromatic, and a diol (B2) with either a polyol with more than two OH groups (Cx) or a carboxylic acid with more than two acid groups (Dx), optionally with possible further building blocks (E) and optionally subsequently reacting the product with monocarboxylic acid (F), ¶[0028-0034].
The preferred polyol that would serve as the central molecule, (Cx), is selected from glycerol, diglycerol, triglycerol, trimethylolethane, trimethylolpropane, 1,2,4-butanetriol, pentaerythritol, and tris(hydroxyethyl) isocyanurate, ¶[0070].
In the branches, Phthalic, isophthalic and terephthalic acids (or the anhydride derivatives) are listed as preferred dicarboxylic acids for the component (A2), ¶[0058], which reads on the acid groups in the shell moiety connected to the core, the aromatic carboxylic acid of claim 1, and the functional groups reactive with the hydroxy groups of the core in claim 3.
The diols (B2) may be selected as polyethylene glycol or polypropylene glycol, ¶[0067], which reads on the claimed polyalkylene oxide portion of the shell moiety and reads on claims 6 and 16. Furthermore Bruchmann teaches that a hyperbranched polyester-polyether polyol would be water soluble ¶[0216] due to the alkylene oxide units. The PEG or PPG units would be indirectly covalently linked to the core through the carboxylic acid or anhydride group of (A2), which reads on claim 3.
Bruchmann teaches that the hyperbranched polyesters are synthesized from a central molecule, with branches extending outward similar to a dendrimer, ¶¶[0039-0041].
Bruchmann does not use the core/shell language, but based on the description of the hyperbranched polyester, the polyol compound (Cx) is the core moiety and the dicarboxylic acid (A2), diol (B2), and other building blocks (E) and optional (F) form the branches of the shell.
In example 4, ¶[0227], pentaerythritol is the polyol core, and the polyester branches are derived from phthalic anhydride and 1,4-cyclohexanedimethanol. Phthalic anhydride puts the aromatic groups in the branches (shell moiety) and is a derivative of phthalic acid which produces the same covalent bond with the core that phthalic acid produces.
Although Bruchmann does not exemplify using PEG or PPG as component (B2) for the branches, it is prima facie obvious to substitute one material for another to obtain predictable results when the materials fulfill the same use and function. “[I]t is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances.” In re Ruff 118 USPQ 343; In re Jezel 158 USPQ 99; “the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious.” In re Font, 213 USPQ 532.
Therefore it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to practice the invention of Bruchmann but substitute the 1,4-cyclohexanedimethanol in example 4 with polyethylene glycol or polypropylene glycol with the motivation of obtaining the predictable result of another permutation of a hyperbranched polyester for coatings and inks that is also water soluble as taught by Bruchmann.
Regarding claim 7, Bruchmann teaches the acid numbers of the hyperbranched polyesters and several examples fall within the claimed range, see table 1 page 16. Examples 4, 6, and 18 fall within the claimed range.
Regarding claim 8, Bruchmann teaches the pigment is in an amount of 5-25 wt.% in an ink composition, ¶[0138], and the hyperbranched polyester makes up 30%-100 wt.% of the binders where the total binders make up 5-35 wt.% of the ink ¶[0136]. Therefore if the hyperbranched polyester makes up 100% of the binders in the ink, the ratio of hyperbranched polyester to pigment is from 0.2/1 up to 7/1, which overlaps with the claimed range. This is calculated from 5/25 and 35/5.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Bruchmann because selection of the overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 9, Bruchmann teaches the pigment is in an amount of 5-25 wt.% in an ink composition, ¶[0138], and the hyperbranched polyester makes up 30%-100 wt.% of the binders where the total binders make up 5-35 wt.% of the ink ¶[0136], which overlap with the claimed ranges of organic pigment and reaction product. The solvent in the ink can make up 40%-80 wt.% of the composition, where the solvent can be organic or water, or a mixture, ¶[0137], which overlaps with the claimed ranges of both water and solvent.
Regarding claim 10, Bruchmann teaches the pigment is in an amount of 5-25 wt.% in an ink composition, ¶[0138], and the solvent in the ink can make up 40%-80 wt.% of the composition, ¶[0137], which means the total solids are 20-60 wt.% when solvent is included. Therefore, the ratio of pigment to solids is 5/60 to 25/20 which is 0.083 to 1.25, which overlaps with the claimed range.
Regarding claim 11, Bruchmann teaches other binders can be used with the hyperbranched polyester including polyurethanes, polyacrylates, and polyacrylate copolymers ¶[0136], and exemplifies Macrynal polyacrylate polyols ¶¶[0276-0277], which are hydroxyl functional acrylic polymers, as an additional binder used in the paint examples.
Regarding claim 12, Bruchmann teaches that water is a suitable solvent ¶[0137], and that having polyalkylene oxide units in the branches will make the polyester -polyether polyol water soluble, ¶[0216]. Additionally, the types of coating materials listed by Bruchmann suitable for the hyperbranched polyester list aqueous base coats as one type of coating, ¶[0180]. Therefore, it would be obvious that the coating composition can be made to be aqueous.
Regarding claims 13 and 15, Bruchmann teaches the hyperbranched polyesters are used in paint formulations and they are knife coated onto a sheet metal substrate to give a dried paint film thickness of 40µm, ¶0251]. The sheets were cured at 80°C and 130°C, ¶0256]. The inks are also applied to a substrate and cured, ¶[0307].
Regarding claim 14, Bruchmann teaches that the hyperbranched polyester is used in a print varnish which is clear with no pigment and is used as either a primer or as a protective varnish for producing multilayer materials, ¶¶[0141-0142]. It is further taught that through the use of printing inks, especially packaging inks, and print varnishes with binders based on highly branched and hyperbranched polyesters, multilayer materials with outstanding adhesion between the individual layers are obtained ¶[0143].
Therefore, it would be obvious to one of ordinary skill in the art that the coatings of Bruchmann can be used in a multilayer coating where a clear coat (clear protective varnish) is applied over the ink and cured, resulting in a multilayer coating as disclosed by Bruchmann.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Bruchmann does not teach or suggest using a component that has both a polyalkylene oxide unit and isocyanate group, which would bond the polyalkylene oxide to the core through the isocyanate group. It is taught that the diols may comprise other functionalities, but none of the options listed are carbamate ¶[0068]. Bruchmann teaches that the hyperbranched polyester can be modified by adding isocyanate compounds such as alkyl or aryl isocyanates which will create urethane bonds within the branches, ¶[0215], but these modifications are only added after at least 75% conversion of the initial components, ¶[0195]. Therefore, the isocyanate would not be bound to the core polyol but randomly distributed in the branches, and if the PEG or PPG were covalently bonded to the isocyanate in the branches, it would not be covalently bonded directly to the core through the isocyanate bond.
Response to Arguments
Applicant’s argument regarding the 112b rejection of claim 1 and its dependents is persuasive, therefore the 112b rejection is withdrawn.
In light of the amended claim 1, the previous 102 and 103 rejections made over Boebel, Li, Bruchmann, and Bruchmann in view of Coyler are withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bruchmann US20070213501A1 under 103.
Regarding applicant’s argument of unexpected results, pages 8-9 of remarks, the results are unpersuasive and not commensurate in scope with the claims.
The unexpected results are not persuasive because the data shows improvements over one comparative example, which applicant states is made by the method of example 5 of US5270399 on page 35 of the as-filed specification, but this dispersant is not a hyperbranched dispersant. Although the comparative dispersant does not have aromatic groups and the data shows an improved L(110°) result with the inventive examples versus the comparative coating, there is no evidence that the result is unexpected when compared to similar hyperbranched dispersants or binders such as the hyperbranched polyester of Bruchmann. Furthermore, Bruchmann teaches the inclusion of aromatic units in the form of the preferable pthalic, terephthalic, and isophthalic acids/anhydrides, therefore based on applicant’s assertion that the presence of the aromatic units causes the improved L(110°) results, then it would follow that Bruchmann’s coatings would inherently possess similar L(110°) result, or at least improved results compared to the same comparative dispersant applicant used. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02.
Additionally, the data is not commensurate in scope with the claims. The data shows that the polyol core is made with a limited selection of specific ingredients, mainly tri- or di- pentaerythritol; the aromatic group is derived from one specific carboxylic acid, 2-napthoxyacetic acid; the PEG component is added mostly by specific IPDI-MPEG adducts, only P9 does not include the isocyanate, whereas claim 1 does not require the isocyanate unit be present; and succinic anhydride is added to all of the inventive reaction products whereas it is not required in claim 1. All the components necessary to produce the unexpected results must be required in the claim. Furthermore, claim 1 is directed to broad classes of any polyhydroxy core, any polyalkylene oxide unit, and any aromatic carboxylic acid unit. Therefore, the scope of the claims is broader than applicant’s showing of unexpected results.
Conclusion
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.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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