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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses the implied phrase "disclosed herein" in lines 1 and 8. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 1 is 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 states that the core is a polyhydroxy-functional moiety, but based on the instant specification, it appears the core is derived from a polyhydroxy-functional moiety because it reacts with the compounds that make up the shell, forming linkages and consuming the hydroxyl groups on the core compound. It is unclear if the core is polyhydroxy-functional after reaction with the aromatic acid and isocyanate terminated polyol, or if all of the hydroxyl groups are consumed, in which case the core is in fact derived from a polyhydroxy-functional moiety. Therefore the metes and bounds of claim are unclear.
Claims 2-15 are rejected due to their dependence on claim 1.
Claim Rejections - 35 USC § 102
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 1-2, 6, 12-13, 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boebel et al, US20200223988.
Regarding claims 1-2, 6, and 16, Boebel teaches a polymeric dispersant that is a copolymer of phenyl glycidyl ether (PGE), and alklyene oxides attached to a polyfunctional nucleophilic initiator, and the dispersant is used in organic pigment dispersions, abstract, and in coating compositions, ¶[0066]. Boebel teaches the dispersant can have three or more “tails” extending from the central initiator, ¶[0009]. The central polyfunctional initiator reads on the claimed core moiety. Boebel lists multiple polyfunctional initiators in ¶[0021] which include compounds with three or more hydroxyl groups such as trimethylolpropane and pentaerythritol. Specifically, Boebel shows an example in ¶[0033] where trimethylolpropane is used as the initiator and was reacted with allyl glycidyl ether, phenyl glycidyl ether, and then ethoxylated to give the dispersant below.
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There are aromatic units and polyethylene oxide units linked to the (initiator) core moiety, TMP, through covalent bonds, which also anticipates claims 6 and 16. The branches extending outward encompass the core moiety forming the claimed shell moiety.
Boebel illustrates another dispersant example, ¶[0083] shown below, which has triethanolamine as the initiator and is end capped with succinic anhydride, which reads on claim 2 because it introduces acid groups which are covalently linked to the core through the PGE and EO groups.
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Boebel teaches pigment dispersions made with the dispersant and organic pigments, ¶[0056]; examples are shown in tables 4 and 4a, ¶[0133], where monoazo yellow is blended with different dispersants, this reads on applicant’s pigment paste. Table 4, Ex. 41 has pentaerythritol-PGE(20)-EO(120) as the dispersant, Ex. 47 has triethanolamine-PGE-(15)-EO(90); in table 4a Ex. 49 has di(pentaerythritol)-PGE(30)-EO(120) all of which use polyhydroxy initiators as the core moiety and also reads on the claimed alkylene oxides of claims 1, 6, and 16. There are more examples in Boebel’s tables which use the polyhydroxy core moiety and are blended with organic pigments, for the sake of brevity examiner has not listed every iteration that reads on the claims.
Regarding claims 12-13 and 15, Boebel teaches the pigment dispersion is preferably aqueous ¶¶[0057-0058]. The examples cited above in Tables 4 and 4a, ¶[0133], are dispersed in water with the monoazo yellow, ¶[0093]. Boebel teaches a method for producing a cured coating on a substrate wherein a paint formulation comprises an organic violet pigment and the inventive dispersant ¶[0121], the paint is tested for scrub resistance. The paint forms a film on a brass shim substrate, which means it has dried/cured on the shim. Boebel also tests the color strength of the film where the paint film is dried on a Leneta chart, ¶[0126]. These coatings satisfy claims 13 and 15.
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 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Boebel et al, US20200223988.
Regarding claim 8, Boebel teaches the coating composition according to claim 1, as explained above. Boebel does not exemplify a composition where the ratio of the dispersant (reaction product P) to the organic pigment is at least 0.55. Boebel teaches that the pigment dispersions are prepared by combining 0.5-50 wt.% dispersant, 10-80 wt.% pigment, 0.5-6 wt.% additives, and 10-85 wt.% water or other carrier, ¶[0091]. This puts the ratio of dispersant to organic pigment in a range of 0.5/80 to 50/10 which is 0.00625 to 5, and encompasses the claimed range. 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 ratio disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. 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, Boebel teaches the coating composition according to claim 1, as explained above. Boebel does not exemplify a composition with ingredients in the claimed weight percent ranges. Formulation examples are exemplified in ¶¶[0096-0105], where the organic pigment is used in an amount of 40 wt.%, the dispersant is used in an amount of 1.2-8 wt.%, water is added to balance it to 100 wt.%, but Boebel also discloses that the formulations can have up to 20 wt.% solvent, ¶[0091] right column, which overlaps with the claimed range. Therefore, it would be obvious to add up to 20 wt.% solvent to the pigment dispersion composition with the motivation of producing another permutation of the inventive pigment dispersion for paint applications.
Regarding claim 10, Boebel teaches the coating composition according to claim 1, as explained above. Boebel does not exemplify a composition where the pigment/total solids ratio is in the claimed 0.05 to 0.20. Boebel teaches that the pigment dispersions are prepared by combining 0.5-50 wt.% dispersant, 10-80 wt.% pigment, 0.5-6 wt.% additives, and 10-85 wt.% water or other carrier, and can further comprise 0-10 wt.% resin ¶[0091]. Using the minimum and maximum of the pigment amount, the ratio of pigment to total solids is 0.13 to 0.99, which encompasses the claimed amount. This is calculated from 80 parts pigment/ (0.5 dispersant + 80 pigment + 0.5 additives + 0 resin) = 80/81 = 0.99. And also calculated from 10 parts pigment/ (50 dispersant + 10 pigment + 6 additives + 10 resin) = 10/76 = 0.13.
Regarding claim 11, Boebel teaches adding the dispersion to an alkyd composition ¶[0064], which is a polyester resin derived from polyols.
Claims 1, 3-6, 8, 11-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al, CN105713174A.
Regarding claim 1, 3-6, 16, Li teaches a hyperbranched pigment dispersant and its pigment paste, ¶[0002]. The hyperbranched dispersant is suitable for dispersing inorganic and organic pigments for coatings, ¶¶[0046-0047, 0049, 0054].
The hyperbranched dispersant comprises hydroxyl groups, ethoxy groups, and a hydrophobic carbon chain, ¶¶[0014-0016]. The core moiety is a polyhydroxyl functional polyester, ¶[0026,0028]. An isophorone-MPEG intermediate is reacted with the hyperbranched polyester, ¶[0027], which puts polyethylene oxide groups connected to the core through isocyanate linkages on the hyperbranched polyester, and reads on the polyalkylene oxide units of claims 1, 5, 6, and 16 and the isocyanate group of claim 3. The structures of the hyperbranched dispersant are shown below, formula I and formula II, shown on page 2 of the original document.
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The hyperbranched polyester reads on the core moiety because Li teaches the hyperbranched polyester is made from a polyhydroxy core, ¶¶[0028 and 0038], and the branching that diverges from the hyperbranched polyester extends outward encompassing the core, and reads on the claimed shell moiety.
In the formation of formula II, in step 2, an acid anhydride is reacted with the hydroxyl functional hyperbranched polyester, and the anhydride can be selected as phthalic anhydride, ¶[0040], which is one way for aromatic units to be a part of the shell moiety of the dispersant, and also reads on the cyclic carboxylic anhydride groups of claim 3. Applicant states in the instant specification that cyclic anhydrides are regarded as compounds with two carboxylic acid groups, page 20, therefore the phthalic anhydride also reads on the carboxylic acid of claim 4. Additionally, a glycidyl ester or ether with a hydrophobic carbon group (which becomes the R3 groups in the formulas I and II) is reacted with the hyperbranched polyester, in step 3, ¶[0036]; the glycidyl ester can be selected as glycidyl tert-butylbenzoate or glycidyl benzoate; and the glycidyl ether can be selected as phenyl glycidyl ether or benzyl glycidyl ether, ¶[0041], which is another way to put aromatic units in the shell moiety.
It would be obvious to select any of the aromatic glycidyl ethers or esters because Li teaches they are suitable for forming the hydrophobic branch on the hyperbranched polyester with the motivation of producing another permutation of the inventive pigment dispersant for paints and coatings that exhibit good thermal storage stability.
The fact that Li discloses numerous types of glycidyl ethers or esters which can be suitably selected to form the hydrophobic branches of the dispersant does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Regarding claim 8, Li teaches the dispersant accounts for 5-60 wt.% of the pigment paste and the pigment accounts for 5-60 wt.%, ¶¶[0044-0045]. Which means the ratio of dispersant to pigment is 5/60 to 60/5, or 0.083 to 12, which overlaps with the claimed range.
Regarding claims 11-12, Li teaches the coating composition further comprises hydroxyl functional acrylic resin, ¶¶0070, 0151]. Li further teaches the coatings can be water-based paints, ¶[0152].
Regarding claims 13 and 15, Li teaches the pigment pastes are used in paint coatings which produce a film, such as for coil coatings and automotive paints ¶¶[0004, 0054, 0060]. Li teaches the paint further comprises a crosslinking resin, ¶[0058]. While Li does not explicitly teach a method of producing a cured coating on a substrate, the method as claimed is inherent in the process of applying a paint to a substrate of coils or automotive surfaces, and because there are crosslinkers, the film will be cured after application. Li forms finished paints with the dispersions and tests them with touch testing, ¶0148], which presumably includes applying the paint to a surface and allowing it to dry/cure.
Claims 1,3, 5-6, 11-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bruchmann et al, US7268203.
Regarding claims 1, 3, 5-6, and 16, Bruchmann teaches a hyperbranched polyurethanes with at least one pigment affinity group used as a polymeric dispersing additive for pigments, abstract, including organic pigments in coating systems, Col. 9 line 15. The dispersant and pigment combination form pastes, Col. 9, line 57.
The hyperbranched polyurethane is formed from ABx monomers containing isocyanate groups and groups reactive with isocyanates such as hydroxyl or carboxyl, Col. 2 lines 64-67, Col. 3 lines 1-5. An example is given of an AB2 monomer synthesized from trimethylolpropane (TMP) and toluene diisocyanate, TDI, Col. 3 lines 10-11. The TDI has the claimed aromatic unit linked to the core moiety, in this case the TMP, through the isocyanate group, which also reads on claim 3. Bruchmann also lists additional aromatic diisocyanates suitable for the dispersant, Col. 3 lines 30-45. Besides, the TMP, the core polyfunctional compound can be glycerol, ethanolamine, and tris(hydroxymethyl)aminomethane, Col. 3 lines 60-66, all of which are polyhydroxy compounds.
The polyurethane is further reacted with a polyether derivative, Col. 6 lines 53-67, formula I. The polyether derivative shown in formula I is a monohydroxyl polyethylene oxide with an R group that can be hydrogen or an alkyl, aryl, or aralkyl group, Col. 7 lines 1-13. This would also impart an aromatic unit onto the hyperbranched polyurethane in the outer, or shell, portion of the dispersant. The modified polyethylene of formula I also reads on the alkylene oxides of claims 1, 5, 6, and 16.
Bruchmann does not explicitly use core/ shell language, but based on the description of the hyperbranched polyurethane, the polyhydroxyl compound is the core moiety and the reactants forming the branching units are the shell.
The fact that Bruchmann discloses numerous types of isocyanate reactive compounds which can be suitably selected to form the core of the hyperbranched polyurethane dispersant and numerous types of aliphatic or aromatic isocyanates does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Regarding claim 11, Bruchmann teaches the pigment pastes are made into 1K or 2K varnishes, and include other resins such as hydroxyl containing polyacrylates, Col. 10 lines 62-67.
Regarding claim 12, Bruchmann teaches the pigment pastes are used in aqueous coatings, Col. 9 lines 22-24 and Col. 10 line 29.
Regarding claims 13 and 15, Bruchmann teaches the pigment pastes are used in coating systems and coating materials, Col. 9 lines 16-24, also see claims 8 and 10 which claim paints comprising the dispersant. Bruchmann does not explicitly teach a method of producing a cured coating on a substrate but the basic steps claimed in claim 13 are inherent in the use of a coating or paint. Therefore the method of applying the coating composition to form a film and curing said film are obvious and it would be obvious to the skilled artisan that a coating system will produce a coating film according to claim 15.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Bruchmann et al US7268203 in view of Colyer et al, US20190106592A1.
Regarding claim 14, Bruchmann teaches the invention according to claims 1 and 13, explained above. Bruchmann is silent as to the different ways the claimed composition and coating thereof might be utilized.
Colyer discloses a hyperbranched polyol comprising polyurethane groups used for dispersing pigments in coating compositions, abstract, ¶¶[0018, 0037, 0071]. Coyler further discloses the coating systems are for the automotive industry, particularly for automotive OEM finishing where the coating compositions are used in both single stage and multi-stage coating methods, ¶¶[0320-0321], where the pigmented basecoat is first applied and a clearcoat is disposed thereon. The applied coatings are then cured after a certain rest time or flash period, ¶[0322], which suggests the coatings are cured at the same time.
Bruchmann and Colyer are analogous to the claimed invention because both are in the field of hyperbranched compounds for dispersing pigments in coating systems.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Bruchmann and producing a cured coating on a substrate by applying the pigmented basecoat on a substrate, which forms a film, and also applying a clearcoat on top of the basecoat, then curing the coatings after a rest time, because it is a known multistage coating technique suitable for pigmented coating compositions such as Bruchmann’s, as disclosed by Colyer, and would yield the predictable result of a multilayer coating.
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: the cited prior art does not teach, suggest, or disclose the claimed acid value of claim 7. Li discloses an acid value for the hyperbranched polyester after reaction with the glycidyl ester, but it is less than 10 mg KOH/g, ¶[0115]. And it is not remeasured after the dispersant is completed. It is entirely possible that the hyperbranched dispersants of the prior art may have the claimed acid value, but examiner is unable to confirm.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765