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
Newly submitted claims 60-64, 66 and 68 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I, claim(s) 1, 2, 10-11 and 13 drawn to a electrodepositable composition.
Group II, claim(s) 60-64, 66 and 68 drawn to an electrodepositable composition for coating a metal substrate.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of a electrodepositable composition of claim 60, this technical feature is not a special technical feature as it does not make a contribution over the prior art Mori et al. (JP H10310704) in view of Eldridge et al. (US 2021/0329910).
Mori in view of Elbridge discloses discloses this feature as stated in paragraph 7-8 below.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 60-64, 66 and 68 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Withdrawn Rejection
The 35 U.S.C. §103 rejection of claims 1-2, 10 and 13 as over Mori et al. (JP H10310704), made of record in the office action mailed on 05/27/2025, page 2 has been withdrawn due to Applicant’s amendment in the response filed on 09/17/2025.
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.
Claim(s) 1, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP H10310704) in view of Eldridge et al. (US 2021/0329910).
Regarding claim 1, Mori discloses thermoplastic resin composition having excellent heat resistance, rigidity and transparency and excellent gas barrier properties (para 0001). The thermoplastic resin composition comprises thermoplastic resin (A) and process for producing a thermoplastic resin composition according to the present invention comprises the steps of: suspending a thermoplastic resin [A] in a polar solvent in an amount of 0.1 to 20% by weight of an inorganic filler in 100 parts by weight (para 0010). As the polar solvent, any solvent can be used, where the solvent includes water (page 4, bottom half of the page), where the water corresponds to aqueous medium of the present invention. The thermoplastic resin [A] is preferably at least one selected from polyamide, polycarbonate, polyethylene oxide, polystyrene, and a polyolefin resin, and the inorganic filler Is preferably a layered silicate, the layered silicate is preferably smectite (para 0010-0011), where smectite corresponds to colloidal layered silicate of the present invention.
While there is no disclosure that the thermoplastic resin composition is a electrodeposition composition for coating metal substrate as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. electrodeposition composition, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Mori and further that the prior art structure which is a thermoplastic resin composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
However, the recitation in the claims that the thermoplastic composition is “for coating a metal substrate” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Mori disclose thermoplastic resin composition as presently claimed, it is clear that the thermoplastic resin composition of Mori would be capable of performing the intended use, i.e. for coating a metal substrate, presently claimed as required in the above cited portion of the MPEP.
However, Mori fails to disclose that the thermoplastic resin is anionic salt group containing film forming polymer.
Whereas, Elbridge discloses composition comprises at least one active ingredient and at least two of the following: a polycarboxylic acid polymer or a salt thereof, an anionic surfactant, and a wax agent (abstract). The claimed composition may further include a silicate and the silicate includes smectite (para 0064-0067).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include polycarboxylic acid polymer as taught by Elbridge in the thermoplastic resin composition of Mori motivated by the desire to have improved barrier and mechanical properties.
Regarding claim 10, Mori discloses the particle size of these layered silicates is 0.1 to 200 μm, preferably 0.1 to 100 μm (page 4).
Although Mori does not disclose layered silicate having a diameter measured by suspending in a solvent, then drop-casting and drying as claimed, it is noted that “[E]ven 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) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Mori meets the requirements of the claimed product, Mori clearly meet the requirements of present claims of layered silicate having a diameter of 0.1-100 microns which overlaps the claim diameter.
Regarding claim 13, As Mori discloses thermoplastic composition comprising a polyolefin component and colloidal layered silicate as presently claimed, it therefore would be obvious that composition would intrinsically have the claimed pH of 7-11 or claimed viscosity of at least 5 cP. Mori also discloses thermoplastic resin composition comprises thermoplastic resin (A) and process for producing a thermoplastic resin composition according to the present invention comprises the steps of: suspending a thermoplastic resin [A] in a polar solvent in an amount of 0.1 to 20% by weight of an inorganic filler in 100 parts by weight (para 0010).
Claim(s) 2, 65, 67 and 69 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP H10310704) and Eldridge et al. (US 2021/0329910) as applied to claim 1, further in view of Raehse et al. (WO 2004/027009).
Regarding claims 2, 65, 67 and 69, Mori in view of Eldridge fails to disclose composition comprises the polyolefin in an amount of 0.25-40 wt% by weight based on total weight of the electrodepositable composition.
Whereas, Raehse discloses detergents or cleaning agents that are compacted under pressure and in particular are extruded, or to compounds for said substances. Said detergents or cleaning agents contain organic polycarboxylic acids and/or their salts, no more than 5 wt. % non water-soluble builder substances (abstract). The content of organic polycarboxylic acids and / or their salts, based on the sum of the water-soluble builder substances, is at least 30% by weight and preferably at least 35% by weight (claim 12).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include polycarboxylic acid polymer as taught by Elbridge in the thermoplastic resin composition of Mori in an amount of 30-35 wt% as taught by Raehse motivated by the desire to have improved barrier and mechanical properties.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (JP H10310704) as applied to claim 1, further in view of Kimura et al. (JP 2014-058057).
Regarding claim 11, Mori fails to disclose that the thermoplastic resin composition further comprises a carbonate.
Whereas, Kimura discloses injection-foamed molded article which contains the following (A) and (B) and is composed of a polymer composition (X) containing (C) when necessary; (A) a polymer selected from a polyamide, a polyester and a polycarbonate, (B) a functional group-containing polyolefin (abstract). The polymer composition (X) of the present invention may further contain (C) an inorganic reinforcing material. The inorganic reinforcing material used in the present invention is the one that most effectively improves physical properties such as strength, rigidity and heat resistance. The inorganic material includes calcium carbonate, layered silicates, titanium oxide etc. These inorganic reinforcing materials may be used alone or in combination of two or more (page 5).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include calcium carbonate as taught by Kimura in the thermoplastic resin composition of Mori motivated by the desire to have strength, rigidity and heat resistance.
Response to Arguments
Applicants arguments filed on 09/17/2025 has been fully considered, but they are moot in view of new grounds of rejection as stated above.
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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/RONAK C PATEL/Primary Examiner, Art Unit 1788