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 1-3, 5, 8-9, 12-14, 16, 19, 30-31, 35, 38-39, 41, 43, and 47-48 are pending with claims 39, 41, 43, and 47-48 currently withdrawn. Claims 1-3, 5, 8-9, 12-14, 16, 19, 30-31, 35, and 38 will be examined.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 8-9, 12-14, 16, 19, 30-31, 35, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Desai (US 10,947,428, US Patent #12 from IDS dated 1/4/2024).
Regarding Claims 1-3,
Desai teaches a composition that contains an epoxy-functionalized polyester (Column 3 Lines 40-42) which can be formed from a polyester (Column 3 Line 67 to Column 4 Line 9), an epoxy containing compound (Column 3 Lines 40-42 and Column 3 Lines 48-53) and wherein the epoxy-adduct can include triols, tetraols, and higher functional polyols (Column 3 Lines 63-64) and anhydrides such as those derived from phthalic anhydride (Column 4 Lines 35-43). Desai also teaches that the composition can contain elastomeric particles (Column 7 Lines 18-20) as well as a catalyst (Column 7 Lines 9-11). Because Desai teaches that the polyester is a polyol, it would logically follow that the polyester is terminated with hydroxyl groups and it would therefore be obvious to use polyester polyols with hydroxyl group termination. Further, as Desai teaches that triols and higher functional polyols can be used as noted above, it would logically follow that the polyester would have an average hydroxyl functionality of greater than 1. Because Desai teaches the use of higher order polyols, one of ordinary skill in the art would note that these compounds can be used and would be motivated to use such higher order polyols in order to increase crosslinking density in the resulting cured composition. It would therefore have been obvious prior to the effective filing date of the instant application to have used polyols containing three or more hydroxyl groups to obtain a composition with greater crosslinking density with a reasonable expectation of success.
Regarding Claim 5,
Desai teaches that polyesters may be derived from caprolactone (Column 3 Line 67 to Column 4 Line 2).
Regarding Claims 8-9 and 12-13,
Desai teaches the use of ring-fused anhydride such as those derived from phthalic anhydride (Column 4 Lines 35-49) which meet the requirements of structure I of the instant claims as well as the requirement of claim 9. Further, Desai teaches the use of hexahydrophthalic anhydride in Example 1 (Column 18 Line 61 to Column 19 Line 9), meeting the requirements of claim 12. Finally, as hexahydrophthalic anhydride has a molecular weight of 154, it meets the requirements of claim 13.
Regarding Claim 14,
Desai teaches that the molar ratio of epoxide containing compound:hydroxyl containing compound:anhydride is from 1:0.5:0.8 to 6:0.5:1 (Column 4 Lines 50-55), which overlaps with the range of the instant claim. One of ordinary skill in the art would recognize that alterations to these ratios would lead to differing amounts of unreacted functional groups present in the epoxy-functionalized compound and would be motivated to alter this ratio to afford the desired level of each functional group available to react during curing. As a result, it would have been obvious prior to the effective filing date of the instant application to have selected any ratio of the three functional groups in order to obtain the desired amount of unreacted functionality in the composition to allow for the desired curing reactions.
Regarding Claim 16,
Desai teaches the use of epoxide containing compounds such as Bisphenol A and Bisphenol F (Column 3 Lines 48-53) which have an epoxide functionality of 2, meeting the requirements of the instant claim.
Regarding Claim 19,
Desai is silent on the epoxide equivalent weight and the molecular weight of the epoxy-adduct. However, given the broad range of molecular weight of the instant claim (800 to 100,000 g/mol) and the epoxide equivalent weight (150 to 1500 g/eq), the ranges cannot be considered to be critical absent the showing of unexpected results. See MPEP 716.02.D.II.
Regarding Claim 30,
Desai teaches that accelerators (catalysts) can be used in amounts of 0 to 10% by weight of the composition (Column 7 Lines 9-11). Desai also teaches that the epoxy-functionalized polymer is used in amounts of 3 to 50% by weight of the composition (Column 3 Lines 43-45) and further that elastomeric particles can be used in amounts of 0.1 to 10% by weight (Column 8 Lines 3-6) in 2K formulations and up to 75% by weight of 1K formulations (Column 17 Lines 39-43). These ranges overlap with the ranges of the instant claim. One of ordinary skill in the art would recognize that alterations of these amounts would change the physical properties of the cured product and would naturally adjust their incorporation levels in order to obtain the desired properties such as toughness and flexibility. As such, it would have been obvious to have selected any amount that afforded the desired properties of the final material and it would further have been obvious to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 31 and 35,
Desai teaches that fillers can account for 0.5 to 25% by weight of the composition (Column 6 Lines 49-51) and further that the composition can contain a second epoxy compound (Abstract). While optional, Desai also teaches the use of additives such as colorants, (Column 6 Lines 60-62) and thixotropes such as silica, wax, and clay (Column 6 Lines 55-57).
Regarding Claim 38,
Desai teaches compositions that contain substantially similar components to those of the instant claims. It would logically follow that the compositions as taught by Desai would meet the sag requirements of the instant claims.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive for the following reasons. On pages 3 and 4, the applicant argues that increased crosslinking does not necessarily result in a cured coating with improved mechanical properties and cites the declaration submitted by Dr. Pollum, one of the inventors listed in the instant application. The examiner appreciates the time that Dr. Pollum has taken to provide this writeup as well as the information provided by Dr. Pollum in regard to the physical properties of the cured compositions in question. However, as the examiner noted in the interview, while this declaration is useful, it is directed towards properties of the cured composition, notably the impact resistance, that are not in the current claim set under consideration, though it does appear in a currently withdrawn claim. As a result, any unexpected improvement in these properties is not required to be addressed in the rejection. Further, while the declaration addresses the assertion that increasing crosslinking density may not improve cold impact resistance, Dr. Pollum’s declaration does agree with the examiner that increasing crosslinking density would be expected to improve some material characteristics. The examiner notes that the rationale for selecting an option presented in the prior art does not need to be identical to that of the inventors so long as it arises from the prior or from common knowledge in the art (See MPEP 2144.I and 2144.IV). Dr. Pollum’s concurrence with the examiner that increasing crosslinking density does confer some advantages in the properties of the cured composition would speak to the fact that there would be motivation to use higher order polyols such as triols and tetraols as taught by Desai based upon common knowledge in the art. As currently constructed, the presented unexpected results do not alter the current rejection based upon the fact that Desai teaches the required components (polyesters with more than 2 hydroxyl groups, a ring-fused anhydride, an epoxy resin, elastomeric particles, and an accelerator) of the independent claim and that sufficient rationale exists to select the use of higher order polyols as taught by Desai. As the remainder of the presented arguments rest upon the fact that claim 1 is allowable, the previous rejection of the dependent claims also stands.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Klamo (US 20150368457) teaches an epoxy compound reacted with a polyester with an average hydroxyl functionality preferred between 2 and 4 but which can be up to 6 in combination with an anhydride, a catalyst, and core shell rubber for use in coatings and adhesives.
THIS ACTION IS MADE FINAL. 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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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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