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 .
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) 1-7 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO2018134291 to Hed et al. (as found on the IDS dated 10/10/2023).
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Regarding Claim(s) 1-6, and 16-17, Hed teaches a coating composition [title] comprising the following structure [p29, L5-7]
wherein R10 is the reaction product of an anhydride such as phthalic anhydride [P29, L 9] (i.e., a phenyl group and C6 aryl group), v is preferably 1-10 [p29, L7] (i.e., a is 2-10). Moreover, Hed’s structure reasonably reads on Y is an ethylene glycol repeating unit, Z is a (CH2) group, B is 1 (i.e., 0 to 3), and R is not substituted with alcohol or amine functional groups.
The difference between the present claim and the disclosure of Hed is the requirement that R is substituted in the 1 and 3 position, wherein Hed teaches the reaction product of Phthalic anhydride [P29, L 9] that is reasonably substituted in the 1 and 2 position.
Although Hed fails to incorporate R substituted in the 1 and 3 position, the similarity between the chemical structures having 1 and 3 position as compared to Hed’s 1 and 2 position are sufficiently close enough that it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the claimed compound comprising R substituted in the 1 and 3 position. Furthermore, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP §2144.09). The case law has also states that “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Regarding Claim(s) 7, Hed teaches the compound of claim 1, as set forth above and incorporated herein by reference.
Hed does not particularly teach the compound is di(3,7,11,15- tetraoxaoctadec-17-en-1-yl) isophthalate (also seen as CAS 2861240-93-7).
The difference between the present claim and the disclosure of Hed is the requirement of a mixture of propylene glycol and ethylene glycol units rather than only ethylene glycol units as taught by Hed.Although the reference fails to incorporate ethylene glycol and propylene glycol units in the backbone, the similarity between the chemical structures having ethylene glycol units are sufficiently close enough that it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the claimed compound. Furthermore, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP §2144.09). The case law has also states that “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Claim(s) 10-14 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over US20020082314 to Blum et al. (as found on the IDS dated 10/10/2023) in view of WO2018134291 to Hed et al. (as found on the IDS dated 10/10/2023).
Regarding Claim(s) 10, 11, and 20-21, Blum discloses a resin composition comprising vinyl ethers [0022] (corresponding to a), at least one unsaturated polyester resin [0021] (reading on unsaturated base resin), and at least one curing accelerator [0024].
Blum is silent regarding the compound as defined in claim 1.
However, Hed teaches a coating composition [title] comprising the following structure [p29, L5-7]
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wherein R10 is the reaction product of an anhydride such as pthalic anhydride [P29, L 9] (i.e., a phenyl group and C6 aryl group), v is preferably 1-10 [p29, L7] (i.e., a is 2-10). Moreover, Hed’s structure reasonably reads on Y is an ethylene glycol repeating unit, Z is a (CH2) group, B is 1 (i.e., 0 to 3), and R is not substituted with alcohol or amine functional groups. Blum and Hed are analogous art as they are from the same field of endeavor, coating compositions comprising polyester binders.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Hed’s binder into Blum’s composition, thereby arriving at the claimed invention.
The motivation to modify Hed with Blum is that Hed’s binder of the invention provide a coating composition that has low VOC, low surface energy and low modulus of elasticity [Hed, P6, L1-2] which is valuable to Blum as there is a desire to have a coating composition with low emissions [Blum, Abstract].
The difference between the present claim and the disclosure of Hed is the requirement that R is substituted in the 1 and 3 position, wherein Hed teaches the reaction product of Pthalic anhydride [P29, L 9] that is reasonably substituted in the 1 and 2 position.
Although Hed fails to incorporate R substituted in the 1 and 3 position, the similarity between the chemical structures having 1 and 3 position as compared to Hed’s 1 and 2 position are sufficiently close enough that it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the claimed compound comprising R substituted in the 1 and 3 position. Furthermore, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP §2144.09). The case law has also states that “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Regarding Claim(s) 12 and 18, Blum in view of Hed teaches the resin composition of claim 10, wherein the unsaturated base resin is made from polyfunctional carboxylic acids and polyfunctional alcohols [0031] preferably maleic acid [0032] and poly(oxyethylene) glycols [0034] respectively.
Regarding Claim(s) 13, Blum in view of Hed teaches the resin composition of claim 10, wherein the coating composition is cured [0002].
Regarding Claim(s) 14, Blum in view of Hed teaches the composition of claim 10, that is a coating composition for electrical components [0001].
Regarding Claim(s) 19, Blum in view of Hed teaches the composition of claim 10, wherein the unsaturated polyester are prepared from carboxylic acids and alcohols [0031] thereby reading on alkyl ester resin.
Regarding Claim(s) 22, Blum in view of Hed teaches the composition of claim 10, as set forth above and incorporated herein by reference.
Blum in view of Hed does not particularly teach the compound is di(3,7,11,15- tetraoxaoctadec-17-en-1-yl) isophthalate (also seen as CAS 2861240-93-7).
The difference between the present claim and the disclosure of Blum in view of Hed is the requirement of a mixture of propylene glycol and ethylene glycol units rather than only ethylene glycol units as taught by Blum in view of Hed.
Although the reference fails to incorporate ethylene glycol and propylene glycol units in the backbone, the similarity between the chemical structures having ethylene glycol units are sufficiently close enough that it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the claimed compound. Furthermore, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities (MPEP §2144.09). The case law has also states that “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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