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 .
This communication responds to the application and amended claim set filed November 06, 2023. Claims 1-10 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on July 28,2026 is acknowledged. Claims 1-7 are under examination.
Claim Interpretation
In view of the instant specification an aqueous coating agent is interpreted as an aqueous coating composition containing an aqueous medium and a polyester resin component (abstract, [0002]-[0003])
Claim Rejections - 35 USC § 102
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 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 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daimer et al. (“hereinafter, Daimer”, GB 1489903 A as listed on the IDS dated 04/14/2025).
Regarding claim 1, Daimer teaches an aqueous coating composition comprising an intermediate component IIR (example 2, page 5:76-95, page 3: 70-71), wherein the intermediate component IIR is obtained by reacting rosin and triethylene glycol, followed by reaction with maleic anhydride, and then reacting the obtained product with trimethylolpropane (page 5: 1-13), wherein the resin has an acid value of 83 mg KOH/G and a hydroxyl number of 180 mg KOH/g, as required by the instant claim.
Regarding claim 3, Daimer teaches maleic anhydride as the α,β unsaturated dicarboxylic acid (B) (page 2: 99-101 and page 5: 1-13), as required by the instant claim.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yasuno et al. (“hereinafter, Yasuno”, JPS63297474 (A) as listed on the IDS dated 04/14/2025).
Regarding claims 1 and 4, Yasuno teaches an aqueous electrodeposition coating resin composition comprising as a main component a photosensitive modified alkyd resin obtained by reacting a quinone diazide with an alkyd resin ([0001], claim 1), wherein the modified alkyd resin is obtained by reacting 500 g of rosin, 620 g of soybean oil fatty acid, 600 g of tall oil fatty acid, 140 g of linoleic acid, 140 g of lylic acid, and 300 g of maleic anhydride; followed by reaction with 1000 g of pentaerythritol and 900 g of trimellitic anhydride, thereby reading on the polyester component of claims 1 and 4. The modified alkyd resin has an acid value of 100 mgKOH/g and a hydroxyl value of 110 mgKOH/g (production example, [0004]), as required by the instant claim. Afterward, the modified alkyd resin is neutralized with triethylamine and dissolved and dispersed in water, to obtain the aqueous solution of the photosensitive modified alkyd resin (example 1, [0004]) (which correspond to the aqueous coating agent).
Regarding claim 3, Yasuno teaches maleic anhydride as the α,β unsaturated dicarboxylic acid (production example, [0004]), as required by the instant claim.
Regarding claim 5, Yasuno teaches 620 g of soybean oil fatty acid, 600 g of tall oil fatty acid as discussed in the rejection of claim 1 above, which implies the fatty acids represent 28.5 wt.% of the total amount of material used to prepare the modified alkyd (polyester).
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.
Claims 2, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Daimer et al. (“hereinafter, Daimer”, GB 1489903 A as listed on the IDS dated 04/14/2025).
Daimer teaches the aqueous coating agent according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 2, Daimer teaches the intermediate component II R is obtained by esterifying 600g of rosin with 150 g or triethylene glycol. Then 388 g of this ester is reacted with 100 g of maleic anhydride. Afterward, 135 g of trimethylolpropane are added (p.5: 1-19).
Daimer is silent on the molar ratio of maleic anhydride to rosin.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the molar ratio of maleic anhydride to rosin to produce an intermediate component with the desired acid value and film properties (p.2: 65-71).
Regarding claim 4, Daimer teaches the aqueous coating composition comprises a polyhydroxy polycarboxylic resin (intermediate component) having an acid value from 3-250 mg KOH/g and a hydroxyl number of from 10-500 mg KOH/g (p.1:14-25), wherein this intermediate component is an oil modified partial ester of a polycarboxylic acid and a polyalcohol, an esterification product of an adduct of maleic anhydride and an unsaturated fatty acid, a rosin acid or a hydroxy-free ester thereof with a polyalcohol (claims 7-8, page 3:7-18). Diemer further exemplifies an intermediate component II N obtained by reacting dehydrated castor oil, rosin, tall oil fatty acids and maleic anhydride, followed by reacting the obtained product with ethylene glycol and pentaerythritol, wherein the resin has an acid value acid value of 80 mg KOH/g and a hydroxyl number of 185 mg KOH/g ( claim1, page 4: 82-100, Example 5, page 6).
Daimer and the claims differ in that Daimer does not particularly teach the claimed range for the hydroxyl value as recited in the instant claims.
However, Daimer teaches broader ranges for hydroxyl value (10-500 mg KOH/g) that overlaps with he claimed range (MPEP 2144.05) and ranges that are substantially close to that of the instant claims. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (See MPEP 2144.05 (I) (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium . "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.").) Thus, absent any showing of unexpected results or criticality, the slight difference of the hydroxyl content between Daimer ( 185 mg KOH/g) and the claimed range (180mg KOH/g) is negligible.
Regarding claim 5, Daimer teaches the intermediate component II N is obtained by reacting 300g of dehydrated castor oil, 75 g of rosin, 25 g of tall oil fatty acids and 130 g of maleic anhydride, followed by the reaction of the obtained product with 90 g of triethylene glycol and 50 g of pentaerythritol, which implies a content of the oils and fats and fatty acid of 48.5 wt.% (325/70).
Daimer and the claims differ in that Daimer does not teach the claimed content ratio of the oils and fats and/or fatty acid to a total amount of the material component.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the ratio of the castor oil and the tall oil in the intermediate IIN to produce an intermediate component with the desired acid value and hydroxyl value because they provide or consume the functional groups measured by those parameters (p.2: 65-71).
Regarding claim 6, Daimer teaches the aqueous coating composition comprises a polyhydroxy polycarboxylic resin (intermediate component) that is prepared by reacting acrylic or methacrylic acid with C2-C4 glycolmonoacrylate or methacrylate, acrylic or methacrylic acid, other acrylates methacrylates and styrene (page 3:41-49, intermediate component II S (page 5: 20-29)), which meets the styrene-(meth)acryl copolymer as recited by the instant claim.
Daimer is silent on the aqueous coating agent further comprising a styrene-(meth) acryl copolymer.
However, as discussed previously, Daimer teaches the aqueous coating composition comprises an intermediate component (aqueous coating agent) as discussed in the rejection of claim 1 and that styrene-(meth) acryl copolymer may be used as the intermediate component. It is noted that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, and ... the idea of combining them flows logically from their having been individually taught in the prior art." , thereby arriving to the claimed invention (See MPEP 2144.06(I),. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Daimer et al. (“hereinafter, Daimer”, GB 1489903 A) in view of Bai et al. (US 2017/0009085 A1).
Daimer teaches the aqueous coating agent according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 7, Daimer is silent on the wax.
However, Lai et al. teach an aqueous coating composition (title, abstract) comprising wax [0049]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the wax as taught by Bai et al. because it improves the gloss surface and buffing properties [0049].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yasuno et al. (“hereinafter, Yasuno”, JPS63297474 (A) as listed on the IDS dated 04/14/2025).
Yasuno teaches the aqueous coating agent according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 2, Yasuno is silent on the molar ratio of maleic anhydride to rosin.
By examiner calculations and assuming a Mw of the rosins of 296.32 g/mol, Mw of maleic anhydride of 98.06 g/mol, then 500 g rosin/296.32 g/mol rosin = 1.6876 mol rosins and 300g maleic anhydride/98.06 g/mol maleic anhydride= 3.059 mol maleic anhydride, then 3.059/1.6876 = 1.812 mol maleic anhydride/1 mol of rosins, which implies a mole ratio of 181.2 moles maleic anhydride per 100 moles of the rosins, (Production example, [0004])). However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the molar ratio of maleic anhydride to rosins to produce an modified alkyd resin with desired acid and hydroxyl values, wherein the acid values control the water dispersibility/electrodeposition and the hydroxyl value is important for photosensitive modification and coating performance [0002].
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuno et al. (“hereinafter, Yasuno”, JPS63297474 (A)) in view of Nasioudis et al. (US 2019/0185704 A1 as listed on the IDS dated 04/14/2025) as evidenced by Trecora Chemical, Coatings, 2026).
Yasuno teaches the aqueous coating agent according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 6, Yasuno is silent on the aqueous coating agent further comprising a styrene (meth) acrylate copolymer.
However, Nasioudis et al. teach an aqueous coating composition comprising a dispersed acrylate binder polymer, an alkali soluble acrylic polymer and a oxidatively drying resin such as alkyd resins (claims 1 and 8), wherein the dispersed acrylate binder polymer is any acrylate binder polymer suitable to be used as film forming polymer in aqueous coating compositions [0010] such as a copolymer of styrene and acrylic monomers [0010]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the styrene-acryl copolymer as taught by Nasioudis et al. because Nasioudis et al. recognize the styrene-acryl copolymer can be combined with alkyd resins in aqueous coating composition to improve film properties [0010].
Regarding claim 7, Yasuno is silent on the wax.
However, Nasioudis et al. teach the coating composition further comprises pigments and additives typically applied in paints, such as waxes. It would have been obvious to one of ordinary skill in the art to uses waxes as taught by Nasioudis to improve abrasion resistance and surface durability as evidenced by (Trecora Chemical, page 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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