DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2025/0011613, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Election/Restrictions
It is noted that the (1) statements set forth in the Examiner-Initiated Interview Summary dated 26 May 2026 (hereinafter “Interview Summary”), (2) statements set forth in the Email Correspondence on 21-22 May 2026 between the undersigned Examiner and Attorney of Record Robert J. Toth (Reg. No. 57,741) (copy provided herewith; “Email”), and (3) Applicant’s statements on pp. 4-5 of the Remarks filed 29 May 2026 (“Remarks”) in response to the Restriction Requirement dated 18 March 2026 (“Restriction”), are incorporated herein by reference.
In view of the aforesaid (1)-(3) incorporated herein, and the agreement reached between the Examiner and Attorney of Record, the requirement to elect an invention in accordance with 37 CFR 1.499 set forth in the Restriction [id., ¶6-11] has been withdrawn. Accordingly, the Amendment filed 29 May 2026 (“Amendment”) amending the claims originally filed 14 November 2023 (specifically, those corresponding to PCT/US2022/072441, and not the Preliminary Amendment filed same day) have been entered. Claims 1, 5, 7-9, and 11-27 have been canceled, claims 2-4, 6, and 10 have been amended, and new claims 28-32 have been added.
In view of the totality of the foregoing, claims 2-4, 6, 10, and 28-32 are pending and under consideration on the merits.
Furthermore, it is noted that as a result of the Preliminary Amendment issue detailed above, the claims present in Applicant’s published application, i.e., US 2025/0011613, are incorrect, that is, do not correspond to the claims originally filed 14 Nov. 2023 (corresponding to the PCT application) or the instantly pending claims. To remedy the issue, it is respectfully suggested that Applicant contact the publications branch.
Information Disclosure Statement
The information disclosure statements (IDS) filed 14 November 2023, 25 July 2024, and 22 May 2025 are in compliance with 37 CFR 1.97 and 1.98 and have been considered.
Specification
The disclosure is objected to because of the following informalities:
[0043, 0097, 0164] (corresponding to [0033, 0087, 0148] of specification filed 14 November 2023) – the phrase “cellulose, cellulose, chitosan…”, recited two times in each of the aforecited paragraphs, constitutes a typographical error (the micronized polysaccharide species “cellulose” is recited twice in a row)
In order to correct the issue, it is respectfully suggested to strike the repeated term in each of the three sentences, in accordance with the following example corresponding to [0043]:
“The micronized polysaccharide may comprise starch, glycogen, cellulose,
Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities:
Inconsistent claim language, as indicated by the following marked-up text respectfully suggested as an amendment to claim 3 in order to overcome the issue: “…wherein the over varnish layer has”
Appropriate correction is required.
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.
Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Regarding claim 3, the limitation “wherein the varnish layer has a scratch resistance of at least 10 revolutions” renders the claim indefinite, as it is unclear how, and under what conditions/parameters, the scratch resistance is measured. Claim 3 does not define the measurement method or conditions for determination of the scratch resistance, and the claimed scratch resistance is not explicitly defined in Applicant’s spec [0120]. As such, one of ordinary skill in the art cannot envisage or readily determine the metes and bounds of the scope of claim 3, and the public would not be clearly informed of the boundaries of what constitutes infringement upon the monobloc aerosol can defined by claim 3 for which patent protection is sought. See MPEP 2173.
In order to overcome the indefiniteness issues, it is respectfully suggested to amend claim 3 to include the measurement method and conditions/parameters thereof utilized for determination of the scratch resistance. Support therefor is found in the spec, see [0120].
For examination on the merits, claim 3 is interpreted in the broadest reasonable manner in accordance with the specification, while not improperly importing limitations from the specification (which are not part of the claim) into the claim (MPEP 2111.01(II)), of which is a scratch resistance property of 10 revolutions determined/reported in accordance with any method/standard and any conditions/parameters thereof.
Appropriate action is required.
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.
Claims 2-4, 6, 10, and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Witt-Sanson et al. (WO 2018/132792; “Witt-Sanson”) (copy provided herewith), in view of Kainz (US 5,743,949; “Kainz”) and Schelhaas et al. (US 4,075,143; “Schelhaas”), optionally further in view of Krendlinger et al. (US 6,761,764; “Krendlinger”).
“Italester H28”, Italester – Saturated & Oil-free Polyester Resins, Galstaff MultiResine, accessed online 26 June 2026, https://www.galstaffmultiresine.com/product/italester-h-28/ (“Italester Webpage”) (copy provided herewith) is relied upon as an evidentiary reference in support of the rejection of claim 3.
Regarding claim 2, Witt-Sanson discloses a monobloc aerosol can (monobloc aerosol can) comprising a coating (layer) on at least a portion of the internal surface thereof [Abstract; 0001-0002, 0004, 0206], said coating derived from a thermosetting, inter alia water-based (solvent/carrier may be water, organic solvent, or a mixture thereof) coating composition (powder or liquid) [0073-0075, 0077, 0204-0205] (coated on at least a portion thereof with an over varnish layer, the over varnish layer being derived from a thermally-curable, waterborne over varnish composition) comprising the following components:
(i) a polyester-imide polymer having an acid value of ≥ 10 mg KOH/g [0007, 0054, 0180-0181] (film-forming resin comprising a polyester),
(ii) a crosslinker operable to crosslink said polymer [0007, 0078-0177, 0180-0182] (a crosslinker), and
(iii) one or more additives including, inter alia a lubricant, suitably carnauba wax or a polyethylene-type lubricant [0194-0195].
With respect to the difference(s) relative to the monobloc aerosol can defined by claim 2, Witt-Sanson is silent regarding the coating composition including a micronized polyolefin wax and a micronized polysaccharide, wherein a weight ratio of the wax to polysaccharide is from 95:5 to 5:95.
Kainz discloses an aqueous (solvent-free), food contact-safe wax dispersion intended for use as an additive to water-based paint (coating) compositions, said dispersion comprising micronized polyethylene wax (5-65 wt.%), which may be non-functionalized or functionalized (acid value 0-19 mg KOH/g), at least one polymeric carbohydrate derivative (0.01-7 wt.%) as a dispersing agent for the wax, and water (wt.% remainder); the micronized polyethylene wax preferably exhibits an average particle size of from 1-20 µm [Abstract; col. 1 ln. 3-13, 47-51; col. 2 ln. 6-66; col. 3 ln. 3-62; col. 4 ln. 12-17]. The aqueous wax dispersion is taught as an improvement over the prior art in that it is free from (organic) solvents, and free from surfactants/emulsifiers (other than the carbohydrate derivative(s)) that are typically utilized to increase the wettability of the wax to facilitate dispersion thereof.
Kainz teaches that the carbohydrate derivative dispersant(s) may be, inter alia a “water-soluble” cellulose derivative and/or a starch ether [col. 3 ln. 10-63] – Kainz exemplifies embodiments of the aqueous wax dispersion which include both of a cellulose ether (methylhydroxyethylcellulose, MHEC) and hydroxypropyl starch, wherein the micronized polyethylene wax is functionalized or non-functionalized [col. 5 ln. 43-63]. The aqueous wax dispersion is formulated simply by vigorously mixing the components in water in a dispersion vessel.
Schelhaas teaches a paste (mixture) formed, inter alia from water as a carrier liquid, a starch ether that is, inter alia hydroxypropyl starch, and additives such as polyethylene wax, surfactants, and binders, intended for use as an additive for thermally-curable coating compositions (printing inks) which may be coated on any material including metal (e.g., tin), wherein said coating compositions may be formulated from, e.g., a mixed solvent, a crosslinking agent, a crosslinkable acid-functional polyester, a crosslinking catalyst, and pigments [Abstract; col. 1 ln. 29-64; col. 3 ln. 31–col. 5 ln. 29; col. 6 ln. 20-35; col. 7 ln. 60–col. 8 ln. 5].
Schelhaas teaches that the starch ether is present in the mixture in an amount of about 15-40 wt.% and in the form of fine particles having an average particle size of about 10 µm, which exhibit limited swelling capability in the presence of water so as not to exceed an average particle size of about 20 µm in the swollen state [col. 3 ln. 31–col. 4 ln. 60]. The limited swelling capability of the particles is resultant from the etherification of the starch – cured coatings formed from the compositions to which the particles have been added exhibit substantially increased abrasion resistance, which Schelhaas attributes directly to the (limited) swollen state of the starch ether particles within the specified average particle size; the freshly-formed coatings also exhibit reduced “stickiness” (i.e., exhibit reduced blocking) and are less susceptible to damage which may occur during processing [col. 3 ln. 31–col. 4 ln. 14; col. 4 ln. 68–col. 5 ln. 9; col. 6 ln. 1-16].
Krendlinger, relied upon in an optional manner relative to the totality of the foregoing, teaches that non-functionalized or (preferably) functionalized polyethylene wax intended for use as, inter alia a lubricant in water-based, thermally-curable coating compositions is typically dispersed or emulsified therein in micronized form, e.g., having a D50 average particle size of ≤ 4 microns [col. 1 ln. 5-54]. See MPEP 2144.07. Krendlinger also teaches that wax mixtures, including aqueous wax dispersions, may include 1-99 wt.% polyolefin wax relative to 1-99 wt.% of one or more additional components which may be, inter alia wetting agents/dispersants [col. 2 ln. 7–col. 4 ln. 54; col. 5 ln. 60–col. 6 ln. 20].
Witt-Sanson, Kainz, Schelhaas, and Krendlinger each constitute prior art which is directly analogous to the claimed invention – coating compositions inclusive of polyolefin wax (or other) lubricants which require, or seek to improve the degree of, abrasion resistance or resistance to mechanical/scratch damage, and/or wax dispersions for use as lubricants in thermally-curable coating compositions.
In view of the combined teachings of Witt-Sanson, Kainz, and Schelhaas, optionally also in view of Krendlinger, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the coating composition of Witt-Sanson by having utilized an aqueous wax dispersion including both micronized polyethylene wax (non-functionalized or functionalized) (5-65 wt.%, based on total weight of aqueous dispersion) and (at least) a micronized starch ether (max. 40 wt.%) as the lubricant (i.e., additive component (iii) of the composition set forth above), (I) in order to have reduced in-part or completely the amount of organic solvent required to formulate the composition while maintaining lubricant (re)dispersibility therein, (II) to have increased the abrasion resistance and/or mechanical damage resistance of, and/or reduced blocking of, the cured coating, and/or (III) to have reduced the amount of, or eliminated the presence of, synthetic emulsifiers/dispersants/surfactants otherwise required to be present in the coating composition to disperse/re-disperse the (polyethylene) wax lubricant.
In accordance with the foregoing modification, the coating composition of Witt-Sanson from which the thermally-cured coating (layer) on the monobloc aerosol can is derived would have included components (i)-(iii) as stated above (¶22), wherein additive component (iii) would have comprised an aqueous wax dispersion comprising water, micronized polyethylene wax having an average particle size of from 1-20 µm, such as a D50 of ≤ 4 µm, and micronized starch ether, e.g., micronized hydroxypropyl starch having an average particle size (dry) of about 10 µm, wherein the wax would have defined from 5-65 wt.% of the dispersion, and the starch ether would have defined up to a maximum of 40 wt.% (e.g., about 0.01-40 wt.%, such as 1-40 wt.%) of the dispersion, the balance being water and optionally, additional carbohydrate derivatives. The aforesaid wax dispersion would have been included in the coating composition in an amount of at least 0.01 wt.% based on total solid weight of the composition [Witt-Sanson, 0195].
The aforesaid aqueous wax dispersion implicitly defines a weight ratio of micronized polyethylene wax to micronized starch ether which, through calculation based on 100 parts total (the balance being water and utilizing min. 1 wt.% micronized starch ether), is about 98.5:1.5 to 11:89, of which overlaps with, and thereby renders prima facie obvious the claimed weight ratio of micronized polyolefin wax to micronized polysaccharide of 95:5 to 5:95 (see MPEP 2144.05(I)).
The monobloc aerosol can of Witt-Sanson, as modified above (hereinafter “modified Witt-Sanson”), reads on the monobloc aerosol can defined by each and every limitation of claim 2. The micronized polyethylene wax having an average particle size from 1-20 µm reads on the micronized polyolefin wax, the micronized starch ether having an average particle size (dry) of about 10 µm reads on the micronized polysaccharide, and the weight ratio of the foregoing components reads on the claimed weight ratio as indicated in the preceding paragraph.
Regarding claim 3, in view of the rejection of claim 2 above, as well as the rejection and corresponding interpretation of claim 3 under 35 U.S.C. 112(b) above, it is noted that modified Witt-Sanson is silent regarding the cured coating (layer) exhibiting a scratch resistance of at least 10 revolutions, as claimed.
Witt-Sanson discloses that the film thickness (dry) of the coating (layer) on the aerosol can is suitably from 0.1-300 µm [0219]; the coating composition can comprise from 10-99.9 wt.% (total solid weight of composition) of the polyester-imide [0180]; the coating composition comprises at least 1 wt.% (total solids) of the crosslinker [0181]; the weight ratio of the polyester-imide to crosslinker of 50:1 to 1:10 [0177]; the coating composition comprises at least 0.01 wt.% of the lubricant (i.e., in accordance with modified Witt-Sanson, the aqueous wax dispersion set forth above in rejection of claim 1); and the acid value (at least 10 mg KOH/g) of the polyester-imide may be up to 150 mg KOH/g [0053-0054]. The coating composition is heat cured at 50-350°C to form the coating (layer) [0205].
In light of the foregoing, and in view of the rejection of claim 2 above, the coating (layer) of the monobloc aerosol can of modified Witt-Sanson is substantially identical to the over varnish layer derived from the over varnish composition as claimed and as disclosed in Applicant’s spec in terms of:
(a) the film-forming resin being a crosslinkable polyester polymer, rendered cross-linkable via acid-functionality;
(b) the polyester polymer acid value – Applicant’s spec broadly discloses, and specifically exemplifies, use of Italester H28 [spec, 0086; Table 1] as polyester of the composition, of which exhibits an acid value of 45-55 mg KOH/g [Italester Webpage, p. 1 – Technical Features];
(c) the amount of polyester polymer relative to total solid weight of the composition [spec, 0094];
(d) the crosslinker species (see rejections of claims 28-32 below and corresponding citations, incorporated herein by reference) [spec, 0106-0115];
(e) the amount of crosslinker relative to total solid weight of the composition [spec, 0116];
(f) the carrier/solvent of the composition being water, organic solvent, or a mixture thereof [spec, 0101-0105];
(g) the presence of both a micronized polyethylene wax and a micronized polysaccharide [claim 2];
(h) the relative weight ratio of the micronized polyethylene wax to the micronized polysaccharide [claim 2];
(i) the micronized polyethylene wax and micronized polysaccharide average particle sizes – those exemplified in Applicant’s specification are ≤ 6 µm (micro. PE) and ≤ 20 µm (starch) [spec, Table 1];
(j) the micronized polysaccharide species, i.e., a starch ether (hydroxypropyl starch) – spec broadly discloses, and specifically exemplifies, use of micronized starch as the micronized polysaccharide [spec, 0042-0043; Table 1];
(k) the total amount of micronized polyethylene wax and micronized polysaccharide included in the composition [spec, Table 1];
(l) the dry film thickness of the over varnish layer resultant after curing [spec, 0052]; and
(m) the layer being heat cured, and the temperature range of said heat curing [spec, 0122; claim 4].
In view of the coating composition, and coating (layer) derived therefrom formed on the monobloc aerosol can, of modified Witt-Sanson being substantially identical to the claimed and disclosed over varnish composition in terms of at least elements (a)-(m) identified above, it stands to reason, and there is a strong expectation, that the coating of modified Witt-Sanson would have necessarily exhibited a scratch resistance of at least 10 revolutions, as claimed, absent a showing of factually supported objective evidence to the contrary. Applicant is respectfully directed to MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
Regarding claim 4, in view of the rejection of claim 2 above, it is first noted that the limitation of claim 4 constitutes a product-by-process claim (see MPEP 2113(I) and (II)). Nevertheless, Witt-Sanson discloses that the thermosetting (thermally-curable) coating composition is cured, inter alia by heat curing at a temperature of from 50-350° C [0205], of which encompasses, and thereby renders prima facie obvious the claimed range of from 80-200° C (MPEP 2144.05(I)).
Regarding claim 6, the rejection of claim 2 above reads on the monobloc aerosol can defined by claim 6 – the micronized polyolefin wax of modified Witt-Sanson is micronized polyethylene wax (wherein the micronized polyolefin wax comprises a polyethylene wax and/or a polypropylene wax).
Regarding claim 10, in view of the rejection of claim 2 above, Witt-Sanson does not explicitly or implicitly disclose or teach/suggest that the coating composition (from which the cured coating is derived) requires, or may necessarily include, a perfluorooctanoic acid or derivative thereof. As such, the coating composition of modified Witt-Sanson would not have included said acid and derivatives thereof, and/or the coating composition of modified Witt-Sanson is reasonably interpreted as being free of said acid and derivatives thereof (wherein the over varnish composition is substantially free of perfluorooctanoic acid and derivatives thereof).
Regarding claims 28-29, in view of the rejection of claim 2 above, Witt-Sanson discloses that the crosslinker (component (ii)) suitably comprises a terminal, inter alia amino group [0079, 0103-0104] (claim 28, wherein the crosslinker comprises an amino group).
Additionally/alternatively, Witt-Sanson discloses that the crosslinker is suitably, inter alia an amino resin such as melamine formaldehyde [0079, 0084], with non-limiting example(s) including those of the hexakis(methoxymethyl) melamine type, those of the butylated methyol melamine type resins, and mixed ether type methylal melamine resins [0084] (claim 28, wherein the crosslinker comprises an amino group; claim 29, wherein the crosslinker comprises a melamine formaldehyde material) – see spec [0111].
Regarding claim 30, in view of the rejection of claim 2 above, Witt-Sanson discloses that the crosslinker is suitably, inter alia a phenol formaldehyde resin, such as resol type phenol formaldehyde resins [0079, 0082] (wherein the crosslinker comprises a hydroxy-substituted aromatic group).
Regarding claim 31, in view of the rejection of claim 2 above, Witt-Sanson discloses that the crosslinker is suitably, inter alia an isocyanate resin [0079, 0083] (wherein the crosslinker comprises an isocyanate).
Regarding claim 32, in view of the rejection of claim 2 above, Witt-Sanson discloses that the crosslinker is suitably, inter alia a benzoguanamine formaldehyde material [0079, 0085] (wherein the crosslinker comprises a benzoguanamine formaldehyde material).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
US 2015/0344732 to Witt-Sanson et al. – discloses coating compositions for forming coating (layers) on the internal surface(s) of monobloc aerosol cans, said compositions including polyester film-forming polymer, crosslinker, and additives including, inter alia lubricants [Abstract; 0001-0004, 0008-0012, 0052-0060, 0064, 0067]
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782
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