DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 25-39 and 41-46 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Calhoun et al. (US 2020/0095459, “Calhoun”).
Regarding claim 25, Calhoun teaches a coating compositions for food and beverage applications ([0006] – [0010]) comprising a polyether-ester copolymer (or polyester-ether copolymer, [0014], [0024], [0026]) having hydroxyl groups pendant to the backbone of the copolymer (e.g., [0041] – [0062]). Calhoun teaches that the copolymer may be derived from ingredients including a diepoxide and a diol ([0063], [0064]). While Calhoun does not teach that the specific diol compounds that may be included are Tg increasing, because they are substantially similar to those described in the present specification they will be considered to be Tg increasing (see Calhoun [0064], [0018], various polycyclic or aromatic diols, including substantially similar ones to those represented as Tg increasing in claim 28). Calhoun further teaches the inclusion of additives (e.g., lubricants, [0096]). It should be noted that claim 25 includes product-by-process limitations. "[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). Please see MPEP 2113. While the derivation of the copolymer may affect its structure insofar as the copolymer comprises the constituent elements, it is the structure of the copolymer itself that is afforded patentable weight.
Regarding claims 26 and 27, Calhoun teaches that the Tg-increasing diol may include one or more structural groups having a cycloaliphatic ring, wherein the rings share an atom and wherein the rings are fused (e.g., may be isosorbide, which shares two atoms, [0064]).
Regarding claim 28, Calhoun additionally teaches that the diol may comprise a 2,2,4,4-tetramethyl-1,3-cyclobutanediol (i.e., a cyclobutanedimethanol, [0064]).
Regarding claim 29, Calhoun additionally teaches that the polyether-ester (i.e., polyester-ether) may be derived from a diepoxide (e.g., [0063], diepoxide may be reacted with various components) and an ester component having a hydroxyl functional group (e.g., [0041] - [0045], thus being a polyester prepolymer).
Regarding claims 30 - 32, Calhoun additionally teaches that the diepoxide component may be derived from a Tg increasing diol which may contain a polycyclic or monocyclic group ([0064], e.g., 2,2,4,4-tetramethyl-1,3-cyclobutanediol or isosorbide). Therefore, the diepoxide resin may include a polycyclic structural group (see, e.g., 2,2,4,4-tetramethyl-1,3-cyclobutanediol, [0064]).
Regarding claims 33 and 34, Calhoun additionally teaches that the polyether ester copolymer may be formed from ingredients including an anhydride reacting with a prepolymer (i.e., with a reacted combination of monomers, see [0063], and [0080]).
Regarding claims 35 and 36, Calhoun additionally teaches that both terminal ends of the backbone for a polyester prepolymer may be carboxyl groups (may be for example acrylic acid groups, [0076]).
Regarding claim 37, Calhoun additionally teaches that the number average molecular weight should be at least 2000 ([0026]).
Regarding claims 38 and 39, Calhoun additionally teaches that the glass transition temperature should be at least 60C ([0026]).
Regarding claim 41, Calhoun additionally teaches the inclusion of a diol in an amount of greater than 1% by weight (see, for example, Example 1, wherein a hydroquinone is included in an amount of greater than 1% by weight ([0119]).
Regarding claim 42, Calhoun additionally teaches that the functionalized polymer (i.e., the polyester-ether may comprise at least 10% of the coating solution ([0077]).
Regarding claim 43, Calhoun additionally teaches that the composition may comprise at least 1 percent of a crosslinker ([0093]).
Regarding claim 44, Calhoun additionally teaches that the composition may be substantially free of BPA, BPF, and BPS ([0083]).
Regarding claim 45, Calhoun additionally teaches substantially similar properties as those claimed under substantially similar testing environments. For example, the composition may have a dry adhesion rating of 10 ([0112], [0147], [0148], Tables 3-5), a blush rating of 9 (e.g., [0148], [0113], Tables 3-5), may have over 100 MEK double rubs (see Table 1, [0145]), and may have a Tg of greater than 90C ([0058]).
Regarding claim 46, Calhoun additionally teaches that the composition may be applied to a metal substrate for use in a food or beverage container (e.g., [0004] – [0008], [0070]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Calhoun as applied to claim 25, above, and further in view of O’Brien et al. (US 2019//0085170, “O’Brien”).
Regarding claim 40, the combination remains as applied to claim 25, above, however Calhoun fails to specifically teach that the polyester prepolymer has an acid number of at least 10 mg KOH per gram of prepolymer. However, in the same field of endeavor of polyesters (e.g., [0066]), O’Brien teaches that it is useful to maintain an acid number of between 70 and 200 mg KOH per gram polymer in order to provide the polymer with dispersibility in water (see [0080]) and therefore adopting such an acid number would have been obvious to the ordinarily skilled artisan at the time of filing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 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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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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