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 .
Preliminary Amendment
The preliminary amendment filed on November 28, 2023 has been entered. Claims 1-20 are pending.
Claim Objections
Claim 11 is objected to because of the following informalities. Claim 11 sets forth a glass transition temperature range but does not set forth the standard used to determine the glass transition temperature. The specification appears to suggest that ASTM D3418-12 is the standard used.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-11, and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/565,220 (now allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap with the claimed invention in US ‘220. For example, regarding claim 1, US ‘220 claims components (a), (b), and (c) in the claimed amounts (see claims 1, 6, and 17) in addition to other components, such as a hydroxy functional polyester polymer. Thus, US ‘220 anticipates claim 1. The other rejected claims are either anticipated or clear obvious variants to the claimed invention of US ‘220.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-15, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 202212499. An English language machine translation is attached to this Office action and relied on in the below rejection.
Regarding claims 1 and 9, JP ‘499 discloses a powder coating composition comprising (a) an addition polymer comprising epoxy functional groups, i.e., glycidyl group containing acrylic resin, (b) a carboxylic acid functional crosslinker, and (c) a blocked isocyanate functional crosslinker ([0010], [0020], [0037]). JP ‘499 discloses that that the glycidyl group containing monomer is present in an amount of between 15-80 wt% of the addition polymer [0020], which overlaps with the presently claimed range of 10-22 wt%. As set forth in MPEP 2144.05, “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). While Tables 3-5 of the specification show some evidence of unexpected results, the present claims are not commensurate in scope with the showings set forth in these tables because, in addition to the amount of GMA used, the amount of crosslinker is varied among the examples and comparative examples. Further, some of the undesirable examples set forth in these tables have a GMA content within the presently claimed range. For example, see paragraph [0081] of the specification that summarizes these tables and states that the “most robust physical properties are achieved by incorporating at least 15 weight % of an epoxy functional ethylenically unsaturated monomer in the mixture”.
Regarding claims 2 and 3, JP ‘499 discloses an epoxy functional methacrylate monomer [0021].
Regarding claims 4-6, JP ‘499 discloses the use of one or more non-functional ethylenically unsaturated monomers, which can include aliphatic and aromatic monomers ([0022]-[0028]).
Regarding claim 7, JP ‘499 discloses that the content of the non-functional monomer(s) is preferably 10 to 80 wt% of component (a) [0029], which overlaps with the claimed range.
Regarding claim 8, a reaction product of components (a) and (b) comprises hydroxyl functional groups and the blocked isocyanate crosslinker (c) is reactive with the hydroxyl functional groups.
Regarding claim 10, JP ‘499 discloses that the use of pigment particles is optional ([0046], [0047]).
Regarding claim 11, since the coating of JP ‘499 uses the same materials in overlapping amounts as the present invention, it is reasonable to conclude that the addition polymer of JP ‘499 would have a glass transition temperature within the claimed range. See MPEP 2112. Moreover, JP ‘499 discloses that that the addition polymer has a softening temperature of between 30ᵒC to 150ᵒC [0032].
Regarding claim 12, JP ‘499 discloses a content of addition polymer outside of the claimed range [0033]. However, it would have been obvious to one of ordinary skill in the art to have discovered workable ranges, which includes using an addition polymer in an amount of at least 70 wt%, through routine experimentation. As set forth in MPEP 2144.05, “where 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). As set forth in JP ‘499, the amount of addition polymer used is a result effective variable based on the matting effect and viscosity desired [0033].
Regarding claims 13-15, and 18, JP ‘499 discloses that the powder coating can be applied to a substrate, including aluminum plates and pretreatment or undercoated layers and substrates [0052].
Claims 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 202212499 in view of Larson et al. (U.S. Pub. 2016/0355626).
JP ‘499 does not specifically disclose applying the powder composition unto a metal wheel for a vehicle. Larson discloses a similar powder coating composition that is applied to a metal vehicle wheel. It would have been obvious to one of ordinary skill in the art to have applied the powder composition of JP ‘499 onto a metal vehicle wheel, as taught in Larson, motivated by the desire to obtain a coated metal wheel that exhibited a high degree of weather resistance (JP ‘499 [0009]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781