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 .
The preliminary amendments filed 12/11/2023 and 4/9/2024 have been entered. Claims 1-20 are pending in the application.
Claim Objections
Claim 17 is objected to because of the following informalities: “any” before “claim 14” on line 1 should be deleted. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “a aqueous” on line 2 should be “an aqueous”. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “A” or similar term should be added before “Metal” at the beginning of the claim. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 18 both recite the following broad recitations along with a number of narrower statements of the broader range(s)/limitation(s):
“0-75 mole %” and “preferably 0-65 mole %, more preferably 0-60 mole %, even more preferably 0-55 mole %” for component 1a);
“10-60 mole %” and “preferably 15-50 mole %, more preferably 15-40 mole %, even more preferably 15-35 mole %, still even more preferably 20-30 mole %, most preferably 25-30 mole%” for component 1b);
“0-25 mole %” and “preferably 0 mole %” for component 1c);
“0-5 mole %” and “preferably 0-2 mole %, more preferably 0-1 mole %” for component 1d);
“0-50 mole %” and “preferably 10-40 mole %, more preferably 20-30 mole %” for component 2a);
“50-100 mole %” and “preferably 60-90 mole %, more preferably 70-80 mole %” for component 2b);
“70-95” and “preferably 75-90” for the first step i and the second step ii; and
“5-30” and “preferably 10-25” for the first step ii and the second step i;
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims, especially in light of the “preferably”, “more preferably” and/or “most preferably” recitations. In addition, with respect to both VP1 and VP2, claims 1 and 18 merely recite, “wherein the sum of mole percentages does not exceed 100%” (emphasis added), but do not specifically state the basis for the recited mole percentages nor that the sum of the recited mole percentages total 100%, and given that the claims are drafted in open transitional language such that the multiphase acrylic polymer, the vinyl polymer VP1, and the vinyl polymer VP2 may comprise additional monomer units in addition to the recited monomers and molar contents thereof, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement. For example, in the case where vinyl polymer VP1 comprises 0 mole% of a) (cyclo)alkyl (meth)acrylates and a maximum content of b), c) and d), of 60 mole%, 25 mole%, and 5 mol%, respectively, the total would only 90 mole% and thus would the amount actually be based on 90 mole% or would the polymer further comprise an additional 10 mol% of an ethylenically unsaturated polymerizable monomer? And could that monomer be another monoethylenically unsaturated monomer in addition to a different, copolymerizable, monoethylenically unsaturated monomer attributed to c), or is the amount of all “different, copolymerizable, monoethylenically unsaturated monomers” limited to 25 mole % based upon 100 mole% of the total amount of monomers, or based upon the total of monomers a)-d), etc.?
Claims 1 and 18 also recite the limitations “the acid value of VP1” and “the hydroxyl number of vinyl polymer VP1” on lines 17-18 and lines 23-24, respectively. There is insufficient antecedent basis for these limitations in the claims. Claims 1 and 18 further recite the parenthetic expression “(calculated on 100 parts by weight of the prepared copolymer)” (emphasis added) in steps i-ii on lines 29-40 and lines 35-46, respectively, however, it is unclear whether the expression within the parentheses is meant to be part of the claimed invention, and given that “the prepared copolymer” lacks clear antecedent basis, claims 1 and 18 are further indefinite. Lastly, it is noted that a claim in which one ingredient is defined so broadly that it reads upon a second does not meet the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, wherein in the instant case, vinyl polymer VP1 and vinyl polymer VP2 may read upon each other, and hence, in addition to the above reasons, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-17 and 19-20 do not remedy the above and hence are indefinite for the same reasons. In addition, claims 8-10, 12-13 and 15-20 are further indefinite and one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement for the following reasons:
Claim 8 recites the phrase “preferably” on line 3, rendering claim 8 (and claim 9 which is dependent on claim 8) indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation “the synthesis” on line 2, however, there is insufficient antecedent basis for this limitation in the claim; and also recites a parenthetic expression on lines 2-3 wherein it is unclear whether the expression within the parentheses are meant to be part of the claimed invention.
Claim 10 recites “the acid value of vinyl polymer VP2” on lines 1-2, however, there is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites that each of vinyl polymer VP1 and vinyl polymer VP2 “comprises” mole percentages of specific monomers but fails to recite a basis for said percentages, and given that the recited mole percentages are not required to total 100%, it is unclear as to what VP1 and VP2 comprise, e.g. if VP1 “comprises” 0 mole% of butyl methacrylate given the 0-75 mole% range, 25 mole% of 2-hydroxyethyl methacrylate falling within the 20-30 mole% range, 0 mole% of different, copolymerizable, monoethylenically unsaturated monomers as claimed, and 1 mole% of acid functional monoethylenically unsaturated monomers given the 0-2 mole% range, for a total of only 26 mole%, can VP1 further comprise 74 mole% of butyl acrylate or other (cyclo)alkyl (meth)acrylate falling within the overall 0-75 mole% range for component a) as recited in claim 1 from which claim 11 depends?
Claim 12 recites “the monoethylenically unsaturated monomers” on lines 1-2 and line 5, however, given that claim 12 depends upon claim 1 which recites a number of monoethylenically unsaturated monomers with respect to vinyl polymer VP1 and/or VP2, it is unclear whether the limitations “are obtained from renewable feedstock and have a bio-based carbon content of more than 20% by weight of total carbon content of the monomer” and/or “are recycled monomers” refer to all of the monoethylenically unsaturated monomers or only specific monoethylenically unsaturated monomers, e.g. only monomers c) and/or monomers d).
Claim 13 recites, “The aqueous polyacrylate dispersion of claim 1, wherein the aqueous polyacrylate dispersion is applied on a substrate for the refinishing of cars, the finishing of trucks, buses, trains, and airplanes, and the finishing of cars, more preferably for metallic coatings on metals and plastics for automotive OEM” (emphasis added), however, it is first noted that there is insufficient antecedent basis for “the refinishing” and “the finishing” limitations. It is also noted that the claim is directed to “The aqueous polyacrylate dispersion” as recited in the preamble of claim 13 such that it is unclear whether the limitation “is applied on a substrate” is merely directed to the intended end use of the dispersion or whether the claimed “aqueous polyacrylate dispersion” requires the presence of the substrate and hence the claim is actually directed to a coated substrate and not the aqueous polyacrylate dispersion. Lastly, given the recitation of the phrase “more preferably” on lines 3-4, it is unclear whether the limitation(s) following the phrase are meant to be part of the claimed invention.
Similar to claim 8, claim 15 recites the phrase “preferably” on line 3 such that it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 16, the phrase "such as" (see line 3) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 16 also recites the limitation “preferably” on line 5 which similarly renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Claims 17-18 recite the limitation “at least one or more conventional ingredients selected from the group consisting of non-vinyl polymers…and the like, and mixtures thereof” (emphasis added), in lines 2-5 and lines 2-6, respectively; however, the phrase "and the like" (see claim 17, line 5, and claim 18, line 6) renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). It is also unclear as to what is meant to be encompassed by “conventional” ingredients, e.g. what would be considered “conventional” non-vinyl polymers versus unconventional non-vinyl polymers? Further, given that claim 18 is directed to a method of making a coating composition according to claim 17, wherein the coating composition of claim 17 comprises “at least one or more conventional ingredients selected from” the same Markush group of ingredients repeated in claim 18 along with the aqueous coating composition of claim 14 which already includes “0.1 to 100 wt % of the aqueous polyacrylate dispersion PAD according to claim 1”, it is unclear whether “at least one or more conventional ingredients” on lines 2-6 of claim 18 as well as “a aqueous polyacrylate dispersion PAD” recited on line 2 of claim 18 are the same as the “conventional ingredients” and the “aqueous polyacrylate dispersion PAD” already recited in claim 17, and similarly whether the limitations directed to “a multiphase acrylic polymer…a vinyl polymer VP1…and 2) a vinyl polymer VP2” (emphasis added) on lines 7-46 which appear to be a duplication of limitations already recited in claim 1, are meant to refer to the multiphase acrylic polymer, the vinyl polymer VP1, and the vinyl polymer VP2, already recited in claim 1, or are directed to an additional multiphase acrylic polymer, e.g. should all of the components recited in claim 18 be referred to as “the” or “said”, or for that matter, given the redundancy and for the sake of clarity, should the bulk of the repeated limitations in claim 18 be deleted?
Claim 19 recites, “The aqueous coating composition of claim 14, wherein aqueous coating composition is applied on a substrate for the refinishing of cars, the finishing of trucks, buses, trains, and aero planes, and the finishing of cars, preferably for metallic coatings on metals and plastics for automotive OEM” (emphasis added), however, it is first noted that there is insufficient antecedent basis for “the refinishing” and “the finishing” limitations. It is also noted that the claim is directed to “The aqueous coating composition” as recited in the preamble of claim 19 such that it is unclear whether the limitation “is applied on a substrate” is merely directed to the intended end use of the composition or whether the claimed “aqueous coating composition” requires the presence of the substrate and hence the claim is actually directed to a coated substrate and not the aqueous coating composition. Lastly, given the recitation of the phrase “preferably” on line 3, it is unclear whether the limitation(s) following the phrase are meant to be part of the claimed invention.
Claim 20 recites, “Metal or plastic substrate, preferably a plastic substrate” (emphasis added) on line 1, wherein “a plastic substrate” is a narrower statement of the broader “Metal or plastic substrate” and thus rendering the claim indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims, particularly in light of the “preferably” recitation.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Lastly, it is noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even 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 art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
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 1-10, 12-14, and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsukiyama (US2004/0059022A1). Tsukiyama discloses an aqueous resin dispersion for use in various coating applications including for the formation of multilayer coatings films on an automobile, and a method for producing the same (Abstract, Paragraphs 0001-0002, 0004, and 0138), wherein the aqueous resin dispersion comprises a core/shell-type acrylic resin produced by multistage emulsion polymerization and includes: “a core part comprising a resin (C) having an acid value of not more than 20 and a hydroxyl group value of not more than 100 and being emulsion-polymerized from a polymerizable unsaturated monomer (c) containing neither acid group nor hydroxyl group, and optionally a hydroxyl group-containing polymerizable unsaturated monomer (b), and optionally an acid group-containing polymerizable unsaturated monomer (a), and a shell part comprising a resin (S) having an acid value of 30 to 150 and a hydroxyl group value of 10 to 100 and being emulsion-polymerized from the acid group-containing polymerizable unsaturated monomer (a), the hydroxyl group-containing polymerizable unsaturated monomer (b), and the polymerizable unsaturated monomer (c) containing neither acid group nor hydroxyl group” (Abstract), wherein the shell component resin (S) is produced in the presence of the core component resin (C) as in the examples (Entire document, particularly as noted above and examples). Tsukiyama specifically discloses a comparative example, Comparative Example 6 (see Examples, Tables 1-2), comprising an aqueous polyacrylate dispersion comprising a 70/30 (weight ratio) core/shell (multiphase) acrylic polymer comprising two phases: a first phase comprising a core resin (e.g. “VP1”) produced by emulsion polymerization of 20 parts by weight (pbw) methyl methacrylate (MMA), 20 pbw styrene (S), 120 pbw butyl acrylate (BA), and 51 pbw 2-hydroxyethyl acrylate (HEA) (thus calculated on a 100 mole% basis: 11.30 mole% MMA, 10.87 mole% S, 52.98 mole% BA, and 24.85mole% HEA, reading upon the claimed monomers and contents thereof as recited in instant claims 1-4, 6, and 18) in the presence of water and 8 pbw of an anionic emulsifier (NEWCOL 293 from Nippon Nyukazai Co., Ltd., reading upon instant claims 8-9) providing a core resin (C) having an acid value of 0 mg KOH/g and a hydroxyl group value of 117 mg KOH/g (as in instant claims 1 and 18); and second phase comprising a shell resin (e.g. “VP2”) produced by emulsion polymerization of 22 pbw MMA, 10 pbw S, 35 pbw ethyl acrylate (EA), 8 pbw acrylic acid (AA), and 15 pbw HEA (thus calculated on a 100 mole% basis: 24.266 mole% MMA, 10.603 mole% S, 38.606 mole% EA, 12.260 mole% AA, and 14.265 mole% HEA, reading upon the claimed monomers and contents thereof as recited in instant claims 1, 3, 5, 6) in the presence of the core component resin (C) providing a shell resin (S) thereon having an acid value of 70 mg KOH/g (as in instant claim 10) and a hydroxyl group value of 81 mg KOH/g (reading upon instant claim 7 in light of the above hydroxyl group values of the core and shell); thereby anticipating instant claims 1-10.
With respect to instant claim 12, the Examiner takes the position that the limitation with respect to “the monoethylenically unsaturated monomers for vinyl polymer VP1 and/or VP2 are recycled monomers” is a process limitation in the product claim given that the “recycled” limitation merely refers to a source of the monomers, and given that the “recycled” recitation does not provide any additional material or structural limitations to the claimed VP1 and/or VP2 polymers nor the claimed aqueous polyacrylate dispersion and multiphase acrylic polymer comprising VP1 and VP2 to differentiate the claimed invention of instant claim 12 from the aqueous polyacrylate dispersion of Comparative Example 6 disclosed by Tsukiyama, the claimed invention as recited in instant claim 12 is anticipated by Tsukiyama.
With respect to instant claims 13-14 and 16-20, as noted above, Tsukiyama discloses that the aqueous resin dispersion may be utilized as a coating composition or coating material in the formation of multilayer coating film on an automobile (Paragraph 0138, e.g. as in instant claim 13), and given that in testing the exemplified core/shell emulsions, including the core/shell emulsion produced in Comparative Example 6, Tsukiyama mixes the produced emulsion with 30 parts of water and 3 parts of adipic acid dihydrazide as a cross-linking auxiliary agent (Paragraphs 0067-0068, 0089; reading upon the claimed “crosslinker C” of instant claim 14 including in a content as instantly claimed, on either a solids basis or total weight basis, as well as the claimed “amino resins” of instant claim 16) to produce an aqueous coating composition that is then tested for alkali thickening performance (Paragraphs 0090-0094 and 0104) by mixing with a thickener (as in instant claims 17-18) and tested for warm water resistance (Paragraphs 0098-0104) by applying the aqueous coating composition to a plastic substrate to form a coating film thereon (as in instant claims 13 and 19-20), thereby anticipating instant claims 13-14 and 16-20 given that the claimed “for the refinishing of cars, the finishing of trucks, buses, trains, and airplanes, and the finishing of cars, more preferably for metallic coatings on metals and plastics for automotive OEM” of instant claim 13 and similarly the claimed “for the refinishing of cars, the finishing of trucks, buses, trains, and aero planes, and the finishing of cars, preferably for metallic coatings on metals and plastics for automotive OEM” as in instant claim 19 constitute intended end use of the claimed aqueous polyacrylate dispersion and the claimed aqueous coating composition, respectively.
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 1-10, 12-14, and 16-20 as well as claim 11 are (further) rejected under 35 U.S.C. 103 as being unpatentable over Tsukiyama as applied above to claims 1-10, 12-14, and 16-20 and further discussed below, wherein in addition to the teachings of Tsukiyama as discussed in detail above (and incorporated herein by reference) with at least one comparative example clearly anticipating the claimed invention as recited in instant claims 1-10, 12-14, and 16-20 for the reasons above, it is further noted that Tsukiyama clearly teaches that the inventive aqueous resin dispersion comprises a core/shell-type resin produced by multistage emulsion polymerization wherein the core part comprising a resin (C) having an acid value of not more than 20 mg KOH/g falling within the claimed “lower or equal to 30 mg KOH/g” for VP1, and a hydroxyl group value of not more than 100 mg KOH/g thereby overlapping and hence rendering obvious the claimed “100-250 mg KOH/g” as recited in instant claims 1 and 18; and a shell part comprising shell component (S) produced from monomers (a), (b), and (c), as noted above; wherein “it is preferable that each monomer component is used so that the total weight Sw of the polymerizable unsaturated monomers in the preparation of the shell component resin (S) and the total weight Cw of the polymerizable unsaturated monomers in the preparation of the core component resin (C) satisfy” the equation: 10/100≤Sw/(Sw+Cw)≤50/100, e.g. the shell component resin (S) as the instantly claimed vinyl polymer VP2 constitutes 10 to 50 parts by weight with respect to 100 parts by weight of the prepared multistage core/shell polymer as in instant claims 1 and 18 (Paragraph 0051). Tsukiyama also teaches that the “acid group-containing polymerizable unsaturated monomer (a) is a compound having not less than one unsaturated double bonds and acid groups in one molecule” (Paragraph 0035), with examples thereof including (meth)acrylic acid (Paragraph 0036, as in instant claims 1, 6, 11, and 18); while examples of the hydroxyl group-containing polymerizable unsaturated monomer (b) include 2-hydroxyethyl (meth)acrylate, hydroxypropyl (meth)acrylate, hydroxybutyl (meth)acrylate, and combinations thereof (Paragraph 0037; as in instant claims 1, 3, 11, and 18); and the polymerizable unsaturated monomer (c) containing neither acid group nor hydroxyl group includes at least one monomer selected from the group consisting of (meth)acrylates, styrenic monomers, (meth)acrylonitrile and (meth)acrylamide” (Paragraph 0018) such as styrene, methyl (meth)acrylate, n-butyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, and combinations thereof (Paragraphs 0018 and 0039-0041), with the methyl (meth)acrylate, (meth)acrylamide, and styrene reading upon the instantly claimed “different, copolymerizable, monoethylenically unsaturated monomer” of VP1 and/or VP2 of instant claims 1, 4-5, 11, and 18; and the n-butyl (meth)acrylate and 2-ethylhexyl (meth)acrylate reading upon the instantly claimed (cyclo)alkyl (meth)acrylate monomers of which the (cyclo)alkyl group contains 4-12 carbon atoms of VP1 as in instant claims 1-2, 11, and 18), with working examples utilizing monomers and contents as instantly claimed; and given that Tsukiyama teaches that the amount(s) of acid group-containing monomer (a) and hydroxyl group-containing monomer (b) in the emulsion polymerization for the core component resin should be determined to provide an acid value of not more than 10 mg KOH/g, falling within the claimed acid value of VP1 and a hydroxyl number of not more than 100 mg KOH/g, reading upon the claimed hydroxyl number endpoint of 100 mg KOH/g of VP1; and similarly for preparing the shell resin (S) by emulsion polymerization in the presence of the core resin (C), “the acid group-containing polymerizable unsaturated monomer (a), a hydroxyl group-containing polymerizable unsaturated monomer (b), and any other polymerizable unsaturated monomer (c) are used in such a ratio that both of the acid value and hydroxyl group value of the resin (S) obtained are within” (Paragraph 0049) an acid value range of 30 to 150 mg KOH/g (as in instant claim 10) and a range of 10 to 100 mg KOH/g for the hydroxyl group value (Paragraph 0047) reading upon and/or rendering obvious the instantly claimed hydroxyl value of the multiphase acrylic polymer as recited in instant claim 7 (Paragraphs 0043-0050, 0055-0058, 0061-0062), the Examiner takes the position that the claimed invention as recited in instant claims 1-10, 12-14, and 16-20 as well as instant claim 11 would have been obvious over the teachings of Tsukiyama, given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the monomers and combinations thereof as taught by Tsukiyama, particularly as in the examples, utilizing routine experimentation to determine the optimum content of each monomer to provide the desired acid and hydroxyl values (mg KOH/g) for a particular end use of the aqueous resin dispersion, and especially given the absence of any clear showing of criticality and/or unexpected results.
Claims 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Elizalde (US2011/0245401A1). Elizalde teaches a one-component or two-component coating composition (Claim 1) that can be applied to a variety of substrates, such plastic substrates (Paragraph 0153) and particularly metals (Paragraph 0153, Claim 12), comprising at least one aqueous polymer dispersion (Paragraphs 0137-0139, 0145, and Examples) “obtainable by at least two-stage emulsion polymerization of in a first stage, reaction of (A1) at least one alkyl (meth)acrylate, (B1) optionally at least one vinylaromatic having up to 20 C atoms, (C1) at least one hydroxyalkyl (meth)acrylate, (D1) optionally at least one free-radically polymerizable compound selected from the group consisting of ethylenically unsaturated nitriles having up to 20 C atoms, vinyl esters of carboxylic acids containing up to 20 C atoms, vinyl halides having up to 10 C atoms, and vinyl ethers of alcohols containing 1 to 10 C atoms, (E1) optionally at least one α,β-ethylenically unsaturated carboxylic acid, (F1) optionally at least one crosslinker, (G1) optionally at least one compound selected from the group consisting of 2-(2-oxoimidazolidin-1-yl)ethyl meth(acrylate) (ureidoethyl (meth)acrylate), acetoacetoxyethyl acrylate, acetoacetoxypropyl methacrylate, acetoacetoxybutyl methacrylate, 2-(acetoacetoxy)ethyl methacrylate, diacetoneacrylamide (DAAM), and diacetonemethacrylamide, (H1) optionally at least one compound having a (meth)acrylate group and an epoxy group, and (I1) optionally at least one α,β-ethylenically unsaturated carboxamide, in the presence of at least one initiator and optionally in the presence of at least one emulsifier and also, optionally, in the presence of at least one regulator, with the proviso that the copolymer obtained from the first stage has an acid number of not more than 10 mg KOH/g polymer, a hydroxyl number of 2 to 100 mg KOH/g polymer [reading upon the instantly claimed acid and hydroxyl values of instant claims 1 and 18]…and the sum of the monomers (C1) and (I1) is from 0.5% to 20% by weight, followed by a free-radical polymerization, in a subsequent stage, in the presence of the copolymer prepared in the first stage, of (A2) at least one alkyl (meth)acrylate, (B2) optionally at least one vinylaromatic having up to 20 C atoms, (C2) optionally at least one hydroxyalkyl (meth)acrylate, (D2) optionally at least one free-radically polymerizable compound selected from the group consisting of ethylenically unsaturated nitriles having up to 20 C atoms, vinyl esters of carboxylic acids containing up to 20 C atoms, vinyl halides having up to 10 C atoms, and vinyl ethers of alcohols containing 1 to 10 C atoms, (E2) optionally at least one α,β-ethylenically unsaturated carboxylic acid, (F2) optionally at least one crosslinker, and (G2) optionally at least one compound selected from the group consisting of 2-(2-oxoimidazolidin-1-yl)ethyl meth(acrylate) (ureidoethyl (meth)acrylate), acetoacetoxyethyl acrylate, acetoacetoxypropyl methacrylate, acetoacetoxybutyl methacrylate, 2-(acetoacetoxy)ethyl methacrylate, diacetoneacrylamide (DAAM), and diacetonemethacrylamide, (H2) optionally at least one compound having a (meth)acrylate group and an epoxy group, and (I2) optionally at least one α,β-ethylenically unsaturated carboxamide, optionally followed by one or more further stages of a free-radical polymerization of at least one monomer, the amount of the at least one emulsifier being 0% to 3.5% by weight, based on the total amount of the free-radically polymerizable monomers metered into the free-radical polymerization in all the stages, with the proviso that the weight ratio of the sum of the monomers of the first stage (A1) to (I1) to the sum of the monomers of the subsequent stages (A2) to (I2) is from 5:95 to 70:30 [reading upon the claimed parts by weight of steps i. and ii]…the acid number of the product of the last stage is not higher than the acid number of the product of the first stage, and the hydroxyl number of the product of the last stage is not higher than the hydroxyl number of the product of the first stage [reading upon and/or rendering obvious the hydroxyl value of instant claim 7 given the above range for the first stage], optionally at least one other binder, optionally at least one crosslinker selected from the group consisting of polyisocyanates and melamine-formaldehyde resins, optionally at least one pigment, [and] optionally at least one corrosion inhibitor” (Claim 1); wherein “the monomer (A2) is selected from the group consisting of methyl methacrylate, methyl acrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, and 3-propylheptyl acrylate” (Claim 2); “the monomer (B2) is selected from the group consisting of styrene and α-methylstyrene” (Claim 3); “the monomer (C1) is selected from the group consisting of 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, and 3-hydroxypropyl (meth)acrylate” (Claim 4); and “the emulsifier is an ionic emulsifier, preferably an anionic emulsifier” (Claim 6; as in instant claims 8-9 given the content above and the working examples).
Elizalde teaches that the monomer composition of the first stage is generally as follows: (A1) 30% to 99.5%, preferably 40% to 99%, more preferably 50% to 97% by weight of at least one alkyl (meth)acrylate; (B1) 0% to 70%, preferably 5% to 60%, more preferably 10% to 50% by weight of at least one vinylaromatic having up to 20 C atoms; (C1) 0.5% to 20%, preferably 1% to 15%, more preferably 3% to 10% by weight of at least one hydroxyalkyl (meth)acrylate; (D1) 0% to 20%, preferably 0% to 10%, more preferably 0% to 5%, and very preferably 0% by weight of at least one free-radically polymerizable compound selected from the group consisting of ethylenically unsaturated nitriles having up to 20 C atoms, vinyl esters of carboxylic acids comprising up to 20 C atoms, vinyl halides having up to 10 C atoms, and vinyl ethers of alcohols comprising 1 to 10 C atoms; (E1) 0% to 5%, preferably 0% to 3%, more preferably 0% to 1%, very preferably 0% to 0.5%, and more particularly 0% by weight of at least one α,β-ethylenically unsaturated carboxylic acid; (F1) 0% to 20%, preferably 0% to 10%, more preferably 0% to 5%, and very preferably 0% by weight; (G1) 0% to 20%, preferably 0% to 10%, more preferably 0% to 5%, and very preferably 0% by weight; (H1) 0% to 20%, preferably 0% to 10%, more preferably 0% to 5%, and very preferably 0% by weight; (I1) 0% to 19.5%, preferably 0% to 10%, more preferably 0% to 5%, and very preferably 0% by weight; and the sum, based on the monomers used in the first stage, is always 100% by weight, and the amount of monomer (E1) is such that the polymer obtained from the first stage has an acid number of not more than 10 mg KOH/g, with the proviso that the sum of the monomers (C1) and (I1) is from 0.5% to 20% by weight (Paragraphs 0089-0101); while the monomer feed for the second stage and optionally further, subsequent stages is generally: 1% to 100% of at least one alkyl (meth)acrylate (A2), 0% to 70% of at least one vinylaromatic having up to 20 C atoms (B2), 0% to 20% of at least one hydroxyalkyl (meth)acrylate (C2), 0% to 40% of (D2) monomer(s), 0% to 5% of at least one α,β-ethylenically unsaturated carboxylic acid (E2), 0% to 3.5% of at least one crosslinker (F2), 0% to 10% of (G2), 0% to 20% of (H2), and 0% to 20% of (I2), with each based on % by weight, and the sum of the monomers metered into second and further stages, is always 100% by weight (Paragraphs 0111-0121); and given the above monomers and amounts as taught by Elizalde and particularly as utilized in the working examples, reading upon and/or rendering obvious the instantly claimed monomers and amounts as recited in instant claims 1-6 and 11, the Examiner takes the position that the claimed invention as recited in instant claims 1-9 and 11 would have been obvious over the teachings of Elizalde given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to select from any of the monomers and combinations and contents thereof as taught by Elizalde, particularly as in the examples, to provide the desired properties including desired acid value and hydroxyl value for a particular end use of the aqueous polymer dispersion and coating composition.
With respect to instant claim 12, the Examiner again takes the position that the limitation with respect to “the monoethylenically unsaturated monomers for vinyl polymer VP1 and/or VP2 are recycled monomers” is a process limitation in the product claim given that the “recycled” limitation merely refers to a source of the monomers, and given that the “recycled” recitation does not provide any additional material or structural limitations to the claimed VP1 and/or VP2 polymers nor the claimed aqueous polyacrylate dispersion and multiphase acrylic polymer comprising VP1 and VP2 to differentiate the claimed invention of instant claim 12 from the aqueous polyacrylate dispersion taught and/or suggested by Elizalde, the claimed invention as recited in instant claim 12 would have been obvious over the teachings of Elizalde, particularly given that it is well established in the art to utilize renewable and/or recycled materials whenever possible to reduce cost and/or waste.
With respect to instant claims 13-20, the Examiner again notes that the claimed “for the refinishing of cars, the finishing of trucks, buses, trains, and airplanes, and the finishing of cars, more preferably for metallic coatings on metals and plastics for automotive OEM” of instant claim 13 (and similarly of instant claim 19) constitutes intended end use of the claimed aqueous polyacrylate dispersion (or aqueous coating composition), and given that the aqueous dispersions and/or coating compositions taught by Elizalde are capable of the same intended end use, particularly given that Elizalde specifically teaches that the coating composition can be applied to plastic and metal substrates as noted above (see also Paragraphs 0153, 0244-0250), and mentions an automotive coat system (Paragraph 0208), the claimed invention as recited in instant claim 13 would have been obvious over the teachings of Elizalde. Further, with respect to instant claims 14-20, Elizalde teaches that the one-component or two-component coating composition may further comprise optionally at least one crosslinker (Paragraph 0271) that can more broadly be selected from the group consisting of polyisocyanates (Paragraphs 0154-0200), melamine-formaldehyde resins, and urea-formaldehyde resins (Paragraphs 0201-0236, reading upon the claimed crosslinker C of instant claim 16), and more particularly recites that in one embodiment, the coating composition may be provided as a two-component coating composition that may for example comprise: 20 to 80% by weight of the at least one multistage emulsion polymer dispersion as binder, based on the solids content; 0 to 50% by weight of the optional at least one other binder, such as water-based polyurethane polyols, polyester polyurethane polyols, polyurethane polyacrylate polyols, polyurethane-modified alkyd resins, and fatty acid modified polyester polyurethane polyols, with preferred OH numbers of the other binders being 40-350 mg KOH/g resin solids for polyesters, and 15-250 mg KOH/g resin solids for polyacrylateols (thereby reading upon and/or rendering obvious the claimed “polyurethane dispersion PUD” of instant claim 14 in an amount reading upon and/or overlapping the claimed weight percentage range, as well as the claimed polyurethane dispersion PUD having a OH value of at least 35 mg KOH/g as recited in instant claim 15); 20 to 80% by weight of the optional at least one crosslinker selected from the group consisting of polyisocyanates, melamine-formaldehyde resins, and urea-formaldehyde resins, rendering the claimed range optionally, from 0 to 15 wt% of a crosslinker C obvious given that Elizalde clearly teaches that the crosslinker is optional and thus also clearly suggests a content that may range from 0% up to the 80% by weight in said two-component embodiment, wherein with respect to instant claim 16, Elizalde clearly teaches crosslinkers as claimed such that a 50/50 combination of, for example, polyisocyanate and urea-formaldehyde in a total content of 20% by weight would provide the polyisocyanate crosslinker in a content of 10% by weight reading upon instant claims 14 and 16; 0 to 50% by weight of the at least one pigment (as in instant claims 17-18); and 0 to 10% by weight of the optional at least one corrosion inhibitor (Paragraphs 0268-0290). Further, given that the limitations with respect to polyurethane U1 and polyurethane U2 of instant claim 15 are recited as merely being preferable with respect to the polyurethane dispersion (i.e. “preferably the polyurethane dispersion comprises” as recited on line 3 of instant claim 15), and thus are interpreted as not being required by the claimed invention (see the indefiniteness rejection of claim 15 above), and that Elizalde clearly teaches that the coating composition may be applied to a plastic or metallic substrate as discussed above, reading upon instant claims 19 and 20 (wherein it is again noted that the claimed “for the refinishing of cars, the finishing of trucks, buses, trains, and aero planes, and the finishing of cars, preferably for metallic coatings on metals and plastics for automotive OEM” of instant claim 20 constitutes intended end use of the claimed aqueous coating composition and the coating composition taught by Elizalde is capable of the same intended end use), the Examiner takes the position that the claimed invention as recited in instant claims 14-20 would have been obvious over the teachings of Elizalde given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gan (WO2020/125714A1, see also US2022/0064479A1 as an English translation of the WIPO document) teaches “a two-component waterborne polyurethane coating composition including: a film-forming resin composition, comprising an aqueous dispersion of hydroxyl acrylic polymer particles with a core-shell structure; and a polyisocyanate crosslinker, wherein the hydroxyl acrylic polymer particles with a core-shell structure includes a shell formed by a copolymer A and an inner core formed by a copolymer B,” wherein both copolymer A and copolymer B are formed by emulsion polymerization, such as in a multistage polymerization process, from monomers “comprising: a): C1-C20 alkyl (meth)acrylate; b): optionally a vinyl aromatic compound having up to 20 carbon atoms; c): ethylenically unsaturated, acid-functional monomer; and d): hydroxyl C1-C20 alkyl (meth)acrylate”; and the copolymer A has an acid value ranging from 3 to 40 mg KOH/g and a hydroxyl value ranging from 40 to 150 mg KOH/g.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787