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 .
Election/Restrictions
Applicant’s election without traverse of Group I and species iii in the reply filed on 8/5/2026 is acknowledged.
Claims 10, 13, 23, 25 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/5/2026.
Response to Amendment
The amendment filed on 8/5/2026 has been entered. Claim(s) 1-3, 5 and 15 is/are currently amended. Claim(s) 16-19, 21, 24 and 26-28 has/have been cancelled. Claim 30 is new. Claim(s) 1-15, 20, 22-23, 25 and 29-30 is/are pending with claim(s) 10, 13, 23, 25 and 29 withdrawn from consideration. Claim(s) 1-9, 11-12, 14-15, 20, 22 and 30 is/are under examination in this office action.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-9, 11-12, 14, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kageyama et al (US 5510400 A).
Regarding claims 1, 2, 9, and 11, Kageyama teaches a cationic electrodeposition coating composition comprising (A) a cationic resin; (B) a low-temperature dissociation type block isocyanate curing agent; and (C) a pigment paste containing a pigment dispersed in a cationic pigment dispersing resin [Col.1 L.60-67]. The cationic electrodeposition coating composition reads on the claimed cationic electrodepositable coating composition in claim 11.
Preferable cationic resin (A) includes amine-modified epoxy resins (Aminated Epoxy Resin) made from bisphenol A type epoxy resin reacting with primary or secondary amines, as shown in Preparation Example 2 and described in U.S. Pat. No 4,104,147 [Col.2 L.12-24, Col.7 L.67]. This cationic resin is the same as the claimed ionic salt group-containing film-forming polymer, as evidenced by the applicant [0024 spec.].
The block isocyanate curing agent (B) described in [Col.4 L.43 – Col.5 L.12] are the same as the claimed curing agent, as evidenced by the applicant [0036-0038 spec.].
The pigment paste (C) comprises pigments such as carbon black, titanium oxide, kaolin, strontium chromate [Col.6 L.19-27], which is the same as the claimed pigment specified in claim 9 (Kaolin is art recognized as a phyllosilicate).
Kageyama teaches pigment to binder ratio (C)/(A) of (2-50)/(10-88) [Col.2 L.6-7], which 0.02:1 to 5:1 as calculated by the examiner, overlapping the claimed at least 0.40:1. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Kageyama teaches resin solid content of 80.5% for the Aminated Epoxy Resin in Preparation Example 2 [Col.7 L.67] and dispersion for Cationic Electrodeposition Paint solid content of 36.0% in Preparation Example 3 [Col.8 L.20-21]. Therefore, the resin solid content in the dispersion for Cationic Electrodeposition Paint is 29% as calculated by the examiner, meeting the claimed resin solids content of less than 30% by weight, based on the total weight of the electrodepositable coating composition specified in claim 2.
The recited “viscosity of at least 15 cP at a shear rate of 0.1/s as measured by the BATH VISCOSITY TEST METHOD” and “viscosity of less than 15 cP at a shear rate of 100/s as measured by the BATH VISCOSITY TEST METHOD” are a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention (same composition, same binder to pigment ratio, and same resin solids content), the recited property is expected to be present.
The recited “wherein the pigment optionally comprises a phyllosilicate pigment, and the pigment-to-binder ratio of the phyllosilicate pigment to the electrodepositable binder is less than 0.2:1 if the electrodepositable coating composition is a cationic electrodepositable coating composition and a pigment dispersing acid is present in the cationic electrodepositable coating composition” does not need to be addressed by the prior art because this limitation is optional, even though the prior art teaches this limitation as stated above.
Regarding claim 3, the recited “a coating electrodeposited from the electrodepositable coating composition has a minimum complex viscosity during cure of no more than 5,000 to 300,000 cP, as measured by the COMPLEX VISCOSITY TEST METHOD” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Regarding claim 4, the recited VOC is a property of the product. Applicant teaches that the recited VOC depends on the organic solvent concentration in the composition which is less than 10% by weight [0020 and 0112 spec.]. Kageyama teaches that the amount of the solvent is about 0.01 to 25% by weight based on the total weight of the coating composition [Col.6 L.61-43], overlapping the amount of solvent in the current invention. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 5, Kageyama teaches pigment to binder ratio (C)/(A) of 0.02:1 to 5:1 as stated above, overlapping the claimed range of 0.4:1 to 2.0:1.
Regarding claims 6-7, the recited “horizontal surface roughness” and “vertical surface roughness” is a property of the product. Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 8, Kageyama teaches that the composition comprises additives including formic acid, acetic acid and lactic acid [col.6 L.37-38] which are carboxylic acids, reading on the claimed pigment dispersing acid, as evidenced by the applicant [0082 spec.].
Regarding claim 12, pigment dispersing acid is optional in Kageyama’s composition [col.6 L.37-38]; and Kageyama does not teach silane dispersant in its composition.
Regarding claim 14, Kageyama does not teach metal pigment and/or electrically conductive pigment in its composition.
Regarding claim 22, the recited relative sedimentation is a property of the product. Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kageyama as applied to claim 1 above, further in view of Zheng et al (CN 105378009 B, machine translation is referenced herein).
Regarding claim 15, Kageyama teaches the electrodepositable coating composition in claim 1. Kageyama teaches blocking agent for the isocyanate [Col.3 L.12-28], but does not teach the blocking agent comprising the structure in claim 15.
In the same field of endeavor and/or pertinent to the same problem, Zheng teaches an electro-deposition coating composition comprising capped isocyanate groups [P.2 first para.]. The blocking agent for the isocyanate includes ethoxylated bisphenol A [P.3 5th para. and claim 1].
It would have been obvious to one of ordinary skill in the art at the time of filing to select ethoxylated bisphenol A as the blocking agent for isocyanate in Kageyama’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Ethoxylated bisphenol A has a minimum of 19 carbon atoms when n=1 and m=2. Kageyama teaches that suitable blocking agents must have no more than 20 carbon atoms to avoid deterioration of corrosion resistance [Col. 5, L. 3-8]. Inclusion of any additional ethylene oxide units will result in a total number of carbon atoms exceeding 20. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to select an ethoxylated bisphenol A where n=1 and m=2 as this represents a suitable blocking agent identified by Zheng and meeting the number of carbon atoms required by Kageyama.
The ethoxylated bisphenol A with n=1 and m=2 meets the claimed structure in claim 15.
Claim(s) 20 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kageyama as applied to claim 1 above, further in view of Zawacky et al (US 20200399479 A1).
Regarding claim 20, Kageyama teaches the electrodepositable coating composition in claim 1. Kageyama does not teach the claimed rheology modifier.
In the same field of endeavor, Zawacky teaches an electrodepositable coating composition comprising a rheology modifier which may assist in preventing settling of the electrodepositable coating composition, and further improve the uniformity of an electrodeposited coating produced by electrodepositing the electrodepositable coating composition [0058].
It would have been obvious to one of ordinary skill in the art at the time of filing to add a rheology modifier in Kageyama’s composition for the aforementioned benefit.
Regarding claim 30, Kageyama teaches the electrodepositable coating composition in claim 1. Kageyama teaches blocking agent for the isocyanate [Col.3 L.12-28], but does not teach the blocking agent comprising the structure in claim 30.
In the same field of endeavor, Zawacky teaches an electrodepositable coating composition comprising a blocking agent such as ethylene glycol methyl ether [0044].
It would have been obvious to one of ordinary skill in the art at the time of filing to select ethylene glycol methyl ether as the blocking agent in Kageyama’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Ethylene glycol methyl ether meets the claimed blocking agent wherein R1=R2=H, R3=methyl, and n=1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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