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 .
Claim Objections
Claim 15 is objected to because of the following informalities: “the ionic salt group-containing” should instead be –the active hydrogen-containing, ionic salt group-containing--. Appropriate correction is required.
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.
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.
Claims 1-18 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Reuter et al. (US 6,951,602) in view of Stone et al. (WO 2018/160799 A1).
Regarding claims 1-4 and 13-14, Reuter teaches aqueous electrodeposition compositions comprising (A) customary and known binders carrying ionic functional groups, (B) optional crosslinking agents, (C) customary and known additives, and (D) a water-soluble polyvinyl alcohol (co)polymer (col 6 ln 29-42).
Reuter teaches the (D) water soluble polyvinyl (co)(polymer is selected from copolymers and homopolymers of formula (I): -[-C(R1)2-CR1)(OH)-]-, where R1 includes hydrogen, alkyl, cycloalkyl, etc. (col 3 ln 34-51; predominantly H and exclusively H col 4 ln 24-35)(claim 2), and wherein blocks of I are 50 to 99.9% of the polymer (col 5 ln 42-45)(instant (a); claims 1 and 4).
Reuter teaches the (A) binders carry (a1) ionic groups or functional groups that can be converted to ionic groups and (a2) functional groups capable of crosslinking (col 6 ln 32-38), wherein the (a1) ionic groups include cationic and anionic functional groups (col 6 ln 51-67), for cathodically depositable coatings or anodically depositable coatings (col 7 ln 1-5; col 7 ln 50 to col 8 ln 5), which may be neutralized (col 7 ln 32-45)(instant ionic salt group-containing) and where the (a2) crosslinkable groups include amino, hydroxyl, carboxyl, (meth)acrylate, etc. (col 6 ln 51-55)(instant active hydrogen-containing)(instant (b); instant 13-14).
Reuter teaches the (B) crosslinking agents include isocyanates (col 8-10)(instant curing agent (c)) and teaches (C) additives include crosslinking catalysts (col 10 ln 52 to col 11ln 33) including organic and inorganic salts and metal complexes (col 11 ln 1-6).
Reuter teaches the inclusion of crosslinking catalysts including organic and inorganic salts and complexes but does not specifically teach amine-containing or zinc-containing cure catalysts. However, Strong teaches similar electrodepositable compositions comprising a hydroxy-functional polymer, an ionic salt group-containing film forming polymer, a curing agent and further additives (abstract; [0086]-[0087]). Strong teaches the further additives include catalysts to catalyze the reaction between the curing agent and the polymers, including cyclic guanidines, quaternary salts of SbF6, t-amines alts of SbF6, quaternary salts of triflic acid, diethylamine salts of triflic acids, Zn salts of triflic acid, amine salts of aromatic sulfonic acids, etc. ([0087]). Strong and Reuter are analogous art and are combinable because they are concerned with the same field of endeavor, namely electrodepositable coating compositions comprising similar components. At the time of filing a person having ordinary skill in the art would have found it obvious to select the further catalysts of Strong as the crosslinking catalysts of Reuter and would have been motivated to do so as Reuter invites both organic and inorganic salts and complexes as additional crosslinking catalysts and further as Strong teaches such catalysts are suitable and known catalysts that function to catalyze the crosslinking reaction between the curing agent and the polymer(s) in electrodeposition compositions.
Regarding claims 5 and 8, Reuter in view of Strong render obvious the electrodepositable compositions as set forth in claim 1 above. Reuter further teaches the (D) polyvinyl alcohol (co)polymer may further include units (II) derived from vinyl acetate (col 4 ln 40-55) and may include minor amounts of further monomers including vinyl esters (col 4 ln 59 to col 5 ln 31).
Regarding claims 6-7, Reuter in view of Strong render obvious the electrodepositable compositions as set forth in claim 1 above. Reuter further teaches the (D) polyvinyl alcohol (co)polymer is a polyvinyl alcohol obtained via polymer-analogous reactions by hydrolysis of polyvinyl acetate (col 5 ln 53-67), resulting in a polymer comprising blocks I from 50 to 99.9% and a degree of hydrolysis of 98-99 mol% (col 5 ln 42-62). It is noted that claims 6 and 7 are product-by-process claims, where patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in claims 6 and 7 is the same product disclosed by Rueter the claim is unpatentable even if/though the Reuter product was made by a different process (see In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); and MPEP 2113).
Regarding claims 9-10, Reuter in view of Strong render obvious the electrodepositable compositions as set forth in claim 1 above. Reuter further teaches the (D) polyvinyl (co)polymers have a degree of hydrolysis of from 98-99 mol% (col 5 ln 60-62). Reuter does not specifically teach the theoretical hydroxyl-equivalent weight of OH (claim 9) or theoretical hydroxyl value KOH (claim 10). However, Reuter teaches polyvinyl (co)polymers having the claimed composition, made by substantially the same method, and it is held that 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 (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 11-12, Reuter in view of Strong render obvious the electrodepositable compositions as set forth in claim 1 above. Reuter further teaches molecular weights from 10,000 to 500,000 daltons (col 5 ln 56-59) and teaches a degree of polymerization from 100 to 20,000 (col ln 37-41).
Regarding claim 15-17, Reuter in view of Strong render obvious the electrodepositable compositions as set forth in claim 1 above. Reuter further teaches a binder example comprising a reaction product of an epoxy resin based on bisphenol A (instant polyepoxide (a)), bisphenol A (instant di-functional chain extender), dodecylphenol (instant mono-functional reactant), and p-cresol (instant mono-functional reactant) (resin A example 3.1 col 12; see also example 3.3 col 13)(claim 15). Reuter further teaches the binder has an EEW of 880 g/eq (col 12 ln 54; see also EEW if 1120 g/eq example 3.3 col 13 ln 67)(claim 17).
As a result of the aforementioned, Reuter meets the ratio of 0.5:1 to 0.85:1 of ((b)+(c)):(a) (claim 16). Alternatively, Reuter teaches obtaining polymers having functional groups (a1; ionic (a11) or (a12)) and (a2; crosslinking), where the ionic groups are neutralized with from 1 to 100 equivalents of neutralizing agent (col 7 ln 46-50), and wherein preferred binders are epoxy resin based (col 7 ln 50 to col 8 line 5). The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of functional groups (a1) and (a2) in the resulting polymer to obtain a binder having the desired functionality and crosslinkability. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 18, Reuter in view of Strong render obvious the electrodepositable coating compositions as set forth in claim 1 above. Reuter further teaches the aqueous composition as a solids content of 5 to 30 wt% (col 6 ln 29-31), and teaches the (B) crosslinking agent is present from 5 to 60 wt% (instant curing agent (c)), based on solids content of the composition where (A) is present in such an amount that the crosslinking functional groups of (B) and of (A) are in a ratio of 2:1 to 1:2 (col 10 ln 30-52)(instant (b)). Reuter further teaches the (D) polyvinyl alcohol (co)polymer is present from 2 to 10,000 ppm (col 6 ln 17-25)(instant hydroxyl functional (a)).
Alternatively, or in addition, Strong similarly teaches the amount of the ionic salt group-containing film forming polymer is 50 to 90 wt%, based on the total weight of resin solids ([0070] cationic; [0073] anionic), the curing agent is present from 10 to 50 wt%, based on the total weight of resin solids ([0085]), the hydroxy functional polymer is present from 0.1 to 5 wt%, based on the total weight of resin solids ([0055]). At the time of filing a person having ordinary skill in the art would have found it obvious to select the amount of film-forming polymer taught by Strong as the binder amount of Reuter and would have been motivated to do so as Reuter teaches a general ratio of binder functional groups to curing agent that is similar and further as Strong teaches for a similar amount of substantially similar curing agents that 50 to 90 wt% of the film forming polymer is preferred and suitable for electrodeposition coatings.
Regarding claims 23-24, Reuter in view of Strong render obvious the electrodepositable coating compositions as set forth in claim 1 above. Reuter further teaches a method of coating substrates via electrodeposition (col 11 ln 38-51).
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.
A) Claims 1-8, 13-18 and 23-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 9, 14, 19, 21, 29, 31, 33, 35-36, 39-42 and 49 of copending Application No. 18/571,405 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and the copending application are directed to substantially similar electrodepositable coating compositions comprising substantially similar active hydrogen, ionic salt containing film forming polymers (instant (b); copending (a)), substantially similar curing agents (instant (c); copending (b)), substantially similar curing catalysts (instant (d); copending (c), zinc-containing, guanidine containing of claims 29, 31-33) and substantially similar hydroxyl-functional addition polymers (instant (a); copending (d), (2) of claim 39).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-18 and 23-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 8-9,12-14,16, 20-22, 33, 42-43, 47, 57-58 and 61 of copending Application No. 18/571,772 in view of Stone (WO 2018/160799). The claims of both the instant and copending application are directed to substantially similar electrodepositable coatings comprising (a) a hydroxyl-functional addition polymer of the same type, (b) an active hydrogen, ionic salt containing film-forming polymer of substantially the same type, substantially similar curing agent(s) and a catalyst. The claims of the instant and copending differ in that the instant claims recite an amine- or zinc-containing catalyst while the claims of the copending application are directed to a bismuth-containing catalyst.
However, Stone teaches substantially similar electrodepositable polymer coatings comprising a hydroxyl-containing component, an ionic group, active hydrogen containing film forming polymer, curing agents and catalysts (abstract; [0086]). Stone further teaches that bismuth catalysts are equivalent and interchangeable with zinc containing and amine containing catalysts, such as cyclic guanidines ([0087]), for the same intended purpose. Stone and the copending application are analogous art and are combinable because they are concerned with the same field of endeavor, namely electrodeposition coatings. In view of the recognition by Stone that bismuth containing catalysts and amine containing and zinc containing catalysts are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute the bismuth catalyst of the copending application with the amine and/or zinc containing catalysts of Stone and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable (See In re Ruff 118 USPQ 343 (CCPA 1958; MPEP 2144.06).
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/Primary Examiner, Art Unit 1767
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