DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
2. Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites the limitation of the aromatic diacid (vi) being used in amount of 5-93%mol, which range is broader than the range of that component of 60-97%mol cited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
3. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kuo (US 6,576,717, Kuo’717) in view of Inglefield, JR et al (US 2018/0002482).
4. As to instant claims 1, 17-19, Kuo’717 discloses water-based a coating composition comprising:
a) 20-65%wt of the water-dispersible acrylic modified polyester;
b) 30-70%wt of water;
c) 0-10%wt of an organic solvent and
d) 0-50%wt of a crosslinking agent comprising melamine and urea resins or isocyanate-based cross-linkers (col. 11, lines 5-7, as to instant claims 1 and 18).
5. The water-dispersible acrylic-modified polyester resin prepared by:
1) producing a polyester A) under polycondensation conditions in the presence of titanium catalyst (col. 8, lines 35-40, as to instant claim 13), followed by
2) addition copolymerization of:
- 10-80%wt of ethylenically unsaturated vinyl monomers, specifically (meth)acrylates, (meth)acrylic acid (col. 8, lines 55-67; col. 3, lines 29-30, as to instant claims 14-15) and
- 20-90%wt (col. 2, lines 56-57, as to instant claim 15) of the produced polyester A) (Abstract), wherein
the polyester A) is prepared from a polycondensation reaction of
i) dicarboxylic acids including isophthalic acid, terephthalic acid, adipic acid (col. 6, lines 31-55, as to instant claims 7-9),
ii) glycols including 1,6-hexanediol (col. 7, lines 7-30, as to instant claim 4);
iii) 1-8%mol (as to instant claims 1-3) of at least one ethylenically unsaturated monomer comprising maleic acid or maleic anhydride group (col. 3, lines 6-8, col. 7, lines 30-40, as to instant claims 1, 6);
iv) 0-40%mol of hydroxycarboxylic acid (col. 3, lines 9-15);
v) 0-40%mol of a multifunctional reactant comprising at least three hydroxyl groups (col. 3, lines 16-21), specifically trimethylolpropane (col. 8, lines 1-6, as to instant claim 5).
6. As to instant claim 20, the coating composition is coated on a substrate and further cured (col. 10, lines 48-65).
7. As to instant claim 16, the acrylic-modified polyester is having hydroxyl number of about 50 and acid number of 15-30 (col. 6, lines 4-15).
8. Though Kuo’717 discloses the polyester A) being produced from:
- both aromatic acids and aliphatic acid (corresponding to components vi. and vii. of instant claim 1),
- multiple glycols (corresponding to components i. and ii. of instant claim 1),
- hydroxycarboxylic acid (corresponding to component iv. of instant claim 1);
- trimethylolpropane (corresponding to component iii. of instant claim 1);
- maleic acid/anhydride (corresponding to component v. of instant claim 1),
Kuo’717 does not explicitly teach the molar ratios of all said components.
9. However,
1) Inglefield, JR et al discloses a curable polyester comprising:
a) 30-95%mol of 2,2,4,4-tetraalkyl cyclobutene-1,3-diol ([0179]), specifically 2,2,4,4-tetramethylcyclobutane-1,3-diol ([0133], as to instant claims 1-3);
b) 5-30%mol of 2,2-dimethylolpropionic acid ([0180], also as to instant claims 1-3);
c) 0.01-65%mol of additional polyhydroxyl component ([0181]) comprising 1,4-cyclohexanedimethanol ([0251], as to instant claim 4);
d) at least one polycarboxylic acid including terephthalic acid, maleic acid and optionally adipic acid ([0239]);
the total moles of glycols equal 100%mol; the total moles of polycarboxylic acids equal 100%mol ([0183]);
wherein the polyester is having acid number of 10-100 mg KOH/g; a hydroxyl number of 20-120 mg KOH/g ([0183], [0240], as to instant claims 1, 10-11); Mw of 1,000-100,000 g/mol; Mn of 1,000-15,000 ([0243], [0244], as to instant claim 1); glass transition temperature of 40-95⁰C ([0242], as to instant claim 12).
The produced polyester is used in combination with water, amino resin or isocyanate resin crosslinker for making waterborne coatings ([0277]-[0281]).
10. Since both Inglefield, JR et al and Kuo’717 are related to water-based coating compositions based on curable polyesters made from substantially the same diacids and polyol components, and thereby belong to the same field of endeavor, wherein Inglefield, JR et al specifically teaches the specific polyols and diacids and the relative amounts of said polyols and diacids used in such compositions, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kuo’717 and Inglefield, JR et al, and either to choose and use the polyester produced by Inglefield, JR et al as the polyester A) used for reaction with the ethylenically unsaturated vinyl monomers to form the composition of Kuo’717, or alternatively to form, or obvious to try to form the polyester A) of Kuo’717 using the polyols and diacids as disclosed by Inglefield, JR et al in relative amounts as disclosed by Inglefield, JR et al, since such polyesters are specifically taught in the art as being used for making water-based coating compositions, and it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). 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). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
11. Further, based on the teachings of Kuo’717 in view of Inglefield, JR et al that the diacids include 1-8%mol of maleic acid (col. 3, lines 6-8, col. 7, lines 30-40 of Kuo’717), and further terephthalic acid and optionally adipic acid, and the total molar amount of the diacids is 100%mol ([0183] of Inglefield, JR et al), it would have been obvious to a one of ordinary skill in the art to choose and use the combination of maleic acid in amount of 1-8%mol and terephthalic acid in amount of 92-99%mol as the polycarboxylic acid component to form the polyester A) of Kuo’717 in view of Inglefield, JR et al, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
12. Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of a copending application 18/577,763 (published US 2024/0336802) in view of Inglefield, JR et al (US 2018/0002482). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
13. The application 18/577,763 claims a waterborne coating composition comprising:
I. an acrylic modified polyester, which is the reaction product of
a. an unsaturated polyester having moieties prepared by reacting the monomers comprising:
i. 2,2,4,4-tetramethyl-1,3-cyclobutanediol (TMCD) in an amount of 30 to 60 mole %, based on the total moles of i-iii,
ii. a diol other than TMCD in an amount of 40 to 70 mole %, based on the total moles of i-iii,
iii. a triol in an amount of 0 to 8 mole %, based on the total moles of i-iii,
iv. an alpha, beta-unsaturated diacid or anhydride in an amount of 1 to 20 mole %, based on the total moles of iv-vii,
v. an aromatic diacid in an amount of 45 to 98 mole %, based on the total moles of iv-vii, vi. an aliphatic diacid in an amount of 0 to 20 mole %, based on the total moles of iv-vii, and
vii. trimellitic anhydride (TMA) in an amount of 1 to 15 mole %, based on the total moles of iv-vii, and
b. one or more ethylenically unsaturated monomers
II. a crosslinker,
wherein said unsaturated polyester has an acid number of 5 to 30 mgKOH/g, hydroxyl number of 6 to 30 mgKOH/g, number average molecular weight of 4,000 to 25,000 g/mole, and weight average molecular weight of 13,000 to 200,000 g/mole; and
wherein said unsaturated polyester is reacted with said ethyleneically unsaturated monomers through said alpha,beta-unsaturated moieties.
The 2,2,4,4- tetramethyl-1,3-cyclobutanediol (TMCD) (i) is in an amount of 35-58 mole %, said diol other than TMCD (ii) in an amount of 42 to 65 mole %, said triol (iii) in an amount of 0 to 5 mole %, said alpha, beta-unsaturated diacid or anhydride (iv) in an amount of 3 to 18 mole, said aromatic diacid (v) in an amount of 54 to 94 mole %, said aliphatic diacid (vi) in an amount of 0 to 15 mole %, and said TMA in an amount of 3-13 mole %.
The 2,2,4,4-tetramethyl- 1,3-cyclobutanediol (TMCD) (i) is in an amount of 40-50 mole %, said diol other than TMCD (ii) in an amount of 50 to 60 mole %, said triol (iii) in an amount of 0 to 3 mole %, said alpha, beta-unsaturated diacid or anhydride (iv) in an amount of 5 to 15 mole, said aromatic diacid (v) in an amount of 65 to 90 mole %, said aliphatic diacid (vi) in an amount of 0 to 10 mole %, and said TMA in an amount of 5-10 mole %.
The diol other than TMCD (ii) is one or more selected from 1,4-cyclohexanedimethanol, 1,3-cyclohexanedimethanol, 1,6-hexanediol, 2-methyl-1,3- propanediol, neopentyl glycol, and 2,2,4-trimethyl-1,3-pentanediol.
The triol (iii) is trimethylolpropane.
The alpha, beta-unsaturated diacid or anhydride (iv) is one or more selected from the group comprising maleic anhydride, maleic acid, fumaric acid, itaconic anhydride, and itaconic acid.
The aliphatic diacid (vi) is one or more selected from succinic acid, adipic acid, sebacic acid, 1,4-cyclohexane dicarboxylic acid, and 1,3-cyclohexane dicarboxylic acid.
The unsaturated polyester (a) has a hydroxyl number of 6-25 mgKOH/g, an acid number of 6-25 mgKOH/g, Tg of 40-110°C.
The unsaturated polyester (a) is made by using a titanium catalyst.
The ethylenically unsaturated monomers are selected from the group comprising acrylic acid, methacrylic acid, methyl methacrylate, methyl acrylate, ethyl methacrylate, ethyl acrylate, n-butyl acrylate, 2-ethylhexyl acrylate, 2- hydroxyethyl methacrylate, and styrene.
The unsaturated polyester (a) in an amount of 10-90 weight % and said ethylenically unsaturated monomers (b) in an amount of 90-10, based on the total weight of (a) and (b).
The acrylic modified polyester has an acid number of 25-70 mgKOH/g and hydroxyl number of 15-50 mgKOH/g.
The crosslinker is one or more selected from isocyanate,amino resin, and phenolic resin crosslinkers.
The acrylic modified polyester (a) in an amount of 50-90 weight % and said crosslinker (b) in an amount of 10-50 weight %, based on the total weight of (a) and (b).
Further claimed an article, of which at least a portion is coated with the waterborne coating composition.
14. Though the application 18/577,763 does not explicitly claim the use of dimethylpropionic acid as one of the polyols,
Inglefield, JR et al discloses a curable polyester comprising:
a) 30-95%mol of 2,2,4,4-tetraalkyl cyclobutene-1,3-diol ([0179]), specifically 2,2,4,4-tetramethylcyclobutane-1,3-diol ([0133], as to instant claims 1-3);
b) 5-30%mol of 2,2-dimethylolpropionic acid ([0180], also as to instant claims 1-3);
c) 0.01-65%mol of additional polyhydroxyl component ([0181]) comprising 1,4-cyclohexanedimethanol ([0251], as to instant claim 4);
d) residues of at least one polycarboxylic acid including terephthalic acid, maleic acid and optionally adipic acid ([0239]);
the total moles of glycols equal 100%mol; the total moles of polycarboxylic acids equal 100%mol ([0183]);
wherein the polyester is having acid number of 10-100 mg KOH/g; a hydroxyl number of 20-120 mg KOH/g ([0183], [0240], as to instant claims 1, 10-11); Mw of 1,00-100,000 g/mol; Mn of 1,000-15,000 ([0243], [0244], as to instant claim 1); glass transition temperature of 40-95⁰C ([0242], as to instant claim 12).
The produced polyester is used in combination with water, amino resin or isocyanate resin crosslinker for making waterborne coatings ([0277]-[0281]).
15. Since both Inglefield, JR et al and the application 18/577,763 are related to water-based coating compositions based on curable polyesters made from substantially the same diacids and polyol components, and thereby belong to the same field of endeavor, wherein Inglefield, JR et al specifically teaches the specific polyols including dimethylpropionic acid, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of the application 18/577,763 and Inglefield, JR et al, and to choose and use the dimethylolpropionic acid as an additional polyol used for making the polyester of the application 18/577,763, as taught by Inglefield, JR et al, since the coating compositions produced from said polyols comprise enhanced coating and mechanical properties, and weathering, as taught by Inglefield, JR et al ([0010]) and it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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