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 .
Status of Claims
Claims 1-20 are pending in the present application.
Claim Objections
Claims 1, 2, 4, and 19 are objected to because of the following informalities:
Claims 1 and 19 each recite “MEK.” For clarity and completeness, this acronym should be fully defined by the claims, and the claims should be amended to recite “methyl ethyl ketone (MEK).”
Claim 2 recites “in an amount of 5 to 18 mole.” For the uniformity and clarity, this recitation should be amended to recite “in an amount of 5 to 18 mole %.”
Claim 4 recites “itaconic acid,”. Claim 4 does not end with a period (“.”). Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). See MPEP 608.01(m). Claim 4 should be amended to recite “itaconic acid.”
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 3-5, 11, and 13-17 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.
Claims 3, 4, 5, and 17 are indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 3 is interpreted as instead reciting “is selected from the group consisting of 1,4-cyclohexanedimethanol, …, and a mixture thereof.”
For the purposes of examination, claim 4 is interpreted as instead reciting “is one or more selected from the group consisting of maleic anhydride, …, and itaconic acid.”
For the purposes of examination, claim 5 is interpreted as instead reciting “is one or more selected from the group consisting of succinic acid, …, and 1,3-cyclohexane dicarboxylic acid.”
For the purposes of examination, claim 17 is interpreted as instead reciting “selected from the group consisting of xylene, …, and Aromatic 150 available from ExxonMobil.”
Correction is required.
Claims 11, 14, 15, and 16 recite the limitation "said isocyanate." There is insufficient antecedent basis for this limitation in the claims. Claims 11, 14, 15, and 16 directly depend from claim 1, where claim 1 does not recite an isocyanate. However, Claim 10 recites “an isocyanate crosslinker (c).” It is unclear if the “said isocyanate” is referring to a previously unrecited isocyanate or is referring to the “isocyanate crosslinker (c)” of claim 10. For the purposes of examination, claims 11, 14, 15, and 16 are interpreted as depending from claim 10, and instead reciting “The coating composition of claim 10, ….”
Claims 13 and 15 recite the Trademark name “CURAPHEN 40-856 B60” that renders the claims indefinite. If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b). Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to describe any particular material or product. In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name. See MPEP 2173.05(u). For the purposes of examination, the claims are interpreted as instead reciting “an m-cresol phenolic formaldehyde resin
Claim 17 recites the Trademark name “Aromatic 100” that renders the claim indefinite. If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b). Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to describe any particular material or product. In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name. See MPEP 2173.05(u). For the purposes of examination, the claim is interpreted as instead reciting “naphtha petroleum-based solvent comprising a compound with Cas No. 64742-95-6
Claim 17 recites the Trademark name “Aromatic 150” that renders the claim indefinite. If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b). Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to describe any particular material or product. In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name. See MPEP 2173.05(u). For the purposes of examination, the claim is interpreted as instead reciting “naphtha petroleum-based solvent comprising a compound with Cas No. 64742-94-5
Allowable Subject Matter
Claims 1, 2, 6-10, 12, and 18-20 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 3-5, 11, and 13-17 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Distinctions between the instant claims and closest prior art of record are below:
Kuo et al. (US 2016/0115348 A1) teaches a coating composition comprising an unsaturated curable polyester comprising a)(i) a diol such as 2,2,4,4-tetramethylcyclobutane-1,3-diol in an amount of 70-100 mol%, a)(ii) a polyhydroxyl compound having 3 or more hydroxyl groups in an amount of 0-30 mol%, b)(i) an alpha,beta-unsaturated polycarboxylic acid such as maleic anhydride in an amount of 10-60 mol%, b)(ii) a polycarboxylic acid other than the alpha,beta-unsaturated polycarboxylic acid in an amount of 40-90 mol%, and a resole phenolic crosslinker having at least on methylol group, where the unsaturated curable polyester exhibits a Tg from -20oC to 120oC, an acid number of 0-120 mgKOH/g, a hydroxyl number of 0-160 mgKOH/g, and an Mn of 1,000 to 20,000 g/mol (Kuo, Abstract, [0032]-[0111]). Kuo fails to teach a diol component (i + ii + iii) specifically comprising 2,2,4,4-tetramethylcyclobutane-1,3-diol in an amount of 30-60 mol% and a different diol in an amount of 40-70 mol%; fails to teach a Mw range of 20,000 to 150,000 g/mol; fails to teach a solvent resistance of greater than 50 MEK double rubs as measured by ASTM D7835; fails to teach a wedge bend resistance of 50-100 as measured by ASTM D3281; and fails to teach an unsaturated polyester specifically and simultaneously exhibiting Tg, acid number, hydroxyl number, and Mn of the claim 1 and claim 19 ranges.
Beccaria et al. (US 2018/0223126 A1) teaches a crosslinked polyester composition for coating metal (Beccaria, Abstract, [0004]-[0035]). Beccaria fails to teach a diacid/dianhydride component (iv + v + vi) specifically comprising an alpha,beta-unsaturated diacid or dianhydride in an amount of 3-20 mol% and an aromatic diacid in an amount of 55-97 mol%; fails to teach a resole phenolic resin crosslinker having at least one methylol group; fails to teach a Mw range of 20,000 to 150,000 g/mol; fails to teach a solvent resistance of greater than 50 MEK double rubs as measured by ASTM D7835; and fails to teach an unsaturated polyester specifically and simultaneously exhibiting Tg, acid number, hydroxyl number, and Mn of the claim 1 and claim 19 ranges.
The prior art of record, whether taken alone or in combination, does not disclose or render obvious the claimed invention. In view of the foregoing, the instant claims are considered to contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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