DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Examiner’s Note
It is noted that all references hereinafter to Applicant’s specification (“present specification”) are to the published application PG Pub. 2024/0336802, unless stated otherwise.
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.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Powell et al. (US 2019/0315903, “Powell”) in view of Kuo et al. (US 2016/0115348, “Kuo”).
Regarding claims 1 - 3, 10, 11, Powell teaches a waterborne coating composition ([0001]) comprising an acrylic modified polyester which may be the reaction product of an unsaturated polyester having alpha/beta moieties (e.g., [0190] - [0192]) and one or more ethylenically unsaturated monomers (e.g., [0086] - [0088], various acrylic modification monomers). The polyester may include TMCD in an amount reading on from 30 to 60 mole% (e.g., [0059], [0060]), a diol in an amount reading on from 40 to 70 mole% ([0052], [0053]) and a triol included in an amount reading on from 0 to 8 mole% ([0054], [0057]). The amount of polyol having greater than two hydroxyls is described as being from 0.1 to 10 wt% and thus the remainder may be various diols including both TMCD and alternative diols. The Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05. Powell teaches to include alpha/beta ethylenically unsaturated diacids ([0042], maleic acid), an aromatic diacid (e.g., [0043], aromatic carboxylic acids), and an aliphatic diacid ([0044], sebacic acid). Powell additionally teaches the inclusion of a crosslinker ([0128] – [0130]). Powell additionally teaches that the polyester ma have an acid number reading on from 5 to 30 mgKOH/g (from 0 to 20, [0104]), a hydroxyl number reading on from 6 to 30 mgKOH/g ([0100], [0101]), a number average molecular weight of from 1000 to 15000 Da ([0096]), and a weight average molecular weight of, for example, around 37,000 (see, e.g., Table 1, Mw of 37,341 for polyester 1a, [0311]). Powell fails to specifically teach the inclusion of trimellitic anhydride. However, in the same field of endeavor of polyeseter compositions (e.g., [0002] – [0010]), Kuo teaches that the inclusion of trimellitic anhydride may be helpful in order to increase the acid number of an unsaturated curable polyester if so desired ([0078]) and thus its inclusion in the composition of Powell would have been obvious the person of ordinary skill in the art at the time of filing.
Regarding claim 4, Powell additionally teaches the inclusion of, among other diols, 1,6 hexanediol (e.g., [0053]).
Regarding claim 5, Powell additionally teaches that the triol component (iii) may be trimethylolpropane ([0039]).
Regarding claim 6, Powell additionally teaches the unsaturated diacid may be, for example, maleic acid ([0038], [0039]).
Regarding claims 7 and 8, Powell additionally teaches the aliphatic diacid may be sebacic acid ([0044]).
Regarding claim 9, Powell additionally teaches that the polycarboxylic acid anhydride may have one or more carboxylic acid groups in addition to the acid anhydride group (e.g., [0042] – [0044] and generally [0037] – [0046]).
Regarding claim 12, Powell additionally teaches that the unsaturated polyester may have a glass transition temperature of from 0 to 100C ([0098]).
Regarding claim 13, Powell additionally teaches that the unsaturated polyester may be made with a process including a titanium catalyst (e.g., tetra-n-butyl titanate, [0119]). It should be noted that claim 13 includes product-by-process limitations. "[E]ven 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 product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113.
Regarding claim 14, Powell additionally teaches an acrylic ethylenically unsaturated monomer (e.g., (meth)acrylic acid, [0088]).
Regarding claim 15, Powell additionally teaches polyester graft acrylic resins comprising the bulk of polyester and an amount of acrylic resin reading on the claimed ranges. For example, see Table 2, p. 19, wherein the polyester is in an amount of 286.12 and 17.72+16.24+16.24+8.9 of acrylic resins thus yielding 17% by weight of acrylic resins (i.e., ethylenically unsaturated resins).
Regarding claim 16, Powell additionally teaches the acrylic modified polyester may have an acid value on the range of from 10 to 80 mg KOH/g ([0115]) and a hydroxyl number on the range of from 0 to 120 mg KOH/g ([0114]).
Regarding claim 17, Powell additionally teaches that the composition may include neutralization agents and water (e.g., [0092], [0093], [0178]).
Regarding claim 18, Powell additionally teaches the crosslinking component may be, among others isocyanate resins, ([0130]).
Regarding claim 19, Powell additionally teaches that the crosslinking material may be included in any suitable amount and thus would read on the claimed amount of from 10 to 50 weight% ([0178], from 0.5 to 40 wt% and wherein the bulk is the acrylic modified polyester).
Regarding claim 20, Powell additionally teaches that the composition may be used to coat an article and thus may be considered to teach a coated article ([0178], coating compositions, [0206], [0207], wherein the coating may be applied to various cans).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Zhou et al. (US 2018/0105640) discloses a similar aliphatic polyester coating composition (see, e.g., [0002] – [0020]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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