DETAILED ACTION
Summary
This is a non-final office action for application 18/577,766 filed on 9 January 2024. The preliminary amendment filed on the same date is acknowledged. The claims filed 7 August 2024 are considered a refiling of the original claims. The claims examined here are those of the preliminary amendment dated 9 January 2024.
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 Interpretation
In Claim 4, the recited mole percentages are interpreted as each having the same basis that was recited in Claim 1. That is, the (i), (ii), and (iii) mole percentages are based on the total moles of i-iii, and the (iv) and (v) mole percentages are based on the total moles of iv-vi.
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.
Claims 1-20 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.
Claim 1 recites 0 to 25 mole % for its (vi) component, but does not recite a basis for this percentage. It is not known if this percentage is based on the entire composition, the (a) component or some subset of recited subcomponents of (a). Examiner recommends reciting “based on the total moles of iv-vi,” if the intent is to be consistent with the recitations of the (iv) and (v) components. Claims 2-17 and 20 are also rejected because they depend upon, and therefore include, Claim 1. Note that Claim 4 narrows the range for the (vi) but it does not resolve the indefiniteness of the basis used in its percentage.
Claim 9 and Claim 10 each recite a limitation on “said unsaturated polyol (a)”. There is insufficient antecedent basis for this limitation in the claim. Claim 9 and Claim 10 each depend upon, and therefore include, Claim 1. Claim 1 recites that (a) is a curable unsaturated polyester and that (a)(iii) is a polyol which is not required to be unsaturated. Examiner recommends reciting “said unsaturated polyester (a)” if Claim 9 and Claim 10 are intended to further narrow the properties recited in Claim 1.
Claim 17 contains the trademark/trade names “Aromatic 100, and Aromatic 150 available from ExxonMobil”. Where a 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 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See 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 identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade names are used to identify/describe organic solvents of unspecified chemical structure and, accordingly, the identification/description is indefinite.
Claim 18 recites “said unsaturated polyol”. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously recite a polyol. Examiner recommends reciting “said unsaturated polyester” if it is intended to refer back to the (a) component recited by the claim. Claim 19 is also rejected because it depends upon, and therefore includes Claim 18.
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 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.
Claims 1-2, 5-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over KUO (US-20160115348-A1).
The KUO (US-20160115348-A1) reference is in the IDS dated 14 March 2024.
Regarding Claim 1, KUO teaches a thermosetting composition having an unsaturated polyester (Abstract). KUO teaches that its unsaturated polyester comprises residues of polyhydroxy compounds (a) and polycarboxylic compounds (b)([0047], [0051]) where the polyhydroxy compounds contains 70-100 mol% of diols and 0-30 mol% of compounds with 3 or more hydroxyl groups ([0092]-[0093]). KUO teaches several cycloaliphatic diols for its diol component ([0097]) and specifically teaches that is 2,2,4,4-tetramethylcyclobutane-1,3-diol (TMCD) is a desirable diol for this component ([0098]). The (ii) and (iii) components recited by the claim are optional and not required. The 70-100 mol% of diols which can be cycloaliphatic is within the 57-100 mol% recited by the claim. KUO exemplifies 2,2,4,4-tetramethylcyclobutane-1,3-diol (TMCD) but not in mol% as high as 57 mol% ([0178]-[0179]) but it would be obvious to one or ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KUO and use amounts of cycloaliphatic diols within the range taught in its specification that are also within the range recited by the claim. KUO teaches that its unsaturated polyester include residues of α,β-unsaturated polycarboxylic compounds (b)(i) and other polycarboxylic compounds (b)(ii) ([0074], [0075]). KUO teaches that its (b)(ii) component may include aromatic diacids which satisfy the recited (v) component such as isophthalic acid, terephthalic acid, phthalic acid, naphthalene-based diacids and others ([0078]). KUO teaches that its α,β-unsaturated polycarboxylic compounds (b)(i) are present in a range of 10-60 mol% based on the amount of all polycarboxylic compounds ([0070]) this overlaps the 2-20 mol% recited by the claim. KUO teaches examples which contain maleic anhydride as its b(i) component and only the aromatic diacid isophthalic acid as its (b)(ii) component in a molar ratio of maleic anhydride to isophthalic acid of 33/67 ([0177], [0178], [0179], [0183]). The amount of aromatic diacid is within the recited range but the amount of α,β-unsaturated polycarboxylic compounds is outside the recited range, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of KUO and amounts of α,β-unsaturated polycarboxylic compounds within the 10-60 mol% taught in its specification that are also within the range recited by the claim.
KUO teaches that its thermosetting coating composition may contain 5-30 wt% of an amino resin based on the total weight of polyester and the other phenolic crosslinking resin ([0164]). KUO does not exemplify an amino resin but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of KUO an include an amino resin in its crosslinking component based on the teachings of the specification.
KUO teaches that its acid number can be low and may have a small range of 0-10 mgKOH/g which is particularly useful in solvent-based solutions and coating applications ([0106], Claim 36). KUO teaches examples with an acid number within the recited range ([0177],[0178],[0179]).
KUO generally teaches that its hydroxyl number can be within a range 0-160 mgKOH/g ([0107]) which encompasses the recited range, KUO teaches that its preferably range is 25-100 mgKOH/g ([0108]) which also has some overlap with the recited range of 8-30 mgKOH/g. KUO does not exemplify a hydroxyl number within the recited range but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to form unsaturated polyesters with a hydroxyl number within the range taught in its specification that is also within the range recited by the claim.
KUO teaches that the glass transition temperature (Tg) of its unsaturated polyester resin may be from -20°C to 120°C ([0110]) which encompasses the recited range of 35-110°C. KUO teaches examples that do not satisfy all of the compositional requirements of the claim which have a range of Tg of 39.9-61.2°C ([0177], [0178], [0179], [0183]) which are within the recited range of 35-110°C. It would be obvious to further modify the examples of KUO and form compositions that have a Tg within the range taught in its specification that are also within the range recited by the claim.
KUO generally teaches number average molecular weights of 1-20,000 g/mol ([0111]) which overlaps the recited range of 4000-25000 g/mol. KUO teaches examples that do not satisfy all of the compositional requirements of the claim which have a number average molecular weight of 4354 ([0179]), which is within the recited range, and have weight average molecular weights of 60323 ([0177]), 28180 ([0179]) and 19620 ([0183]) which are all within the recited range. It would be obvious to further modify the examples of KUO and form compositions that have number average molecular weight and weight average molecular weights that are with the ranges taught by KUO in its specification and examples that are also within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 2, modified KUO teaches the invention of Claim 1. KUO teaches that its coatings exhibit excellent solvent resistance ([0005]). KUO teaches that inclusion of its α,β-unsaturated polycarboxylic compound improves the solvent resistance relative to polyesters that do not include it ([0068]). KUO does not perform the same recited MEK double rub test but performs a similar MEK double rub test (ASTM D4752)([0181]) and finds that its exemplary resins exhibit no effect in some cases following 500 MEK double rubs and only slight effect for 50 or 100 double rubs for others (Table 1, Table 2). This is performed on polyesters cured by phenolic resins but KUO teaches that its resins can include a combination of phenolic and amino resins ([0164]). One would inherently expect that the unsaturated polyesters taught by KUO when crosslinked with a resin that includes amino compounds would also have a high solvent resistance and would pass the solvent resistance test that is recited by the claim.
Regarding Claim 5, modified KUO teaches the invention of Claim 1 where KUO teaches and exemplifies 2,2,4,4-tetramethylcyclobutane-1,3-diol (TMCD). KUO also teaches 1,3-cyclohexanedimethanol and 1,4-cyclohexanedimethanol as options for this component ([0095]).
Regarding Claim 6, modified KUO teaches the invention of Claim 1. KUO does generally teach the recited diols ([0095]) and exemplifies neopentyl diol ([0178], [0179]) but note that the claim recites 0-35 wt% for this component, so the claim is adding a limitation to an optional component. In the obvious modification made in the claim 1 rejection, the cycloaliphatic diol was the only diol component. Modified KUO teaching the invention of Claim 1 automatically satisfies Claim 6.
Regarding Claim 7, modified KUO teaches the invention of Claim 1 where KUO teaches and exemplifies maleic anhydride ([0178], [0179]). KUO also teaches maleic acid, fumaric acid, itaconic acid and itaconic anhydride for this component ([0063], Claim 10).
Regarding Claim 8, modified KUO teaches the invention of Claim 1. KUO does teach that its acid component can contain the recited aliphatic acids ([0077]) but this (vi) component is recited in amounts of 0-25 mol% and is not required and the claim is adding a limitation to an optional component. KUO teaches examples without a saturated aliphatic diacid. In the obvious modification made in the claim 1 rejection, only the unsaturated and aromatic diacids were included. Modified KUO teaching the invention of Claim 1 automatically satisfies Claim 8.
Regarding Claim 9, modified KUO teaches the invention of Claim 1. KUO generally teaches that its hydroxyl number can be within a range 0-160 mgKOH/g ([0107]) which encompasses the recited range, KUO teaches that its preferably range is 25-100 mgKOH/g ([0108]) which still has some overlap with the narrower recited range of 11-26 mgKOH/g.
Regarding Claim 10, modified KUO teaches the invention of Claim 1. The recited narrower range for glass transition temperature is still encompassed by the general teaching of -20°C to 120°C ([0110]). KUO teaches an example having an example of 61.2°C ([0179]). It would be obvious to further modify the examples for KUO and form compositions that have a glass transition temperature within the range taught by KUO in its specification that are also within the recited range of the claim.
Regarding Claim 12, modified KUO teaches the invention of Claim 1 where KUO teaches that its coating composition may contain 5-30 wt% of an amino resin based on the total weight of polyester and the other phenolic crosslinking resin ([0164]).
Regarding Claim 16, modified KUO teaches the invention of Claim 1 where KUO teaches that its composition may contain 5-30 wt% of an amino resin based on the total weight of polyester and the other phenolic crosslinking resin ([0164]). KUO teaches that its amino crosslinkers be based on benzoguanamine ([0164]). KUO does not teach that this crosslinker contains formaldehyde, but KUO teaches that its phenolic crosslinkers may contain a stoichiometric excess of formaldehyde ([0033], [0036] Claim 7) so it is presumed that a mixture of phenolic-formaldehyde and benzoguanamine satisfy the requirements of a benzoguanamine-formaldehyde crosslinker.
Regarding Claim 17, modified KUO teaches the invention of Claim 1. KUO teaches that its coating composition may be solvent-based and specifically teaches many of the recited organic solvents ([0143], Claim 53). KUO exemplifies methyl amyl ketone ([0180]).
Regarding Claim 20, modified KUO teaches the invention of Claim 1. KUO teaches applying its coating to a substrate ([0174]) and exemplifies coating steel test panels ([0181]).
Claims 3 and 11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over KUO (US-20160115348-A1) in view of LOCK (US-20170335060-A1).
The LOCK (US-20170335060-A1) reference is in the IDS dated 14 March 2024.
Regarding Claim 3, modified KUO teaches the invention of Claim 1 above. KUO teaches its coating composition are for metal containers commonly used in food and beverage packaging ([0002]). KUO teaches compositions that satisfy all of the compositional limitations which suggests that the properties of its cured compositions, such as wedge bond resistance would inherently be within the scope of the instant invention. To the extent that wedge bond resistance is not an inherent feature of the compositions taught by KUO. LOCK, in an invention of a polyester coating composition useful for coating food and/or beverage containers (Abstract) where the polyester can be formed from unsaturated polyacids including several α,β-unsaturated polycarboxylic compounds such as maleic acid, fumaric acid and itaconic acid ([0018]), teaches many inventive compositions which are have wedge bend resistances of well over the recited requirement of 60% (Tables 2-4). LOCK teaches that its compositions are capable of high speed application, have excellent adhesion properties, are safe for food contact and have properties once cured that are suitable for their end use ([0002]). Wedge bend resistance above the recited limit are an obvious modification of the invention of KUO based on the teachings of LOCK that its composition is suitable for the end use of metal food and beverage containers.
Regarding Claims 11 and 13, modified KUO teaches the invention of Claim 1 above. KUO teaches its coating composition are for metal containers commonly used in food and beverage packaging ([0002]). KUO teaches that its resins can include a combination of phenolic and amino resins ([0164]). KUO does not teach that its unsaturated polyester resin can be crosslinked with an isocyanate. LOCK, in an invention of a polyester coating composition useful for coating food and/or beverage containers (Abstract) where the polyester can be formed from unsaturated polyacids including several α,β-unsaturated polycarboxylic compounds such as maleic acid, fumaric acid and itaconic acid ([0018]), teaches crosslinking agents are well-known to those skilled in the art and that its coating composition may be crosslinked with a phenolic resin, an aminoplast resin an isocyanate resin or a combination thereof ([0089]). LOCK teaches that its compositions are capable of high speed application, have excellent adhesion properties, are safe for food contact and have properties once cured that are suitable for their end use ([0002]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KUO with the teachings of LOCK and use a combination of a phenolic, aminoplast and isocyanate crosslinker for the purpose of providing excellent adhesion properties that are suitable for use in food and beverage packaging. The inclusion of isocyanate satisfies Claim 11. That this combination includes both aminoplast and isocyanate resins satisfies Claim 13.
Regarding Claim 15, modified KUO teaches the invention of Claim 1 above. The Claim 11 rejection shows that a combination of phenolic, aminoplast and isocyanate crosslinker is an obvious modification of the invention of KUO based on the teachings of LOCK and is incorporated here by reference. LOCK further teaches that suitable isocyanates include isophorone diisocyanate ([0092]).
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.
Claim 1, 5-6, 9-10, 12, 16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 17 and 19 of copending Application No. 18/832,994 in view of KUO (US-20160115348-A1). The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 1, Copending Claim 17 recites an unsaturated polyesteramide, which is an unsaturated polyester, which is a reaction product of monomers where the monomers. Copending Claim 17 recites Tg, acid number, hydroxyl number, number average molecular weight and weight average molecular weight which are all within the ranges recited by the instant claim. Copending Claim 17 recites inclusion of a benzoquanamine/formaldehyde resin and a melamine/formaldehyde resin which as amino resins satisfy the crosslinker requirement recited by the instant claim.
Copending Claim 17 recites 35-50 mol% of 2,2,4,4-tetramethyl-1,3-cyclobutanediol and 20-40 mol% of 1,4-cyclohexanedimethanol which together totals to 55-90 mol% of cycloaliphatic diols which largely overlaps the (i) requirement of the claim. Copending Claim 17 recites 10-30 mol% of 2-methyl-1,3-propanediol which is within the (ii) range for acyclic diols recited by the instant claim. The (iii) component recites by the instant claim includes 0 mol%, so it is optional. Copending Claim 17 recites 50-70 mol% of isophthalic acid and 29-40 mol% of terephthalic acid which totals to 79-99 mol% of aromatic diacids which largely overlaps the 55-97 mol% recited by the instant claim. Copending Claim 17 recites 1-15 mol% of α,β-unsaturated dicarboxylic acid or anhydride which overlaps the 3-20 mol% recited by the instant Claim. The (vi) component recited by the instant claim includes 0 mol%, so it is optional. It would be obvious to modify the copending Claim and use amounts of components that are within the ranges recited by the copending Claim that are also within the range recited by the instant Claim.
The copending claims do not recite that its composition is thermosetting. KUO, in an invention of an unsaturated polyester with a cycloaliphatic diol and an aromatic diacid (see Claim 1 rejection under 35 USC 103 above) teaches that its composition is thermosetting and curable at elevated temperatures (Abstract). A thermosetting composition is an obvious modification of the composition recited in the copending claim based on the teachings of KUO.
Regarding Claim 5, Copending Claim 17 already recites 2,2,4,4-tetramethyl-1,3-cyclobutanediol and 1,4-cyclohexanedimethanol, either of which satisfies instant Claim 5.
Regarding Claim 6, Copending Claim 17 already recites 2-methyl-1,3-propanediol.
Regarding Claim 9, Copending Claim 17 recites a hydroxyl number of 5-20 mgKOH/g which is an obvious modification of the 11-26 mgKOH/g recited by the instant claim due to overlapping range.
Regarding Claim 10, Copending Claim 17 recites a Tg of 70-100°C which is an obvious modification of the 60-80°C recited by the instant claim due to overlapping range.
Regarding Claim 12, Copending Claim 17 already recites the amino crosslinking resins of benzoquanamine/formaldehyde and a melamine/formaldehyde.
Regarding Claim 16, Copending Claim 17 already recites a benzoquanamine/formaldehyde resin.
Regarding Claim 20, Copending Claim 19 recites an article coated by the composition of copending Claim 17. This matches the recitation of instant Claim 20 which recites an article coated by the composition of instant Claim 1.
This is a provisional nonstatutory double patenting rejection.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 10 of copending Application No. 18/577,762 in view of KUO (US-20160115348-A1). While the claims are not identical, they are not patentably distinct because the copending claim contains all of the limitations of the instant claim. The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 1, Copending Claim 10, which includes the limitations of copending claim 1, recites 30-60 mol% 2,2,4,4-tetramethyl-1,3-cyclobutanediol, which is a cycloaliphatic diols. This overlaps the recited range of 57-100 mol% recited by the instant claim. The 0-35 mol% recited by the instant claim for the (ii) includes 0 mol% and is not required. Copending Claim 10 recites 0-8 mol% of a triol which is matches the recited range of 0-8 mol% of polyols having 3 or more hydroxyl groups recited by the instant claim. Copending Claim 10 recites 3-20 mol% of α,β-unsaturated diacid or anhydride, 55-97 mol% of aromatic diacid which each match the recited ranges of the instant claim. The 0-25 mol% of aliphatic diacid recited by Copending Claim 10 is different in that it does not specify that it is a saturated aliphatic diacid, but it includes 0 mol% and is not required. The copending claim recites hydroxyl number, acid number, number average molecular weight and weight average molecular weight that are within the ranges recited by the instant claim. The copending claim recites a Tg of 40-110 °C which encompasses the 35-110 °C range recited by the instant claim. Copending Claim 10 recites an isocyanate crosslinker which satisfies the crosslinker requirement of the instant claim. It would be obvious to modify the copending claim and use components and properties that are within the range recited that are also within the range recited by the instant claim.
The copending claim does not recite that its composition is thermosetting. KUO, in an invention of an unsaturated polyester with a cycloaliphatic diol and an aromatic diacid (see Claim 1 rejection under 35 USC 103 above) teaches that its composition is thermosetting and curable at elevated temperatures (Abstract). A thermosetting composition is an obvious modification of the composition recited in the copending claim based on the teachings of KUO.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 4 and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 18-19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art KUO (US-20160115348-A1), used in the rejections above, teaches unsaturated polyesters including cycloaliphatic diols, α,β-unsaturated polycarboxylic compounds and aromatic diacids with an amino crosslinker and having the recited glass transition temperature, acid number, hydroxyl number and molecular weight, but KUO does not generally teach amounts of α,β-unsaturated polycarboxylic compounds below 10 mol% as is recited by Claim 4 and also does not exemplify the amounts of cycloaliphatic diol or the hydroxyl number that is recited by Claim 4.
While KUO generally teaches all of the monomers recited in Claim 18 and LOCK (US-20170335060-A1) makes obvious the inclusion of isocyanates such as isophorone diisocyanate, KUO provides no guidance as to the relative amounts of the three required diol components (i),(ii) and (iii) and the two non-unsaturated diacids (vi) and (vii) and does not exemplify a hydroxyl number for (a) within the recited range. KUO and LOCK also provide no guidance as to the relative amounts of its isocyanate and amino crosslinking resins that are recited in both Claim 14 and Claim 18. There is insufficient evidence that one would be motivated to make all of the modifications necessary to the inventions of KUO and LOCK that are required to arrive at the compositions of Claim 14 and Claim 18.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights