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 .
Obviousness-type 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 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 34-58 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No.12043448; claims of U.S. Patent No.11628974; or claims of U.S. Patent No.10894632; U.S. Patent No.10435199.
Both the present claims and the related application USP 12043448 disclose bisphenol-free polyether coating compositions for food or beverage containers and differ in in the coating composition such as in the level of solids and Tg values.
Both the present claims and the related application USP 11628974 disclose bisphenol-free polyether coating compositions for food or beverage containers except one is claiming the coating composition rather than the article having the coating applied to a substrate.
Both the present claims and the related application USP 10894632 disclose bisphenol-free polyether coating compositions for food or beverage containers and differ in the particular structural formula although each have the same bisphenol-free polyether backbone and the intended uses are the same.
Both the present claims and the related application USP 10435199 disclose bisphenol-free polyether coating compositions for food or beverage containers and are different only in the aryl content and purity.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject and limitations as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention.
In light of the related references above, the differences between the present claims and those of the related applications are merely obvious differences in the bisphenol-free coating such as the particular structural formula, the solid content, and Tg and do not introduce any unobvious subject matter. Although the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference application. However, in this instance, the related references application discloses or overlaps substantially all of the claimed limitations such as the molecular weight, Tg and wt% etc., and are substantially similar process.
Although the polydispersity is not disclosed in the related references, the claiming of the polydispersity index parameter instead of the degree of polymerization range would have been obvious since the polydispersity index is directly related to the degree of polymerization and naturally flows therefrom. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the limitations and parameters as shown in the dependent claims of the related applications to achieve the claimed subject matter of the current claim 1.
Lastly, with respect to the dependent claims, although the related dependent claims are not identical, they are not patentably distinct from one another. Each claim includes limitations that, when read as a whole, encompass the same subject matter as currently claimed, and thus would have been obvious to the skilled artisan.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Claim Rejections - 35 USC 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis
for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 34-58 are rejected under 35 U.S.C. 103(a) as being unpatentable over WO2012091701 see abstract, claims.
With regard to claim 34, directed to a coating composition comprising:
at least 10 wt-%, based on total resin solids, of a polyether polymer having a number average molecular weight of at least 2,000
and a glass transition temperature of at least 60°C, the polyether polymer formed by reacting:
an extender and
(ii) an aliphatic diepoxide compound; wherein the polyether polymer does not include any structural units derived from bisphenol A, bisphenol F, bisphenol S, or any diepoxides thereof; and wherein the coating composition is an interior food or beverage container coating composition.
Note that WO2012091701 ( IDS filed 5-29-24) discloses a coating composition for use in food and beverage containers that eliminate bisphenol A by employed BPA substitute dihydric phenol compounds which do not exhibit endocrine or estrogenic activity. A bisphenol-A (BP A) substitute compound comprising: a structure of Formula 1, Formula 2, Formula 3, Formula 4 or derivative thereof or stereoisomer thereof:
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1881
1243
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wherein:
the rings are independently cyclic aliphatic or aromatic, when the rings are aromatic Rl 1-R22 are nothing and one or more of R3-R6 is not hydrogen;
R1-R22 each independently include one or more of hydrogen, halogens, hydroxyls, alkoxys, straight aliphatics, branched aliphatics, cyclic aliphatics, substituted aliphatics, unsubstituted aliphatics, saturated aliphatics, unsaturated aliphatics, aromatics, polyaromatics, substituted aromatics, hetero-aromatics, amines, primary amines, secondary amines, tertiary amines, aliphatic amines, carbonyls, carboxyls, amides, esters, amino acids, peptides, polypeptides, or combinations thereof;
nl-n6 each independently are about 0-20; and with the proviso that the bisphenol-A (BPA) substitute is not 4,4'- isopropylidene dicyclohexanol. Note paragraphs [001]-[020] and claim 1 in attached WO2012091701A (English).
With regard to the extender, the reference teaches that substitutes for BPA may be incorporated in epoxy and/or polycarbonate resin structural moieties which are used for industrial coating. Note paragraph [008].. So, although the reference does not explicitly disclose an extender, the dihydric BPA substitute compounds are used as an extender in that they provide the two hydroxyl groups that would react with diepoxide resin like bisphenol A.
Consequently, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ a aliphatic diepoxide in place of the usually used aromatic diglycidyl ethers to achieve a BPA free polyether polymer for the interior coating of a container since diepoxides are well known in the art to be safer flexible epoxy components. One of ordinary skill would have recognized that these resins commonly used in can coatings. Moreover, the selection of , 10% based on total resin solids, number average molecular weight of at least 2,000 and a glass transition temperature of at least 60°C, of nonvolatile materials is considered routine choice within the skill of the art. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
With regard to claim 35, directed to the coating composition of claim 34, wherein the coating composition includes a liquid carrier and has less than 40 weight percent of nonvolatile materials, and wherein the glass transition temperature of at least 60°C is less than 130°C, see discussion above in claim 34.
With regard to claim 36, directed to the coating composition of claim 35, wherein the coating composition is a water- based coating composition that includes an acrylic component, see discussion above in claims 34 and 35.
With regard to claim 37, directed to the coating composition of claim 36, wherein the acrylic component is covalently attached to the polyether polymer, see discussion above in claims 34 and 35.
With regard to claim 38, directed to the coating composition of claim 36, wherein the coating composition is a water- based inside spray coating composition for two-piece beer and beverage cans and includes 15 to 25 weight percent of nonvolatile materials. see discussion above in claims 34 and 35.
With regard to claim 39, directed to the coating composition of claim 36, wherein the acrylic component has a Tg of at least about 60°C, note discussion above in claim 34 and paragraph [042] . A skilled artisan would have recognized that the addition of acrylic copolymers or crosslinks to modify film is common in the beverage coating art.
With regard to claim 40, directed to the coating composition of claim 37, wherein the coating includes a lubricant, note discussion above in claim 34 and 39.
With regard to claim 41, directed to the coating composition of claim 41, wherein the crosslinker comprises a hydroxyl-reactive curing resin, note discussion above in claim 34 and 39.
With regard to claim 42, directed to the coating composition of claim 41, wherein the crosslinker comprises a hydroxyl-reactive curing resin, note discussion above in claim 34 and 39.
With regard to claim 43, directed to the coating composition of claim 42, wherein the hydroxyl-reactive curing resin comprises a phenoplast, an aminoplast, a blocked or unblocked isocyanate, or a mixture thereof, note discussion above in claim 34, 35, and 39.
With regard to claim 44, directed to the coating composition of claim 35, wherein the coating composition is a solvent-based coating composition that includes less than 2 weight percent of water, if any, and wherein the coating composition includes a crosslinker, note discussion above in claim 34, 35, and 39. Moreover, the reference teaches the use of BPA substitute monomers and derivatives in the synthesis of polymerize resins having multiple aromatic or aliphatic rings. These structures inherently yield polymers of molecular weight above 2,000 and adjustment of solvent or solids content would have been a routine optimization and specifying a solvent based coating with <2 wt% water or with Mw 4,000-10,500 represents an obvious design choice to achieve desired film properties.
With regard to claim 45, directed to the coating composition of claim 44, wherein the polyether polymer has a number directed to the average molecular weight of at least 4,000 and a Tg of at least 700 C, and wherein the coating composition includes at least 50 wt-% of the polyether polymer, based on total resin solids, note discussion above in claim 34, 35, and 39. Moreover, the reference teaches the use of BPA substitute monomers and derivatives in the synthesis of polymerize resins having multiple aromatic or aliphatic rings. These structures inherently yield polymers of molecular weight above 2,000, note paragraph [0106], and adjusting the solvent or solids content would have been a routine optimization and represents an obvious design choices.
With regard to claim 46, directed to the coating composition of claim 45, wherein the crosslinker comprises a hydroxyl-reactive curing resin, note discussion above in claim 34, 35, 39, and paragraphs [043], [063]-[065],and claim 107 of the reference.
With regard to claim 47, directed to the coating composition of claim 46, wherein the hydroxyl-reactive curing resin comprises a phenoplast, an aminoplast, a blocked or unblocked isocyanate, or a mixture thereof note discussion above in claim 34, 35, 39, and paragraphs [043], [063]-[065] regarding curing and the epoxy kit, and claim 107 of the reference.
With regard to claim 48, directed to the coating composition of claim 47, wherein the polyether polymer has a number average molecular weight of about 7,500 to about 10,500, note discussion above in claim 34, 35, and 39. Moreover, the reference teaches the use of BPA substitute monomers and derivatives in the synthesis of polymerize resins having multiple aromatic or aliphatic rings. See paragraph [0111]. These structures would naturally yield polymers of molecular weights above 2,000 and the control of the solvent or solids content would have been a routine optimization and an obvious design choice to achieve desired film properties.
With regard to claim 49, directed to the coating composition of claim 34, wherein the aliphatic diepoxide comprises one or more of tricyclodecane dimethanol diglycidyl ether or a diepoxide of tetra methyl cyclobutanediol. note discussion above in claim 34, 35, and paragraph [030] of the reference. These materials are well-known reactants for form BPA free epoxy resins and would have been obvious to use aliphatic diepoxides and aromatic extenders in view of the reference.
With regard to claim 50, directed to the coating composition of claim 49, wherein the extender comprises hydroquinone, catechol, resorcinol, or a substituted variant thereof, see discussion for claim 34 regarding the extender. These materials are well-known reactants for form BPA free epoxy resins and would have been obvious to use aliphatic diepoxides and aromatic extenders in view of the reference.
With regard to claim 51, directed to the coating composition of claim 36, wherein the extender comprises hydroquinone, catechol, resorcinol, or a substituted variant thereof, see discussion for claim 34 regarding the extender. These materials are well-known reactants for form BPA free epoxy resins and would have been obvious to use aliphatic diepoxides and aromatic extenders in view of the reference.
With regard to claim 52, directed to the coating composition of claim 44, wherein the extender comprises hydroquinone, catechol, resorcinol, or a substituted variant thereof, see discussion for claim 34 regarding the extender. These materials are well-known reactants for form BPA free epoxy resins and would have been obvious to use aliphatic diepoxides and aromatic extenders in view of the reference.
With regard to claim 53, directed to the coating composition of claim 34, wherein a backbone of the polyether polymer includes -CH2-CH(OH)-CH2- or -CH2-CH2-CH(OH)- segments and the polyether polymer has a polydispersity index of 1.5 to 5. The reference discloses polymer backbones comprising -CH2-CH9OH)-CH2 and cyclic aromatic/aliphatic linkages which correspond to the claimed polyether segments and would reasonably therefore have Tg values between 60-110C. which is normal for epoxy polyether resins. Controlling the polydispersity index would have been routine during polymerization and optimization.
With regard to claim 54, c directed to the coating composition of claim 53, wherein the backbone includes a plurality of segments of the below Formula (IB):
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83
160
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wherein" denotes a hydrogen atom; each
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13
16
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if present, is independently an atom or group that is preferably substantially non- reactive with an epoxy group; v is independently 0 to 4; and two or more Rl groups can join to form one or more cyclic groups, see discussion for claim 53.
With regard to claim 55, directed to the coating composition of claim 34, wherein the polyether polymer has a polydispersity index of about 2 to 3.5 and where the Tg of at least 60°C is than 110°C, see discussion for claim 53.
With regard to claim 56, directed to the coating composition of claim 35, wherein the polyether polymer does not include any structural units derived from a dihydric phenol that exhibits an estrogenic agonist activity greater than 4,4'-(propane-2,2-diyl)bis(2,6-dibromophenol) in the MCF-7 assay. In paragraph [001] of the reference it discloses eliminating endocrine disrupting activity of BPA which would have made it obvious to one of ordinary skill in the art to consider the polymers as free or essentially free of bisphenol A, bisphenol F, bisphenol S, and the diglycidyl ethers thereof.
With regard to claim 57, directed to the coating composition of claim 56, wherein the coating composition is essentially free of bisphenol A, bisphenol F, bisphenol S, and the diglycidyl ethers thereof. In paragraph [001] of the reference it discloses eliminating endocrine disrupting activity of BPA which would have made it obvious to one of ordinary skill in the art to consider the polymers as free or essentially free of bisphenol A, bisphenol F, bisphenol S, and the diglycidyl ethers thereof.
With regard to claim 58, directed to the coating composition of claim 34, wherein the polyether polymer does not include any structural units derived from a dihydric phenol that exhibits an estrogenic agonist activity greater than 2,2-bis(4-hydroxyphenyl)propanoic acid in the MCF-7 assay. In paragraph [001] of the reference it discloses eliminating endocrine disrupting activity of BPA which would have made it obvious to one of ordinary skill in the art to consider the polymers as free or essentially free of bisphenol A, bisphenol F, bisphenol S, and the diglycidyl ethers thereof.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Information Disclosure Statement
Please check the serial number for WO-2010134608-A1 dated 11/25/2010 by Kasei Chemicals Corp on the IDS filed 5-29-24 cite no. 075. It does not appear to be correct or directed to the claimed subject matter. Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached on M-F 7-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765