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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/25/2026 has been entered.
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.
Claims 83, 86, 90-95, and 97-102 are rejected under 35 U.S.C. 103 as being unpatentable over Albers (US 4,352,898) in view of Stark et al. (US 5,021,537) and Dubowik et al. (US 5,280,091).
Regarding Claims 83, 86, and 90-92, Albers discloses a water-born coating composition comprising modified polyamine, epoxy resin, and nitroparaffin (col.1, lines 6-8 and col.2, lines 45-46 and 53-58). The composition can include organic solvent (col.3, lines 4-5).
The modified polyamine is a polyamine-epoxy adduct made from polyglycidyl ether compounds (i.e. polyepoxide-polyamine adduct) (col.4, lines 11-14), wherein the modified polyamine is made by reacting polyamine with compounds containing glycidyl ether group (col.4, lines 3-9) where the polyamine is poly-amino-imidazoline (col.4, lines 38-40) and the compounds containing glycidyl ether group includes diglycidyl ether of bisphenol A (col.4, lines 23-24).
The epoxy resin includes combinations of epoxy resins including polyglycidyl ethers of aliphatic polyvalent-hydroxyl-compounds made by reacting trimethylolpropane with epichlorohydrin (i.e. aliphatic multifunctional polyepoxide having a functionality of 3) (col.6, lines 42-47, 51-53), and bisphenol A diglycidyl ether (i.e. difunctional polyepoxide) (col.6, lines 51 and 60-61 and col.7, lines 14-15).
Albers further discloses the composition comprising 15-20 wt.% epoxy (482/(600+482+266+195+2+800) – 482/(600+482+266+195+4+1600), 19-26 wt.% modified polyamine (600/(600+482+266+195+2+800) – 600/(600+482+266+195+4+1600), and 34-50 wt.% water (800/(600+482+266+195+2+800) – 1600/(600+482+266+195+4+1600)) (Tables 1-2, Samples 8c and 8d).
Based on total solids weight (i.e. without the water), there would be 7.5-13% epoxy (15*0.5 to 20*0.66) and 9.5-17% modified polyamine (19*0.5 to 26*0.66).
As set forth above, Albers disclose that the epoxy includes aliphatic multifunctional polyepoxide and difunctional polyepoxide and the modified polyamine includes polyepoxide-polyamine adduct. It would have been obvious to one of ordinary skill in the art to include amounts of aliphatic multifunctional polyepoxide and difunctional polyepoxide, including that presently claimed, in order to produce a composition with desired properties (col.7, lines 14-16).
Albers does not disclose polyacetoacetate as claimed.
Stark discloses a coating composition comprising epoxy resin, polyacetoacetate, and a curing agent (col.1, lines 64-68). Stark discloses using 1-75% polyacetoacetate based on the weight of epoxy resin (col.3, lines 18-24). The epoxy resin includes that of formula (I) which when n=0 is bisphenol A diglycidyl ether, i.e. difunctional epoxy (col.2, lines 14-39). The curing agent includes polyamine-epoxy adducts (col.3, lines 35-37). The polyacetoacetate provides a high solids coating having shortened drying times (col.2, lines 1-2).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Albers to incorporate the teachings of Stark and produce the water-born coating composition further comprising 75% polyacetoacetate based on the weight of epoxy resin. Doing so would provide a high solids coating having shortened drying times.
Based on the amount of epoxy resin disclosed by Albers, it is calculated that the composition has 0.15 (15*0.01) – 15 wt.% (20*0.75) polyacetoacetate. Based on total solids weight (i.e. without the water), there would be 0.1-10% polyacetoacetate (0.15*0.5 – 15*0.66).
Albers in view of Stark does not disclose aromatic/cycloaliphatic polyamide as claimed.
Dubowik discloses epoxy resins cured with methylene bridged poly(cyclohexyl-aromatic) amines (Abstract, col.3, lines 35-37). The use of methylene bridged poly(cyclohexyl-aromatic) amine results in epoxy composition with excellent gloss and water spotting resistance, low toxicity, and excellent thermal properties, chemical resistance, and mechanical properties (col.3, line 66- col.4, line 21).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Albers in view of Stark to incorporate the teachings of Dubowik and produce the water-born coating composition further comprising amounts of methylene bridged poly(cyclohexyl-aromatic) amine, including that presently claimed, to produce epoxy composition with desired gloss, water spotting resistance, thermal properties, chemical resistance, and mechanical properties as well as low toxicity.
Regarding Claim 93, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses the coating is applied using spray coating (col.9, lines 64-66).
Regarding Claim 94, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 93 above. Albers further discloses that in addition to the composition comprising 34-50wt.% water, it also comprises 14-19 wt.% ((195+266)/(600+482+266+195+4+1600) - (195+266)/( 600+482+266+195+2+800)) organic solvent (Tables 1-2, Samples 8c and 8d).
Regarding Claim 95, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses the volatile organic content is less than 450 g/L (col.3, lines 13-17).
Regarding Claim 97, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses the composition can have two parts with the first part containing the modified polyamine and the second part the epoxy resin (col.9, lines 18-22) wherein, as set forth above, the epoxy resin includes aliphatic multifunctional polyepoxide and difunctional polyepoxide.
It would have been obvious to one of ordinary skill in the art to include the polyacetoacetate of Stark with the first part of the composition since Stark discloses the amount of polyacetoacetate based on the amount of epoxy resin and provides motivation for combining the polyacetoacetate with the epoxy resin. It would have been obvious for one of ordinary skill in the art to include the methylene bridged poly(cyclohexyl-aromatic) amine of Dubowik with the polyamine component of Albers.
As shown above, the total composition may comprise 15-20 wt.% epoxies and 0.15-15 wt.% polyacetoacetate, and 19-26 wt.% modified polyamine.
The part comprising the epoxies and polyacetoacetate (i.e. polyepoxide component) would therefore comprise 50-99% epoxies (15/(15+15) to 20/(20+0.15)) and 1-50% polyacetoacetate.
The remainder of the total composition would be contained in the second part (i.e. polyamine component), which would comprise 12-22% modified polyamine (19*(100-20-15)/100 to 26*(100-15-0.15)/100).
As stated above, it would have been obvious to a person having ordinary skill in the art to use amounts of methylene bridged poly(cyclohexyl-aromatic) amine, including that presently claimed, to produce epoxy composition with desired gloss, water spotting resistance, thermal properties, chemical resistance, and mechanical properties as well as low toxicity.
The only deficiency of Albers in view of Stark and Dubowik is that Albers in view of Stark and Dubowik disclose the use of 22% modified polyamine, while the present claims require 25%.
It is apparent, however, that the instantly claimed amount of modified polyamine and that taught by Albers in view of Stark and Dubowik are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of modified polyamine disclosed by Albers in view of Stark and Dubowik and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of modified polyamine disclosed in the present claims is but an obvious variant of the amounts disclosed in Albers in view of Stark and Dubowik, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding Claims 98-101, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses applying the coating to a substrate and then curing (col.10, lines 27-29).
Regarding Claim 102, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 99 above. Albers further discloses the coating can be applied to vehicles (col.10, lines 3-4).
Claim 88 is rejected under 35 U.S.C. 103 as being unpatentable over Albers in view of Stark and Dubowik as applied to claim 83 above, and further in view of Goeb et al. (US 2011/0039108) and in view of the evidence of King Industries (“K-FLEX XM-B301”).
Regarding Claim 88, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers in view of Stark and Dubowik disclose polyacetoacetate but do not disclose viscosity as claimed.
Goeb discloses epoxy composition where toughness is increased by adding acetoacetoxy-functional polymers (para 0011) including that known under the tradename K-Flex-XM-B301 (para 0060) which as evidenced by King Industries has a viscosity of 1100 cPs.
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Albers in view of Stark and Dubowik to incorporate the teachings of Goeb and produce the water-born coating composition using acetoacetoxy-functional polymer K-Flex-XM-B301 as the polyacetoacetate. Doing so would increase toughness.
Claim 96 is rejected under 35 U.S.C. 103 as being unpatentable over Albers in view of Stark and Dubowik as applied to claim 83 above, and further in view of Yang et al. (US 2019/0161639).
Regarding Claim 96, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses using the epoxy composition on vehicles (col.10, lines 3-4), but does not include a cured polyurethane overlying the epoxy.
Yang discloses it is known that polyurethane topcoat after curing may provide a coating having good adhesion to its underlying coating such as epoxy primer coating and having good weatherability, corrosion resistance and high gloss and that such coatings are used for vehicle finishes (paras 0003-0004).
Therefore, it would have been obvious to one of ordinary skill in the art to include a polyurethane topcoat on the epoxy coating in Albers in order to produce coating with good weatherability, corrosion resistance and high gloss.
Response to Arguments
In light of applicant’s amendment filed 08/25/2026, the Claim Objection of Claim 83 is withdrawn.
Applicant's arguments filed 08/25/2026 have been fully considered but they are not persuasive.
Applicant argues that the presence or absence of acetoacetate does not affect drying time, pointing to Comparative Coatings A, B, and C and the Inventive Coating as recorded in Table 6, where each example has a 2 hr dry-to-tape time. Applicant argues therefore, that the motivation pointed to in the rejection above for using the polyacetoacetate of Stark, i.e. to shorten drying time, is not applicable to the present invention (Remarks filed 08/25/2026, pgs 6-7).
However, this is not persuasive because these examples are not proper side-by-side comparisons; they have other differences in amounts besides the presence or absence of acetoacetate. Additionally, it is not clear how the results for the dry-to-tape time are reported. Did all examples dry in precisely 2 hours? Or were results of, for instance, 1 hour 31 minutes, 1 hour 50 minutes, 2 hours 15 minutes all reported as 2 hours? Further, there is no disclosure in the present specification that the polyepoxy-polyamine adduct used in the examples comprises a reaction product of reactants comprising a poly-amino-imidazoline and a diglycidyl ether of bisphenol A as presently claimed, that the aromatic/cycloaliphatic polyamine used in the examples is a methylene bridged poly(cyclohexyl-aromatic) amine as presently claimed, or that the aliphatic multifunctional polyepoxide used in the examples has a number average functionality from 3 to 6 as presently claimed.
Applicant argues that the claimed polyacetoacetate is critical to achieve desired scratch resistance, pointing again to Comparative Coatings A and C compared to Comparative Coating B and the Inventive Coating (Remarks filed 08/25/2026, pgs 7-8).
However, applicant’s arguments are not persuasive because the scope of the data is not commensurate in scope with the claims. Specifically, the data uses specific polyepoxy-polyamine adduct, specific aromatic/cycloaliphatic polyamine, specific difunctional and multifunctional polyepoxide resins, and specific polyacetoacetate resin, while the claims broadly disclose any polyepoxy-polyamine adduct as claimed, any aromatic/cycloaliphatic polyamine as claimed, any difunctional polyepoxide resin, any aliphatic multifunctional polyepoxide as claimed, and any polyacetoacetate resin. Further, there is no data at the endpoints of the claimed amounts of the components. Further, there is no disclosure in the present specification that the polyepoxy-polyamine adduct used in the examples comprises a reaction product of reactants comprising a poly-amino-imidazoline and a diglycidyl ether of bisphenol A as presently claimed, that the aromatic/cycloaliphatic polyamine used in the examples is a methylene bridged poly(cyclohexyl-aromatic) amine as presently claimed, or that the aliphatic multifunctional polyepoxide used in the examples has a number average functionality from 3 to 6 as presently claimed.
Applicant argues that cited motivation to use the MPCA of Dubowik (i.e. excellent gloss and water spotting resistance, low toxicity, and excellent thermal properties, chemical resistance, and mechanical properties) is not sufficient motivation, because the data in Table 6 of Dubowik shows that MPCA only produces mechanical properties comparable to, not better than, the comparative curing agents. Applicant further argues that the data of Table 6 of Dubowik shows the MPCA-cured system has poorer solvent resistance than some of the comparative curatives and that Table 6 of the present specification show that Skydrol is more aggressive than conventional solvents; Applicant argues therefore that Dubowik’s statement that MPCA provides excellent chemical resistance is unsupported and does not provide a reasonable expectation of success with regards to all solvents (Remarks filed 08/25/2026, pgs 8-9).
However, teaching that MPCA has excellent gloss and water spotting resistance, low toxicity, and excellent thermal properties, chemical resistance, and mechanical properties, does not mean that MPCA is the only advantageous polyamine and that there are no other polyamines with beneficial properties. MPCA having mechanical properties approaching those of cycloaliphatic amine, does not mean that the mechanical properties of MPCA are any less excellent. Dubowik is only used to teach why one would use MPCA in Albers. Nothing in Table 6 contradicts the motivation disclosed by Dubowik in col.3, line 66 – col.4, line 21. The MPCA of Dubowik is not being used to replace one of the polyamines mentioned in Table 2 or Table 6 in Albers. Further, Dubowik states after Table 6 that MPCA has significantly better chemical resistance than the other polyamines especially against hydrocarbons. Additionally, there is no requirement either in the claims or Albers regarding excellent resistance to phosphate-ester aerospace hydraulic fluids such as Skydrol.
Regarding the gloss, water spotting resistance, low toxicity, and thermal properties, applicant further argues that these properties are not evaluated in the examples of Dubowik, and therefore the disclosure of Dubowik is a “mere conclusory statement” and does not provide reasonable expectation of success to combine (Remarks filed 08/25/2026, pgs 9-10).
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). While the examples of Dubowik do not evaluate gloss, water spotting resistance, low toxicity, and thermal properties, examiner maintains the general disclosure of Dubowik regarding these properties would provide reasonable expectation of success to combine, absent evidence to the contrary.
Regarding previous discussions of Applicant’s data, i.e. that the present data is not commensurate in scope with the scope of the claims, specifically regarding the types of materials used and lack of data at the endpoints of the claimed ranges, Applicant argues that the present data compares a working example with comparative examples that test the same class of materials as disclosed in Albers, Stark, and Dubowik. Applicant argues that the present working example is not required to be commensurate in scope with the scope of the claims, because the present comparative examples demonstrate the combination of references would not necessarily achieve the claimed Skydrol resistance (Remarks filed 08/25/2026, pgs 10-11).
However, Skydrol resistance is not cited in the present claims, and the present data would need to be commensurate in scope with the scope of the claims to show that the claimed limitations are critical to achieve a desired Skydrol resistance. As set forth in MPEP 716.02(d), whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
Regarding previous discussions of Applicant’s data, i.e. that the examples referenced to demonstrate the claimed polyacetoacetate is critical to achieve desired scratch resistance are not properly side-by-side, applicant argues that the only operative variable distinguishing Comparative Coating C from the Inventive Coating is the use of polyacetoacetate resin, and the corresponding and unavoidable adjustment to the amount of difunctional polyepoxide resin (Remarks filed 08/25/2026, pgs 11-12).
However, while Examiner acknowledges that the use of polyacetoacetate necessitates a corresponding reduction in the wt% of another component, Comparative Coating C and the Inventive coating also differ in the amount of multifunctional polyepoxide resin. The Inventive Coating, which includes the polyacetoacetate, has a higher amount of multifunctional polyepoxide resin than the Comparative Coating C. Therefore, the examples are not properly side-by-side, because multiple variables have been changed: the use of polyacetoacetate (with corresponding change in the amount of resin) and the change in the amount of multifunctional polyepoxide resin.
Regarding previous discussions of Applicant’s data, i.e. that the present data is not commensurate in scope with the scope of the claims, specifically regarding the types of materials used and lack of data at the endpoints of the claimed ranges, Applicant argues that their data is only required to be representative of the claimed genus, and argues that the examples presented in Table 4 of the present specification are representative of the claimed components. Applicant cites MPEP § 716.02(d), "[t]he nonobviousness of a broader claimed range can be supported by evidence based on results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof” (Remarks filed 08/25/2026, pgs 12-13).
However, the present specification only discloses that the working example uses a “polyepoxy-polyamine adduct”, an “aromatic/cycloaliphatic polyamine”, and a “multifunctional polyepoxide resin”, which may be broader or narrower than the compounds of the present claims. Since the present disclosure does not disclose what compounds are used in the working examples, one of ordinary skill in the art would not be able to ascertain if they are representative of the Claims. Additionally, given that there is only one working example, it is not clear how a trend can be established with respect to either types or amounts of components. Further, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant, that the present working example is representative of the scope of the present Claims, must be supported by a declaration or affidavit.
Applicant argues that neither Goeb or Yang supply the missing motivation with respect to the combination of Albers, Stark and Dubowik with a reasonable expectation of success.
However, as set forth above, it is the examiner’s position that the combination of Albers with Stark and Dubowik is proper. Further, note that while Goeb and Yang do not disclose all the features of the present claimed invention, Goeb or Yang are each used as a teaching reference, and therefore, it is not necessary for these secondary references to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather each reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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