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 Objections
Claim 83 is objected to because of the following informalities:
Claim 83, line 7, “from 10 wt% to 40 wt% of” should be deleted. This appears to be mistakenly inserted as a copy from the previous line.
Appropriate correction is required.
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 83-84, 86-87, 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 modified polyamine is a polyamine-epoxy adduct made from polyglycidyl ether compounds, i.e. polyepoxide-polyamine adduct (col.4, lines 11-14). The epoxy resin includes combinations of epoxy resins that include polyglycidyl ethers of aliphatic polyvalent-hydroxyl-compounds (i.e. aliphatic multifunctional polyepoxide) (col.6, lines 42-47) and bisphenol A diglycidyl ether (i.e. difunctional polyepoxide) (col.6, lines 51 and 60-61 and col.7, lines 14-15). The composition can include organic solvent (col.3, lines 4-5).
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 84, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses 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).
Regarding Claim 87, Albers in view of Stark and Dubowik discloses all the limitations of the present invention according to Claim 83 above. Albers further discloses the epoxy resins include polyglycidyl ethers of aliphatic polyvalent-hydroxyl-compounds made by reacting trimethylolpropane with epichlorohydrin which would necessarily have a functionality of 3 (col.6, lines 51-53).
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) where as set forth above, the epoxy resin includes aliphatic multifunctional polyepoxide and difunctional polyepoxide.
It would have be 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
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
Applicant argues against the use of Stark to teach use of polyacetoacetate in order to provide shortened drying times. Applicant argues, pointing to Comparative Coating C and the Inventive coating, that in the present invention the polyacetoacetate is critical to achieve desired scratch resistance.
However, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Since Stark discloses use of polyacetoacetate in order to provide shortened drying times, it would be obvious to use the polyacetoacetate for this purpose.
Further, 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, any aromatic/cycloaliphatic polyamine as claimed, any difunctional and multifunctional polyepoxide resins, 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 aromatic/cycloaliphatic polyamine used in the Examples is a methylene bridged poly(cyclohexyl-aromatic) amine as presently claimed.
Applicant also argues, pointing to Comparative Coating C vs Inventive coating, and to Comparative Coating A vs Comparative Coating B, that the presence or absence of acetoacetate does not affect drying time (all examples have 2 hr dry-to-tape time).
However, the Examples are not proper side-by-side comparisons to support this argument (there are other differences in amounts besides the presence or absence of acetoacetate). Further, there is no disclosure in the present specification that the aromatic/cycloaliphatic polyamine used in the Examples is a methylene bridged poly(cyclohexyl-aromatic) amine as presently claimed.
Applicant also argues that the data of Dubowik does not actually demonstrate an improved property resulting from use of methylene bridged poly(cyclohexyl-aromatic) amine.
However, the fact remains that Dubowik does state 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 there would be reasonable expectation of success when combined with the epoxy composition of Albers, without evidence to the contrary.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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