DETAILED ACTION
Claim Status
Claim(s) 1-3, 6-13, 15-16, 18-20 is/are pending.
Claim(s) 1-3, 6-13, 15-16, 18-20 is/are rejected.
Claim(s) 4-5, 14, 17 is/are rejected by Applicant.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Specification / Disclosure
The objections to the disclosure in the previous Office Action mailed 02/12/2025 have been withdrawn in view of the Specification Amendments filed 08/12/2025.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 9 is/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 pre-AIA the applicant regards as the invention.
Claim 9 is vague and indefinite because there is insufficient antecedent basis for the limitation “the aliphatic diol” in claim 9 or in its parent claims 1, 6.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The rejections under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, in the previous Office Action mailed 02/12/2025 have been withdrawn in view of the Claim Amendments filed 08/12/2025.
Claim Rejections - 35 USC § 103 (AIA )
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.
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 1-3, 6-13, 15-16, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 2821446 (VITALE-EP ‘446),
in view of TOMIZAKI ET AL (US 2011/0111242),
and in view of:
• NIXON ET AL (US 2015/0218415), and/or
• PALM ET AL (US 2012/0282834), and/or
• AMBROSE ET AL (US 4,535,132).
VITALE-EP ‘446 discloses a coating composition comprising:
(i) a substantially aliphatic, substantially linear polyester polyol containing less than 2 wt% aromatic components and is derived from less than 1% monomers with a trivalent (or higher) functionality, wherein the polyester polyol is derived from:
• linear diacids containing 1-18 carbon atoms; and
• linear glycols containing 1-18 carbon atoms;
wherein the polyester polyols have an OH% of 0.5-3, and
wherein an illustrative, non-limiting example of the polyester polyol has a molecular weight of about 1900;
(ii) a curing agent;
(iii) optional additives (e.g., pigments, etc.);
The coating compositions can be organic solvent-based and/or water-based (e.g., including additional co-solvents, etc.), and are typically crosslinked after application to a substrate to form a crosslinked coating on said substrate. The coating compositions are useful for industrial applications (e.g., but not limited to, coatings for wood substrates, etc.). (entire document, paragraph 0019, 0021-0022, 0024-0026, 0028-0033, 0052, etc.; Table 1, etc.)
TOMOZAKI ET AL ‘242 discloses that it is well known in the art to utilize hydroxy-functional polyesters with typical number average molecular weights of 500-50,000 and typical hydroxy values of 10-300 mg KOH/g in curable pigmented coating compositions. The reference further discloses that it is well known in the art to utilize aliphatic diacids (e.g., succinic acid, adipic acid, etc.) and dihydric alcohols (e.g., unbranched or branched C2-C6 diols, such as branched 1,5-pentanediol, etc.) to form such hydroxyl-functional polyesters. The reference further discloses that it is well known in the art to incorporate organic solvents into water-based coating compositions (e.g., up to 50 parts by weight per 100 parts of polymeric components and curing agent; up to 70 parts by weight per 100 parts solid resin content; etc.) to improve smoothness and/or distinctness of image, in addition to other optional known additives (e.g., other organic solvents, etc.). (paragraph 0029-0033, 0039, 0048, 0212-0215, 0224, 0229, 0238, 0245-0247, etc.)
NIXON ET AL ‘415 discloses that it well known in the art to apply solvent-borne coating compositions comprising: (i) polyester polyol; and (ii) a curing agent; to a wide variety of substrates (e.g., wood, metal, plastic, glass, ceramic, etc.). (paragraph 0008, 0066-0067, 0074, 0082, etc.)
PALM ET AL ‘834 discloses that it well known in the art to apply solvent-borne coating compositions comprising: (i) a polyol component; and (ii) a crosslinking agent; to a wide variety of substrates (e.g., wooden materials, metallic surfaces, plastics, etc.). (paragraph 0009, 0014-0015, 0022, 0058, etc.)
AMBROSE ET AL ‘132 discloses that it well known in the art to apply solvent-borne coating compositions comprising: (i) polyester polyol; and (ii) a curing agent; to a wide variety of substrates (e.g., wood, metal, plastic, glass, ceramic, etc.). (line 4-12, col. 5; line 63, col. 6 to line 21, col. 7; etc.)
Regarding claims 1, 8, 19-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the coating compositions containing linear polyesters as disclosed in VITALE-EP ‘446 to various substrates, followed by crosslinking (i.e., curing) said applied coatings, in order to form useful and durable crosslinked (i.e., cured) coatings on articles.
Further regarding claim 1, a recitation of the intended use of the claimed invention (i.e., “for a metal substrate”) must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02 (II).
Additionally and/or alternatively, further regarding claim 1, one of ordinary skill in the art would have utilized the coating compositions of VITALE-EP ‘446 in known industrial applications, such as coatings for a variety of substrates (e.g., wood, metal, etc., as suggested in NIXON ET AL ‘415 and/or PALM ET AL ‘834 and/or AMBROSE ET AL ‘132) in order to provide a variety of substrates with a durable, low gloss coatings which resist wear-related burnishing (i.e., increased gloss) and/or excellent scratch resistance.
Further regarding claims 1, 6-7, 19-20, since: (i) VITALE-EP ‘446 discloses substantially linear polyesters with an OH% of 0.5-3; (ii) the hydroxyl equivalent weight of a material ≈ (56.1 x 1000) / OH number (assuming a negligible acid number); and (iii) the OH number of a material = 33 x OH%; VITALE-EP ‘446 discloses substantially linear polyesters with OH numbers of about 16.5-99 KOH/g and therefore hydroxyl equivalent weights of about 567-3400 g/mol.
Further regarding claims 1-3, one of ordinary skill in the art would have selected the number average molecular weight of the linear polyester polyols of VITALE-EP ‘446 to be within ranges typically utilized in coating compositions (e.g., number average molecular weights of 500-50,000, as suggested by TOMIZAKI ET AL ‘242) in order to optimize the performance properties of the coating composition (e.g., viscosity, etc.) and the resultant coating (e.g., strength, impact resistance, abrasion resistance, etc.) for specific applications.
Regarding claim 9, one of ordinary skill in the art would have utilized known branched pentanediol compounds (e.g., containing one or more branched alkyl groups, but only two reactive OH groups) as at least part of the linear (i.e., having only two reactive OH groups) aliphatic diol component used to form the substantially linear polyester polyols of VITALE-EP ‘446 in order to tailor the physical properties (e.g., flexibility, impact resistance, durability, etc.) for specific applications.
Regarding claims 10-12, one of ordinary skill in the art would have utilized known linear diacids such as succinic acid as suggested by TOMIZAKI ET AL ‘242 as at least part of the linear aliphatic diacid component used to form the substantially linear polyester polyols of VITALE-EP ‘446.
Regarding claim 13, one of ordinary skill in the art would have utilize diacids derived from renewable biomass feedstocks as at least part of the linear aliphatic diacid component used to form the substantially linear polyester polyols of VITALE-EP ‘446 in order to reduce usage of non-renewable petroleum-based resources.
Regarding claims 15-16, one of ordinary skill in the art would have selected the Tg of the polyester polyols of VITALE-EP ‘446 in order to optimize the performance properties of the coatings (e.g., flexibility, elasticity, impact resistance, strength, etc.) for specific applications and/or usage conditions (e.g., low temperature conditions and/or ambient temperature, etc.).
Regarding claims 18, one of ordinary skill in the art would have selected the solution viscosity and/or molecular weight of the polyester polyols of VITALE-EP ‘446 in order to: (i) tailor the coating characteristics (e.g., solution viscosity, etc.) of the coating composition for specific manufacturing methods and/or apparatus (e.g., spraying, rolling, dipping, etc.); and/or (ii) optimize the performance properties of the resultant coating (e.g., strength, impact resistance, abrasion resistance, etc.) for specific applications, since the solution viscosity is a function of the molecular weight of the polyester polyol, and the molecular weight of a polyester polyol in turn affects one or more of said performance properties of a coating made using said polyester polyols (e.g., higher molecular weights in a coating often results in improved strength, hardness, and/or chemical resistance, etc.).
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 2821446 (VITALE-EP ‘446), in view of TOMIZAKI ET AL (US 2011/0111242), and/or •PALM ET AL (US 2012/0282834), and/or •AMBROSE ET AL (US 4,535,132);
as applied to claims 1-3, 6-9 above,
and further in view of EP 2716679 (KUSANO-EP ‘679).
The above citation to not constitute a new grounds of rejection.
KUSANO-EP ‘679 discloses that it is well known in the art to utilize branched aliphatic diols such as 2,2,4,4-tetramethyl-1,5-pentanediol as dihydroxy compounds for producing condensation reaction-type polyols which can be used to produce materials with improved flexibility and/or elasticity. (paragraph 0070-0071)
Regarding claim 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to one of ordinary skill in the art would have utilize known branched, bifunctional pentanediol compounds as suggested by KUSANO-EP ‘679 as at least part of the linear aliphatic diol component used to form the substantially linear polyester polyols of VITALE-EP ‘446 in order to produce coatings with readily tailored performance properties (e.g., impact resistance, flexibility, etc.).
Claims 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 2821446 (VITALE-EP ‘446), in view of TOMIZAKI ET AL (US 2011/0111242), and in view of: •NIXON ET AL (US 2015/0218415), and/or •PALM ET AL (US 2012/0282834), and/or •AMBROSE ET AL (US 4,535,132);
as applied to claims 1-3, 6-13 above,
and further in view of UTSUNOMIYA ET AL (US 2015/0087789).
UTSUNOMIYA ET AL ‘789 discloses that it is well known in the art to use bio-based aliphatic dicarboxylic acids (e.g., succinic acid, adipic acid, etc.) as monomers to form polyester polyols derived primarily from aliphatic diacids and aliphatic diols in order to reduce reliance on petroleum-based raw materials. (paragraph 0002, 0215-0219, 00222-0225, 0269-0273, etc.)
Regarding claims 10-13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize linear aliphatic diacids such as succinic acid derived from renewable biomass feedstocks as at least part of the linear aliphatic diacid component used to form the substantially linear polyester polyols of VITALE-EP ‘446 in order to reduce usage of non-renewable petroleum-based resources. as suggested by UTSUNOMIYA ET AL ‘789.
Response to Arguments
Applicant's arguments filed 08/12/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “the combination of Vitale et al with Tomizaki et al. does not disclose all the limitations of claim 1. Specifically, the combination fails to teach a solvent-based coating composition for application to a metal substrate.” In response to applicant's argument, a recitation of the intended use of the claimed invention (i.e., “for a metal substrate”) must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02 (II).
Additionally, contrary to Applicant’s assertions, the teachings of VITALE-EP ‘446 are not limited solely to wood coatings, but are directed to coatings which are generally useful for “industrial applications”. It is well known in the art (as evidenced by NIXON ET AL ‘415 and/or PALM ET AL ‘834 and/or AMBROSE ET AL ‘132) that curable coatings containing polyester polyols are generally useful as coatings for a wide variety of substrates, including, but not limited to wood, metal, plastic, ceramic materials, etc.
Applicant has not provided persuasive evidence that the coatings of VITALE-EP ‘446 are wholly incapable of forming coatings on metal substrates. Furthermore, Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the application of the recited coating composition on a metal substrate.
(B) Applicant argues that “Kusano et al. do not cure the deficiencies of the combination of Vitale et al. and Tomizaki et al., as Kusano et al. do not describe the use of the aliphatic diol recited in claim 9 for reaction with an aliphatic diacid. Rather, the reference discloses a method for making polycarbonate polyols by reacting a diol with a carbonic acid diester.” However, KUSANO-EP ‘679 is relied upon to provide evidence that tetramethylpentanediol is a known type of diol (co)monomers used in condensation reactions used to produce reactive polyols for polyurethane-type curable coating compositions. Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from use of tetramethylpentanediol as at least one of the diols used to produce polyester polyols for the coating compositions of VITALE-EP ‘446. (C) Applicant argues that “Utsunomiya et al. do not cure the deficiencies of the combination of Vitale et al. and Tomizaki et al., as Utsunomiya et al. do not describe the use of aliphatic diol for reaction with an aliphatic diacid, as recited in pending claims 8-13. Rather, the reference discloses a biomass-derived diol which includes a cyclic carbonyl compound.”
As an initial matter, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a polyester resin which is derived solely from a single aliphatic diol and a single aliphatic diacid, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claims 10-13 (via parent claim 8) only require that the recited “linear polyester resin is derived from the reaction of an aliphatic diol with an aliphatic diacid.” Therefore, as long as the polyester is linear and at least partially contains the reaction product of an aliphatic diol and an aliphatic diacid (as disclosed in VITALE-EP ‘446), the requirements of claims 10-13 are fully satisfied.
Furthermore, UTSUNOMIYA ET AL ‘789 states that the cyclic carbonyl structures in bio-based diols is an undesirable by-product of the production of bio-based diols (e.g., 1,4-butanediol, etc.) and the content of the cyclic carbonyl structures should be strictly limited to amounts of 100 ppm or less (preferably 3 ppm or less). Therefore, UTSUNOMIYA ET AL ‘789, contrary to Applicant’s assertions, in fact discloses polyester polyols which primarily contain the reaction products of aliphatic diacids and aliphatic diols (see paragraph 0269-0273, etc.).
Additionally, claims 10-13 are directed to the structure of the aliphatic diacid required by parent claim 6 and UTSUNOMIYA ET AL ‘789 is relied upon to illustrate that it is well known in the art to utilize bio-based dicarboxylic acids (e.g., bio-based succinic acid or adipic acid, etc.) as components for polyester polyols used in curable polyurethane-type coatings. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
OKAMOTO ET AL (US 2016/0122539) disclose curable coating compositions comprising a high hydroxyl value polyester polyol and an isocyanate curing agent.
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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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November 11, 2025
/Vivian Chen/
Primary Examiner, Art Unit 1787