CTNF 18/804,565 CTNF 95257 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restriction 08-08 AIA Restriction to one of the following inventions is required under 35 U.S.C. 121: I. Claim s 1-15 , drawn to a coating composition , classified in CPC C09D 127/14 . II. Claim s 16-19 , drawn to a method of coating a substrate , classified in CPC C08J 7/04 . 08-13 AIA The inventions are independent or distinct, each from the other because: 08-20 AIA Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used in a materially different process of using the product, such as providing a substrate, applying an adhesive layer on the substrate, forming a coating layer from the claimed coating composition onto a carrier, depositing the coating layer onto the adhesive layer, and removing the carrier . Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: The inventions have acquired a separate status in the art in view of their different classification. The inventions have acquired a separate status in the art due to their recognized divergent subject matter. The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries) . 18-22 AIA Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention . The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. 08-23 AIA During a telephone conversation with Matthew Fewkes on 21 April 2026 a provisional election was made without traverse to prosecute the invention of Group I , claim s 1-15 . Affirmation of this election must be made by applicant in replying to this Office action. Claim s 15-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. 08-23-02 AIA Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). 08-21-04 AIA The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. Claim Rejections - 35 USC § 103 07-20-aia 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-2, 6-7, 10-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Vasta (US 3,716,599) . With respect to claim 1, Vasta discloses a coating composition comprising 15-75% by weight of a fluoropolymer that is polyvinyl fluoride (Col. 1, lines 30-32) and balance (i.e., 25-85% by weight) (b) acrylic polymer containing amino groups and (c) blocked polyisocyanate (Col. 1, lines 34-35, 38-41, 52-53). The (b) acrylic polymer containing amino groups is also made from other monomers (Col. 1, lines 38-50) and is therefore an acrylic copolymer as presently claimed. However, Vasta does not disclose individual amounts of the (b) acrylic copolymer containing amino groups and (c) blocked polyisocyanate. However, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component, i.e. 12.5% by weight (25/2 = 12.5) – 42.5% by weight (85/2 = 42.5) each. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek , 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Therefore, Vasta discloses a coating composition comprising 15-75% by weight of polyvinyl fluoride (PVF) and 12.5-42.5% by weight of an acrylic copolymer containing amino groups. The weight ratio of the acrylic copolymer to PVF is therefore 0.1667:1 (12.5/75 ≈ 0.1667) to 2.8333:1 (42.5/15 ≈ 2.8333), which overlaps the presently claimed range of 0.05:1 to 0.25:1. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding the number of reactive groups in the isocyanate crosslinker being 75-125 mol% relative to the total number of amine functional groups in the acrylic copolymer, it is first noted that Vasta discloses the acrylic polymer and polyisocyanate react (Col. 4, lines 30-35), and thus the blocked polyisocyanate is unblocked. While there may be no explicit disclosure from Vasta regarding this limitation, given that Vasta discloses an equal amount of both the acrylic copolymer containing the acrylic group and the polyisocyanate as set forth above, it is the examiner’s position that the number of reactive groups in the isocyanate would inherently overlap the claimed range of 75-125 mol%, absent evidence to the contrary In light of the overlap between the claimed coating composition and that taught by Vasta, it would have been obvious to one of ordinary skill in the art to use a coating composition that is both taught by Vasta and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention. With respect to claim 2, Vasta discloses the coating contains pigment (Col. 4, lines 47-54). While Vasta may not explicitly disclose the weight ratio of the pigment to the total weight of PVF and acrylic copolymer in the coating composition being in a range of 0.05:1 to 0.25:1, it would have been obvious to one of ordinary skill in the art to use any amount of pigment, including that presently claimed, in order to provide a coating having desired coloration and pigmentation. With respect to claim 6, Vasta discloses the use of solvent (Col. 2, lines 48-51). While there may be no disclosure from Vasta regarding the weight ratio of the solvent to the PVF being in the range of 2:1 to 1:1, it would have been obvious to one of ordinary skill in the art to use any weight ratio of solvent to PVF, including values presently claimed, in order to provide a coating composition having desired viscosity. With respect to claim 7, Vasta discloses applying the coating to a substrate (Col. 4, lines 50-51). With respect to claim 10, Vasta discloses the substrate includes aluminum (Col. 5, lines 18-19), which is a metal. With respect to claim 11, Vasta discloses the coating is thermoset (i.e., cured) (Col. 4, lines 58-61), and therefore is a cured layer of the coating composition on the substrate. With respect to claims 12-13 and 15, Vasta discloses a coating composition comprising 15-75% by weight of a fluoropolymer that is polyvinyl fluoride (Col. 1, lines 30-32) and balance (i.e., 25-85% by weight) (b) acrylic polymer containing amino groups and (c) blocked polyisocyanate (Col. 1, lines 34-35, 38-41, 52-53). The (b) acrylic polymer containing amino groups is also made from other monomers (Col. 1, lines 38-50) and is therefore an acrylic copolymer as presently claimed. The coating is applied to a substrate (Col. 4, lines 50-51) including aluminum (Col. 5, lines 18-19), which is a metal. The coating is thermoset (i.e., cured) (Col. 4, lines 58-61), and is therefore a dry coated film that is cured. However, Vasta does not disclose individual amounts of the (b) acrylic copolymer containing amino groups and (c) blocked polyisocyanate. However, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component, i.e. 12.5% by weight (25/2 = 12.5) – 42.5% by weight (85/2 = 42.5) each. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek , 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Therefore, Vasta discloses a coating composition comprising 15-75% by weight of polyvinyl fluoride (PVF) and 12.5-42.5% by weight of an acrylic copolymer containing amino groups. The weight ratio of the acrylic copolymer to PVF is therefore 0.1667:1 (12.5/75 ≈ 0.1667) to 2.8333:1 (42.5/15 ≈ 2.8333), which overlaps the presently claimed range of 0.05:1 to 0.25:1. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding the number of reactive groups in the isocyanate crosslinker being 75-125 mol% relative to the total number of amine functional groups in the acrylic copolymer, it is first noted that Vasta discloses the acrylic polymer and polyisocyanate react (Col. 4, lines 30-35), and thus the blocked polyisocyanate is unblocked. While there may be no explicit disclosure from Vasta regarding this limitation, given that Vasta discloses an equal amount of both the acrylic copolymer containing the acrylic group and the polyisocyanate as set forth above, it is the examiner’s position that the number of reactive groups in the isocyanate would inherently overlap the claimed range of 75-125 mol%, absent evidence to the contrary In light of the overlap between the claimed coating composition and that taught by Vasta, it would have been obvious to one of ordinary skill in the art to use a coating composition that is both taught by Vasta and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention . 07-22-aia AIA Claim s 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Vasta (US 3,716,599) as applied to claim 1 above, and further in view of Ooaira et al. (US 2015/0044439 A1, “Ooaira”) . With respect to claims 4-5, Vasta does not disclose the use an antioxidant component, wherein the weight ratio of antioxidant component to the PVF is in the range of 0.002:1 to 0.1:1, nor wherein the antioxidant component is a phosphate-based antioxidant or a phenolic antioxidant. Ooaira teaches an acrylic resin composition ([0001]) which contains an antioxidant including phenol-based antioxidants (i.e., a phenolic antioxidant) in an amount of 0.01-1 part by mass ([0141-0143]). Vasta and Ooaira are analogous inventions in the field of acrylic coating compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coating composition of Vasta to contain a phenolic antioxidant in an amount of 0.01-1 part by mass as taught by Ooaira in order to provide a coating that prevents oxidation . 07-22-aia AIA Claim s 8-9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Vasta (US 3,716,599) as applied to claim s 1, 7, and 12-13 above, and further in view of Zheng et al. (US 2015/0086792 A1, “Zheng”) . With respect to claims 8-9 and 14, while Vasta discloses the use of the coating with a substrate as set forth above, Vasta does not disclose wherein the substrate is primed, nor wherein the primer is a polyurethane, a polyester, or an acrylic polymer. Zheng teaches a coating comprising a fluoropolymer that is applied to a substrate that is primed (Abstract, [0001]). The fluoropolymer includes PVF ([0059]). The primer is a polyurethane primer which enables excellent wet adhesion of the fluoropolymer ([0050]). Vasta and Zheng are analogous inventions in the field of PVF coatings applied to substrates. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate of Vasta to have a polyurethane primer as taught by Zheng in order to enable excellent wet adhesion of the fluoropolymer (Zheng, [0050]) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is an examiner’s statement of reasons for indicating allowable subject matter. Claim 3 contains allowable subject matter over the “closest” prior art Vasta (US 3,716,599), Ooaira et al. (US 2015/0044439 A1, “Ooaira”), and Zheng et al. (US 2015/0086792 A1, “Zheng”). Vasta discloses a coating composition comprising 15-75% by weight of a fluoropolymer that is polyvinyl fluoride (Col. 1, lines 30-32) and balance (i.e., 25-85% by weight) (b) acrylic polymer containing amino groups and (c) blocked polyisocyanate (Col. 1, lines 34-35, 38-41, 52-53). The (b) acrylic polymer containing amino groups is also made from other monomers (Col. 1, lines 38-50) and is therefore an acrylic copolymer. However, Vasta does not disclose the coating composition further comprises an acid scavenger epoxide component, nor wherein the weight ratio of the acid scavenger epoxide component to the PVF is in the range of 0.002:1 to 0.1:1. Ooaira discloses an acrylic resin composition ([0001]) which contains an antioxidant including phenol-based antioxidants (i.e., a phenolic antioxidant) in an amount of 0.01-1 part by mass ([0141-0143]). However, Ooaira does not disclose the coating composition further comprises an acid scavenger epoxide component, nor wherein the weight ratio of the acid scavenger epoxide component to the PVF is in the range of 0.002:1 to 0.1:1. Zheng teaches a coating comprising a fluoropolymer that is applied to a substrate that is primed (Abstract, [0001]). The fluoropolymer includes PVF ([0059]). The primer is a polyurethane primer which enables excellent wet adhesion of the fluoropolymer ([0050]). However, Zheng does not disclose the coating composition further comprises an acid scavenger epoxide component, nor wherein the weight ratio of the acid scavenger epoxide component to the PVF is in the range of 0.002:1 to 0.1:1. Thus, none of the cited references, either alone or in combination, disclose the invention of claim 3 and therefore claim 3 contains allowable subject matter. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /STEVEN A RICE/Examiner, Art Unit 1787 /CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787 Application/Control Number: 18/804,565 Page 2 Art Unit: 1787 Application/Control Number: 18/804,565 Page 3 Art Unit: 1787 Application/Control Number: 18/804,565 Page 4 Art Unit: 1787 Application/Control Number: 18/804,565 Page 5 Art Unit: 1787 Application/Control Number: 18/804,565 Page 6 Art Unit: 1787 Application/Control Number: 18/804,565 Page 7 Art Unit: 1787 Application/Control Number: 18/804,565 Page 8 Art Unit: 1787 Application/Control Number: 18/804,565 Page 9 Art Unit: 1787 Application/Control Number: 18/804,565 Page 10 Art Unit: 1787 Application/Control Number: 18/804,565 Page 11 Art Unit: 1787 Application/Control Number: 18/804,565 Page 12 Art Unit: 1787 Application/Control Number: 18/804,565 Page 13 Art Unit: 1787
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