DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 4/29/26, claims 1, 3-10 are currently pending in the application, with claims 5-8 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Gros et al. (US 2008/0305274 A1) alone, or further in view of Treiber et al. (US 2005/0209425 A1) (references of record).
Gros teaches UV curable anti-corrosive coatings comprising 25-80 wt.% of a binder, based on solids content of the composition, 1 to 8 wt.% of a photoinitiator (read on (c)), 0 to 5 wt.% of additives, up to 70 Wt.% water, and 0.1 to 60 wt.% of a pigment. Disclosed binder base resins include curable unsaturated acrylic ester resins and/or urethane acrylic resins (read on (a)), and additionally, up to 15 wt.% of an elasticizing binder, such as a polyurethane dispersion (Ab., [0020]-[0024], ref. claims). It is noted that according to paragraphs [0055] and [0056] of the instant disclosure, the inert polyurethane resins have no photocurable acrylic groups, and in some embodiments, the polyurethanes have functional groups, including, but not limited to, hydroxyl, carboxyl, substituted amine and the like.
Gros further teaches phosphoric acid acrylates (read on phosphoric acid-modified monomers/oligomers for improving contact with the metal [0018], and aluminum phosphate for corrosion protection [0025]-[0026]
Disclosed compositions in TABLE 1 include a polyester acrylate, i.e., an ethylencially unsaturated oligomer, aliphatic urethane acrylate (an elasticizing binder), a photoinitiator and water, i.e., are aqueous compositions.
Gros is silent on a composition comprising phosphoric acid modified monomer or oligomer and a water-based polyurethane dispersion of an inert polyurethan resin, in addition to the other claimed components, in one single embodiment as claimed.
At the outset, it is noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
Given the alternative recitation “unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersions” in Gros [0024] for an elasticizing binder, and given that there is no explicit teaching or suggestion therein that the polyurethane resin in the dispersion has photocurable acrylic groups, the polyurethane resin in the disclosed dispersion is interpreted to be an inert polyurethane.
In the alternative, Treiber teaches aqueous polyurethane dispersions as binders having providing excellent abrasion resistance, water resistance and resilience, useable as a mixture with other binders and suitable for coating on metals, and as binders in bottoming coats, i.e., in primers (Ab., [0068]-[0069]). Disclosed aqueous polyurethane dispersions within the scope of Treiber [0011]-[0053] are not taught as including a polyurethane resin having photocurable acrylic or unsaturated groups, and therefore and interpreted as including an inert polyurethane resin as in the claimed invention.
Given the teaching in Gros on UV curable aqueous anti-corrosive coatings, suitable components therefor and amounts thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an aqueous composition comprising an unsaturated acrylic ester resin, an urethane acrylic resin and /or a polyester acrylate resin (i.e., ethylenically unsaturated oligomers), a polyurethane dispersion, a photoinitiator, and phosphoric acid acrylates as adhesion promoters, or alternatively, include Treiber’s aqueous polyurethane dispersion in a suitable amount for providing advantages thereof, including in amounts within the scope of the claimed invention.
The recitation "primer composition " in the preamble of claim 1 is deemed to be a statement of purpose or an intended use, which is not seen to result in any structural difference between the instantly claimed invention and Gros. Hence, the preamble fails to limit the claim. See MPEP 2111.02.
Claims 1, 3, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gros et al. (US 2008/0305274 A1, of record), in view of Sanduja (US 2004/0076833 A1, of record) alone, or alternatively, further in view of Treiber et al. (US 2005/0209425 A1) (references of record).
Regarding claim 1, the discussion on Gros from paragraph 4 above is incorporated herein by reference. It is noted that Gros teaches aluminum phosphate as corrosion protection additive [0025].
Gros is silent on a composition comprising (a) phosphoric acid and (b) an inert polyurethane, in addition to other components of the claimed invention.
As stated in paragraph 6 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding (a), in a related field of endeavor, the secondary reference to Sanduja is directed to protective coatings for metals having protection from rust and corrosion (Ab.). Sanduja teaches anticorrosion compounds and pigments known in the art as including aluminum phosphate and phosphoric acid, i.e., equivalence thereof [0042].
Regarding (b), the discussions on Gros and Treiber regarding polyurethane dispersion from paragraphs 7 and 8 above are incorporated herein by reference.
Given the teaching in Gros on UV curable aqueous anti-corrosive coatings and suitable components therefor and amounts thereof, the teaching therein on aluminum phosphate for corrosion protection, and the teaching in Sanduja on aluminum phosphate and phosphoric acid as equally suitable anticorrosion compounds in metal coating compositions, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an aqueous curable composition comprising an unsaturated acrylic ester resin, urethane acrylic resin and/or polyester acrylate resin (i.e., ethylenically unsaturated oligomer(s)), a polyurethane dispersion, a photoinitiator, and phosphoric acid (as a substitute for Gros’ aluminum phosphate), or alternatively, including Treiber’s aqueous polyurethane dispersion in suitable amount for providing all advantages thereof, including in amounts within the scope of the claimed invention. It is obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP 2144.06. Also, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Additionally, the discussion on the preamble from paragraph 10 above is incorporated herein by reference.
Regarding claims 3 and 9, Gros teaches a pigment amount of 0.1 to 60 wt.% in the UV curable coating (ref. claims), and aluminum phosphate for providing corrosion protection [0025]-[0026]. Sanduja teaches aluminum phosphate and phosphoric acid as equally suitable anticorrosion compounds in an amount of 0.01% to about 25 wt.% [0042]-[0044]. Thus, a skilled artisan would have found it obvious to substitute aluminum phosphate with phosphoric acid based on their art recognized equivalence, including in amounts within the scope the claimed invention, absent evidence of criticality for the claimed ranges.
In the alternative, it is the Examiner’s position that the amount of an anticorrosion compound/pigment in the composition is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, a skilled artisan would have found it obvious to include an appropriately effective amount of phosphoric acid as an anticorrosion compound, including in amounts within the scope of the claimed invention so as to provide for the desired level of improvement, absent evidence of criticality for the claimed ranges.
Claims 1, 3, 4, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Gros et al. (US 2008/0305274 A1, of record), in view of Spyrou et al. (US 2010/0056662 A1) alone, or alternatively, further in view of Treiber et al. (US 2005/0209425 A1) (references of record).
The discussion on Gros from paragraph 4 above is incorporated herein by reference. It is noted that Gros teaches additives, such as phosphoric acid acrylates, for curable coatings to improve contact with a metal [0018].
Gros is silent on a composition comprising (a) phosphoric acid or phosphoric acid modified monomer/oligomer and (b) an inert polyurethane, in addition to other components as in the claimed invention.
As stated in paragraph 6 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding (a), in a related field of endeavor, the secondary reference to Spyrou is directed to radiation-curable coating formulations for metallic substrates, comprising 0.1 to 10 wt.% of adhesion promoters generally composed of phosphoric acid or their reaction products (e.g., esters) with functionalized acrylates, wherein the free phosphoric acid groups are responsible for the direct adhesion to the metal. Disclosed adhesion promoters include Ebercryl 170, SIPOMER® PAM-100 etc. (Ab., [0036]-[0037], ref. claims 1, 13). It is noted that SIPOMER® PAM-100 corresponds to phosphate esters of polyethylene glycol monomethacrylate, and per instant disclosure [0054], Ebecryl 170 is a phosphoric acid-modified acrylic oligomer. Thus, disclosed adhesion promoters in Spyrou include phosphoric acid and phosphoric acid-modified oligomers.
Regarding (b), the discussions on Gros and Treiber regarding polyurethane dispersion from paragraphs 7 and 8 above are incorporated herein by reference.
Given the teaching in Gros on UV curable aqueous anti-corrosive coatings and suitable components therefor and amounts thereof, the teaching therein on phosphoric acid acrylates to improve contact with a metal, and the teaching in Spyrou on phosphoric acid and reaction products thereof with functionalized acrylates as suitable metal adhesion promoters in radiation-curable coatings, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an aqueous curable composition comprising an unsaturated acrylic resin, a urethane acrylic resin and/or a polyester acrylate resin, a polyurethane dispersion, a photoinitiator, and any of phosphoric acid or phosphoric acid-modified monomers/oligomers taught as adhesion promoters, or alternatively, including Treiber’s aqueous polyurethane dispersion in desired amounts for providing the desired level of advantages to cured films, including in amounts as in the claimed invention. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Additionally, the discussion on the preamble from paragraph 10 above is incorporated herein by reference.
Response to Arguments
In view of the amendment dated 4/29/26, the rejections of record are withdrawn and new grounds of rejections are presented herein above, relying on the art of record. Applicant’s arguments and the Declaration dated 4/29/26 have been duly considered.
Regarding the rejections based on Gros alone or in view of Trieber, referring to the Declaration, Applicant is unsure why Examiner relies on arguments regarding rust and corrosion protection as a reason for combining the references, or citing references against the present application as the instant invention is not concerned with rust or corrosion protection and does not refer to rust or corrosion protection anywhere in the specification.
In response, it is noted that the claims of the elected invention are directed to a water-based energy-curable primer composition. The rejection relies on Gros alone, or as a primary reference, for its teaching on an aqueous energy-curable composition and suitable components therefor, i.e., water, ethylenically unsaturated oligomers, a photoinitiator, a polyurethane dispersion, and additives, such as phosphoric acid acrylates for improving contact with a metal and aluminum phosphate as a corrosion protection additive (Ab., [0024]-[0027]). Although Gros’ compositions are intended for metals to provide for anti-corrosive coatings, nevertheless, they are drawn to coating compositions. For reasons stated in the rejections of record and herein above, Gros’ compositions may include components that overlap in scope with components (a)-(d) of claim 1. Incorporating the discussion from paragraph 10 above on “primer composition” recited in the preamble of claim 1, Gros’ compositions of overlapping scope are not seen to be patentably distinct from those of claim 1.
Applicant argues that the allegation that Gros teaches inert polyurethane resins is Examiner’s own conjecture, with no teaching in Gros to suggest the inclusion of inert polyurethane resins. Additionally, referring to the recitation “unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersion” in Gros, Applicant notes that it should be interpreted in a grammatically correct matter to infer that the terms “unsaturated” and possibly “acrylic” apply to both, i.e., to the aliphatic urethane acrylic prepolymer and the polyurethane dispersion. Given that no comma is present after “prepolymers” or before the “or” in the recitation, Applicant asserts that the correct interpretation is that when referring to the prepolymer Gros is referring to the solid; and when referring to polyurethane dispersion, Gros is referring to the solid polymer dispersed in a medium of another substance, such as water or a solvent.
Applicant further argues that one of ordinary skill in the art would likely be reluctant to include inert polymers in UV curable compositions because the presence of inert polymers often introduces, rather solves, challenges related to UV curable compositions, for example, they may reduce crosslinking density, curing speed, adhesion, and mechanical properties, as well as detrimental surface effects that affect desired properties such as gloss, and that Examiner’s considering the term “inert” is by impermissible hindsight, using Applicant’s own disclosure
Applicant’s arguments are not deemed persuasive. In the rejections of record, the recitation “unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersion” in Gros is interpreted to mean - either unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersion, i.e., as two separate categories of materials. The coordinating conjunction ”or” in the recitation suggests alternative categories without implying one long combined description where all modifiers apply to both because a skilled artisan would reasonably associate the terms “unsaturated” and “acrylic” with urethane acrylic polymers, i.e., prepolymers, and not the polyurethane dispersions.
Even so, and more importantly, claims are given their broadest reasonable interpretation consistent with the specification. See MPEP 2111. To that end, according to paragraphs [0055] and [0056] of the instant disclosure, the inert polyurethane resins have no photocurable acrylic groups, and in some embodiments, the polyurethanes have functional groups, including, but not limited to, hydroxyl, carboxyl, substituted amine and the like. As for the negative effects listed when inert polymers are included in UV curable compositions, it is noted that Applicant’s conclusory statements are not backed by evidentiary data. Thus, given that there is no explicit teaching in Gros on terms such as “photocurable” or “acrylic”, or even the term “reactive” as being necessarily associated with the polyurethane resin in the dispersion, Examiner maintains that a skilled artisan would infer Gros’ polyurethane dispersions to read on inert polyurethane dispersions.
As for the arguments on impermissible hindsight, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). MPEP 2145 III. X. A. To that end, Examiner has only used knowledge which was within the level of ordinary skill at the time the claimed invention was made.
Regarding the alternative citation of Treiber in the rejections, Applicant argues that although Treiber does not disclose acrylic or unsaturated groups on the polyurethane polymers, Treiber also does not explicitly teach that the polyurethane resins are inert and arguendo, that even if the polyurethanes of Treiber are inert, Treiber is not properly combined with Gros. Contrasting Gros’ UV curable coating compositions containing unsaturated, photopolymerizable monomers and oligomers, and photoinitiators against Treiber’s thermally curable coatings, Applicant argues that t since the chemistry of the coatings in Gros and Treiber is very different, Trieber is not properly combined with Gros.
In response, as an initial matter, it is noted that Gros and Treiber, both are drawn to coating compositions. Examiner has relied upon Treiber for its teaching on water-based polyurethane dispersions that can be used with other binders for coating metals, for providing excellent abrasion resistance, water resistance and resilience. It is also noted that recognizing that acrylate-based radiation-hardenable films may be too brittle and may be inclined to chip off from the base, Gros teaches that up to 15 wt. % of unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersions, as elasticizing binders, has proved beneficial [0024], and for reasons elaborated in paragraph 31 above, the polyurethane dispersion is interpreted as including an inert polyurethane.
Given the teaching in Treiber on advantages of a water-based polyurethane dispersion for use with other binders in a coating, a skilled artisan would have found it obvious to include Treiber’s water-based polyurethane dispersion in a suitable amount for providing the desired level of advantages. For instance, given the teaching that the disclosed water-based polyurethane provides for resilience (i.e., capable of elastic deformation), and given that Gros prescribes up to 15 wt.% polyurethane dispersion as an elasticizing binder, a skilled artisan would have found it obvious to include Treiber’s water-based polyurethane dispersion in such amounts to provide for the resilience in Gros’ formulations. Therefore, Examiner maintains that Gros and Treiber references are combinable despite their chemistries being different, absent objective evidence to the contrary.
Regarding rejections based on Gros and Sanduja alone, or further in view of Treiber, incorporating previous arguments on Gros and Treiber, Applicant argues that Sanduja is not properly combined with Gros and/orTreiber, that there can be no such thing as a “teaching” reference and that the compositions of Sanduja’s graft coatings are neither cured by exposure to UV light or dried with heat, but are catalytically cured, that the coating compositions of Sanduja are not chemically equivalent with the coating compositions of Gros and Treiber and combining Gros and Sanduja are impermissible.
In response, in addition to the responses above on Gros’ and Treiber’s polyurethane dispersions, it is noted that Sanduja is drawn to coatings for metals for protecting from rust and corrosion. Sanduja teaches aluminum phosphate and phosphoric acid as suitable anticorrosion compounds/pigments known in the art, i.e., equivalence thereof [0042]. Thus, given that Gros teaches aluminum phosphate as providing corrosion protection, and given that Sanduja teaches aluminum phosphate and phosphoric acid as equally suitable anti-corrosion compounds for metal coatings, it would have been within the level of ordinary skill skilled artisan would have found it obvious to utilize phosphoric acid to provide for anticorrosion despite the cure chemistries being different, absent objective evidence that such a substitution would render Gros inoperable.
Additionally, in the Declaration addresses the differences in Gros’ and Sanduja’s cure chemistries, the incompatibilities between ingredients of catalyst curable inks and the UV-curable inks or coatings, possible trigger of unintended chemical reactions during storage/premature crosslinking, and potential alteration of surface tension/ crosslink density of UV coating coatings.
In response, the statements in the Declaration are not backed by evidentiary data in support of the incompatibilities, possible triggers and potential alterations. See MPEP 716.01(C) I. and II.
Regarding rejections based on Gros and Spyrou alone, or further in view of Treiber, incorporating previous arguments on Gros and Treiber, Applicant argues that nothing in Gros, Treiber and Spyrou suggests inclusion of inert polyurethane resins.
In response, in addition to the responses above on Gros’ and Treiber’s polyurethane dispersions, Spryou is relied upon for its teaching on phosphoric acid or their reaction products (e.g., esters) with functionalized acrylates as adhesion promoters in radiation-curable coating formulations for metallic substrates. Given that Gros is open to including phosphoric acid acrylates for improving contact with the metal, and given that Spyrou teaches phosphoric acid or their reaction products (e.g., esters) with functionalized acrylates as metal adhesion promoters, a skilled artisan would have found it obvious to utilize phosphoric acid or their reaction products (e.g., esters) with functionalized acrylates in Gros’ compositions. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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