DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/25 has been entered.
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 Per amendment dated 9/12/25, claims 1-10 are currently pending in the application, with claims 5-8 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 Objection
Claim 1 is objected to because of the following informality:
Amended claim 1 recites the limitation “the polyurethane resin”. Although the recitation does not render the claim indefinite under 112(b) because the presence of a polyurethane dispersion is implied in a polyurethane resin, Applicant is advised to amend the claim so as to provide for proper antecedent basis for the limitation. Component (b) in claim 1 may be amended to recite “3 wt.% to 12 wt.% of one or more water-based polyurethane dispersion containing an inert polyurethane resin”, as supported by the instant disclosure [0055].
Appropriate correction and/or clarification is required.
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.
Claims 1, 2, 4 and 10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “(d) phosphoric acid”. It is noted that phosphoric acid has the chemical formula H3PO4. However, according to the instant disclosure, phosphoric acid may be added directly, or as phosphoric acid monomers or oligomers [0016]-[0017]. Additionally, disclosed genus of phosphoric acid modified oligomers in the disclosure include (meth)acrylatephosphites, (meth)acrylatealkylphosphonic acids [0052]-[0054], i.e., derived from phosphorous acid (H3PO3) and phosphinic acid (H3PO2), respectively, that is, (meth)acrylatephosphites, (meth)acrylatealkylphosphonic acids are not encompassed by phosphoric acid monomers/oligomers. Thus, claim 1 is indefinite because the scope of “(d) phosphoric acid” in the claim lacks clarity in light of the disclosure.
For the purpose of examination, in view of the support in [0016]-[0017], [0052]-[0054] of the disclosure, component “(d) phosphoric acid” in claim 1 is interpreted as being selected from phosphoric acid (as H3PO4, being added directly), phosphoric acid modified monomers or oligomers, encompassing monomers and oligomers derived from phosphoric acid (i.e., H3PO4), (meth)acrylatephosphites and (meth)acrylatealkylphosphonic acids. Applicant is advised to amend component (d) in claim 1 (and dependent claims thereof for consistency), as interpreted above (or as deemed appropriate and supported by the disclosure), in order to improve clarity.
According to claim 2, phosphoric acid is added directly or is introduced in the form of a phosphoric acid modified oligomer. In the former embodiment, phosphoric acid is interpreted as H3PO4, being added directly, as interpreted in claim 1. Additionally, according to the instant disclosure [0054], suitable commercially available phosphoric acid-modified oligomers include X 744-0000 HEMA Phosphate (2-hydroxyethylmethacrylate acid phosphate, from Esstech) and JPA-514 (2-hydroxyethyl methacrylate acid phosphate, from Kowa American Corporation). It is noted that X 744-0000 HEMA has the following structure:
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i.e., it is a phosphoric acid-modified monomer and not an oligomer. Therefore, claim 2 is indefinite because the scope of “phosphoric acid introduced in the form of a phosphoric acid modified acrylic oligomer” in the claim lacks clarity. Claims 4 and 10 depend on rejected claim 2 and are therefore, subsumed by this rejection.
For the purpose of examination, in view of the disclosure and the interpretation above of component (d) in claim 1, Examiner interprets the wherein clause in claim 2 as limiting component (d) to “phosphoric acid (H3PO4), a phosphoric acid-modified monomer or a phosphoric acid-modified oligomer”.
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 13. 2008/0305274 A1), alone, or further in view of Treiber et al. (US 2005/0209425 A1).
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).
Gros further teaches phosphoric acid acrylates 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, an elasticizing binder, a photoinitiator and water, i.e., are aqueous compositions.
Gros is silent on a composition comprising (a) a phosphoric acid, and (b) an inert polyurethane, in addition to other components as claimed, in one single embodiment as in the claimed invention.
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.
Regarding (a), it is noted that according to some embodiments in the instant disclosure, phosphoric acid is added to the composition in the form of phosphoric acid-modified monomer/oligomer, such as [0017], [0052]-[0053]. Thus, disclosed phosphoric acid acrylates in Gros [0018] read on phosphoric acid-modified monomer/oligomer (d).
Regarding (b), given the alternative recitation “unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersions” in Gros [0024] for the elasticizing binder, and given that there is no explicit teaching or suggestion therein that the polyurethane in the dispersion has any photocurable acrylic group or that it is a prepolymer, the polyurethane in the disclosed dispersion is interpreted as containing an inert polyurethane (reads on (b)).
Regarding (b), 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] do not include photocurable acrylic or unsaturated groups, and encompass inert polyurethanes as claimed (read on (b)).
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., ethylencically unsaturated oligomers), a polyurethane dispersion containing an inert polyurethane resin, a photoinitiator, and phosphoric acid acrylates as adhesion promoters, or alternatively, including Treiber’s aqueous polyurethane dispersion in an amount suitable for providing resin all 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).
Regarding claims 1 and 2, the discussion on Gros from paragraph 8 above is incorporated herein by reference.
Gros is silent on a composition comprising (a) phosphoric acid, and (b) an inert polyurethane, in addition to other components as in the claimed invention.
As stated in paragraph 10 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), referring to the discussion and interpretation in paragraph 5 above, phosphoric acid (d) of claim 1 herein is interpreted as H3PO4 that is added directly to the composition.
In a related field of endeavor, the secondary reference to Sanduja is directed to protective coatings for metals having long term 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., H3PO4, i.e., equivalence thereof (reads on (d)) [0042].
Regarding (b), the discussions on Gros and Treiber regarding polyurethane dispersion from paragraphs 12 and 13 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 on aluminum phosphate for corrosion protection, and the teaching in Sanduja on aluminum phosphate and phosphoric acid as equally suitable anticorrosion compounds and pigments in 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/polyester acrylate resin (i.e., ethylenically unsaturated monomers), a polyurethane dispersion comprising an inert polyurethane, a photoinitiator, and phosphoric acid (H3PO4, as a substitute for Gros’ aluminum phosphate), or alternatively, including Treiber’s aqueous polyurethane dispersion as the polyurethane dispersion in desired amount to provide for the desired level of disclosed advantages to cured films, including in amounts as claimed. 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 15 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 (i.e., a pigment) as being suitable for providing corrosion protection [0025]-[0026]. Additionally, Sanduja teaches aluminum phosphate and phosphoric acid as equally suitable anticorrosion compounds/pigments in an amount of0.01% 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 a 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 1-4, 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).
The discussion on Gros from paragraph 8 above is incorporated herein by reference. It is noted that Gros teaches that the curable coating may include additives, such as phosphoric acid acrylates to improve contact with a metal [0018].
Gros is silent on a composition comprising (a) phosphoric acid, and (b) an inert polyurethane, in addition to other components as in the claimed invention.
As stated in paragraph 10 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), referring to the discussion and interpretation in paragraph 5 above, d. in claim 1 herein is interpreted as H3PO4 (added directly), or in the form of phosphoric acid monomers or oligomers.
In a related field of endeavor, the secondary reference to Spyrou is directed to radiation-curable formulations for metallic substrates, comprising 0.1 to 10 wt.% of adhesion promoters generally composed of phosphoric acid or phosphonic 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 (i.e., H3PO3) and phosphoric acid-modified monomers/oligomers.
Regarding (b), the discussions on Gros and Treiber regarding polyurethane dispersion from paragraphs 12 and 13 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 ester resin/urethane acrylic resin/polyester acrylate resin, a polyurethane dispersion comprising an inert polyurethane, a photoinitiator, and any of phosphoric acid (H3PO4) or phosphoric acid-modified monomers/oligomers taught as adhesion promoters, or alternatively, including Treiber’s aqueous polyurethane dispersion in desired amounts to provide for the desired level of disclosed advantages to cured films, including in amounts as claimed. 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 15 above is incorporated herein by reference.
Response to Arguments
In view of the amendment dated 9/12/25, all rejections of record are withdrawn. Applicant’s arguments dated 9/12/25 have been duly considered. Arguments pertinent to the rejections presented herein above are addressed below.
Applicant argues that (a) claim 1 is amended to recite “wherein the polyurethane is an inert polyurethane resin”, and that none of the reference previously relied upon in Gros-Sakatani/Allard-Sanduja combination discloses the same, (b) Gros does not disclose phosphoric acid as recited in claim 1, and (c) Sanduja discloses phosphoric acid but is not properly combined with Gros (and/or Sakatani and/or Allard), that the compositions of Gros (or Sakatani/Allard) and are not chemically equivalent with the compositions of Sanduja, that Sanduja provides compositions and methods for graft modifying or coating the surfaces of metals with peroxides as catalysts, i.e., chemically activated curing as opposed to Gros’ (or Sakatani/Allard’s) coatings that are UV-energy curable.
As an initial matter, arguments on Allard and Sakatani are moot in view of the new grounds of rejections presented herein above.
In response to argument (a), it is noted that according to the instant disclosure [0055]-[0056], inert polyurethane resins have no photocurable acrylic groups, with some embodiments including functional groups, hydroxyl carboxyl, substituted amine etc. Regarding the elasticizing binder, Gros teaches “unsaturated aliphatic urethane acrylic prepolymers or polyurethane dispersions has proved beneficial” [0024]. Thus, given the alternative recitation in Gros for the elasticizing binder, and given that there is no explicit teaching or suggestion therein that the polyurethane in the dispersion has any photocurable acrylic/polymerizable group or that it is a prepolymer, i.e., capable of polymerizing further, a skilled artisan would reasonably interpret the polyurethane in the dispersion as including an inert polyurethane.
Regarding argument (b), it is noted that according to the instant disclosure [0052]-[0054], phosphoric acid can be introduced by using phosphoric acid modified oligomers or monomers, such as phosphoric acid 2-hydroxyethyl methacrylate ester, (meth)acrylatephosphites and (meth)acrylatealkylphosphonic acids, i.e., derived from phosphinic acid and phosphorous acid. Thus, disclosed phosphoric acid acrylates, i.e., phosphoric acid-modified monomers/oligomers for improving contact with the metal [0018] fall within the scope of (d) in claim 1.
Regarding argument (c), Applicant’s arguments on Sandujas’ graft coatings wherein said polymer is formed by a different mechanism in contrast to Gros’ UV curable coatings are not deemed persuasive. Sanduja is relied upon as a teaching reference, for its teaching that phosphoric acid and aluminum phosphate are equally capable of providing for long term protection from rust and corrosion in metal coating compositions. Thus, given that Gros is open to use of aluminum phosphate as a corrosion protection additive in coatings for metals, and given that Sanduja teaches phosphoric acid and aluminum phosphate as being equally suitable for rust and corrosion protection, i.e., equivalence thereof, it would have been obvious to a skilled artisan to substitute aluminum phosphate with phosphoric acid, so to provide for corrosion resistance in metal coatings, based on their art recognized equivalence.
Conclusion
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
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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