DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election without traverse of Group I (claims 1-3, 5-13, 15-18, and 24-26; “a cationic electrodepositable coating composition”, “a substrate that is coated” and “a coating”) in the reply filed on 07/06/2026 is acknowledged.
3. Claim 23 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 07/06/2026.
Response to Claim Amendment filed 03/04/2025
4. Claim 1 was amended to recite “the dispersing agent of the phyllosilicate pigment-dispersing agent complex comprises a dispersing acid” which is supported at paragraph [0045] of applicants’ published application, i.e., US PG PUB 2025/0059386.
Claim 15 was also amended to include “blocked isocyanate” which is supported at paragraphs [0026]-[0028] of applicants’ published application, i.e., US PG PUB 2025/0059386.
Moreover, new claim 26 was added and is supported at paragraph [0038] of applicants’ published application, i.e., US PG PUB 2025/0059386.
Additionally, claims 8 and 10 were also amended. However, the amendment to claims 8 and 10 introduces new matter in violation of 35 USC 112(a) for the reasons set forth below.
Claim Objections
5. Claim 25 is objected to because of the following informalities:
As to Claim 25: The applicants are advised to replace the claimed phrase “wherein the coating comprises an at least partially cured cationic electrodepositable binder and the phyllosilicate pigment-dispersing agent complex” with the new phrase “wherein the cationic electrodepositable binder is in an at least partially cured state”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claims 8 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention..
Newly amended claims 8 and 10 recite “wherein the ratio of the weight of phyllosilicate pigment to moles of dispersing acid is 0.25 to 25 g/mmol” and “the dispersing acid is present in an amount of 0.1% to 0.10% by weight”, respectively (Emphasis added). These new limitations fail to satisfy the written description requirement of 35 USC 112(a), since there is no written descriptive support for these phrases in the application as originally filed, see MPEP § 2163. While paragraphs [0049] and [0051] of applicants’ published application, i.e., US PG PUB 2025/0059386, only show written descriptive support for the ratio of the weight of phyllosilicate pigment to moles of dispersing agent is 0.25 to 25 g/mmol and the dispersing agent is present in amount of 0.1-10% by weight, there is no written descriptive support for the ratio and amount with respect to dispersing acid as recited in newly amended claims 8 and 10 (Emphasis added). The applicants also do not direct the Examiner to any original disclosure which describes such new limitations. Accordingly, it is deemed that these new limitations introduce new matter in violation of 35 USC 112(a).
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.
7. Claim 18 is 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.
As to Claim 18: It is dependent on itself, and thus, it is not clear what the limitations recited in claim 18 are referring to.
It also recites a term of preference (“such as”), followed by narrower ranges and/or limitations. By virtue of using this term, this claim raises indefiniteness as to whether the scope of this claim is properly limited to the narrower ranges and/or limitations or the broader ranges and/or limitations. It is not clear if this claim requires the limitations following the term “such as”. See MPEP section 2173.05 (C) (“A broad range or limitation together with a narrow range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”).
Accordingly, the scope of this claim is deemed indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
8. Claims 1-3, 5-13, 15-18, and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 15-17, and 21-22 of U.S. Patent No. 12,157,8321 (hereinafter referred to as “the patent”).
The claims of the patent and the present application are directed to cationic electrodepositable coating compositions comprising a cationic electrodepositable binder and a phyllosilicate pigment-dispersing agent complex. The claims of the patent and the present application also recite that phyllosilicate pigment comprises clay mineral such as kaolin clay, the pigment-to-binder (P:B) ratio of the phyllosilicate pigment to the cationic electrodepositable binder is 0.2:1 to 2.0:1, the cationic electrodepositable binder comprises a cationic salt group-containing, film forming polymer comprising an active hydrogen functional group and an active hydrogen-containing, cationic salt group-containing film forming polymer, and the binder further comprises a curing agent comprising a block polyisocyanate. The claims of the patent and the present application further recite that the composition further comprises an aqueous medium comprising water and optionally one or more organic solvents, wherein the organic solvent has the structure:
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wherein R1 and R2 are each hydrogen or a methyl group, R3 is H or a C1-C4 alkyl group, and n is an integer from 1-50. Moreover, the claims of the patent and the present application recite a substrate that is coated with a coating deposited from the coating composition described above, and a coating formed by depositing a coating from the composition described above onto a substrate, wherein the coating comprises an at least partially cured cationic electrodepositable binder and the phyllosilicate pigment-dispersing agent complex. Additionally, the claims of the patent and the present application recite that the cationic salt group-containing, film-forming polymer is present in an amount of 40-90% by weight and the curing agent is present in an amount of 10-60% by weight.
However, claim 1 of the patent does not specify that its dispersing agent comprises a dispersing acid as required by present claim 1. Claim 1 of the patent also does not specifically mention a dispersing acid comprising an oxyacid of phosphorus, a phosphoric acid, a carboxylic acid, an oxyacid or sulfur, or a combination thereof, comprising a first acidic proton having a particular pKa, and its particular amount and ratio recited in present claims 5-8 and 10 of the present application.
Nevertheless, dependent claims 4-6 and 9 of patent recite that using a dispersing agent comprising a dispersing acid comprises an oxyacid of phosphorus, a phosphoric acid, a carboxylic acid, an oxyacid or sulfur, or a combination thereof with a first acidic proton having a pKa of 1.1-4.6 in an amount of 0.1-10% by weight with a ratio of 0.25 to 25 g/mmol with respect to the phyllosilicate pigment for the purposes of preparing a cationic electrodepositable coating composition suitable for coated substrates. Thus, it would have been obvious to one of ordinary skill in the art to employ the presently claimed dispersing agent comprising a dispersing acid selected from an oxyacid of phosphorus, a phosphoric acid, a carboxylic acid, an oxyacid or sulfur, or a combination thereof with a first acidic proton having a pKa of 1.1-4.6 in an amount of 0.1-10% by weight with a ratio of 0.25 to 25 g/mmol with respect to the phyllosilicate pigment, with a reasonable expectation of successfully preparing a cationic electrodepositable coating composition suitable for coated substrates.
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.
9. Claims 1-3, 5, 7, 10-11, 13, 15-18, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Ikenoue et al. (US 2002/0056642)2 in view of SenGupta et al. (US 2008/0242582)3.
As to Claims 1-3, 5, 7, 10-11, 13, 15-18, and 24-26: Ikenoue et al. disclose a cationic electrodeposition coating composition (Paragraph [0018]), comprising a cationic group-containing base resin (Paragraph [0019] and [0021]), wherein the base resin comprises a cationic salt group-containing, film-forming polymer (Paragraphs [0027]), corresponding to the claimed cationic electrodepositable binder, and a pigment paste that may be produced from a mixture of pigment dispersing resin neutralizing agent selected from organic acids such as acetic acid, formic acid and phosphoric acids (corresponding to the claimed dispersing agent comprising a dispersing acid), and pigments that are selected from clay, talc, and mica (which according to present claim 2 corresponds to the claimed phyllosilicate pigment) (Paragraphs [0038], [0056], and [0058]). Ikenoue et al. also disclose the addition of water (corresponding to the claimed aqueous medium), organic solvent, such as alcohol solvents, and a blocked polyisocyanate compound as a crosslinking (curing) agent which reacts with the hydroxyl functional group of the base resin in an amount of 10-60% by weight based on the total solid content (Paragraphs [0019]-[0020], [0036]-[0037], [0066] and [0106]) as required by present claims 13, 15, 17-18, and 25. Ikenoue et al. further disclose that the cationic salt group containing, film-forming polymer as the base resin is present in an amount of 40-90% by weight (Paragraph [0037]), as required by present claim 16, and the acetic acid may be used in an amount of, for example, 2.1 parts by weight (Paragraph [0158]), which is encompassed by the amount of 0.1-10% by weight recited in claim 10. Moreover, Ikenoue et al. disclose a substrate that is coated with the coating derived from the electrodepositable coating composition (Paragraphs [0064]) and a coating formed by applying (depositing) the coating composition onto a substrate, wherein the coating comprises at least partially cured base resin (binder) (Paragraphs [0009], [0014] and [0078]) as required by claims 24 and 25.
However, Ikenoue et al. do not specify their phyllosilicate pigment-dispersing agent as having a complex as required by claim 1 and their dependent claims. They also do not specify the clay pigment as including smectite clay as required by claim 3.
Nevertheless, SenGupta et al. disclose the use of smectite clay-dispersing agent, wherein a portion of the clay surface bears an anionic charge (corresponding to the claimed complex) for the purposes of obtaining advantageous properties including high deposition onto substrates (Paragraphs [0004], [0007] and [0025]). Thus, it would have been obvious to one of ordinary skill in the art to employ the smectite clay-dispersing agent complex having an anionic charge taught by SenGupta et al. in the composition of Ikenoue et al., with a reasonable expectation of successfully obtaining desired properties including high deposition onto substrates.
10. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ikenoue et al. (US 2002/0056642) in view of SenGupta et al. (US 2008/0242582) as applied to claims 1-3, 5, 7, 10-11, 13, 15-18, and 24-26 above, and further in view of Hsu et al. (US 2007/0170401)4.
The disclosures with respect to Ikenoue et al. and SenGupta et al. in paragraph 9 are incorporated here by reference.
They do not specifically mention using a dispersing acid comprising a first acidic proton having a particular pKa as required by claim 10.
However, Hsu et al. disclose using phosphoric acid having an acidic proton with a pKa of less than 3 (which overlaps with the claimed pKa of 1.1-4.6) in a coating composition for coating substrates (Paragraphs [0102] and [0165]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use add the phosphoric acid (dispersing acid) having an acidic proton with the claimed pKa taught by Hsu et al. in the composition suggested by Ikenoue et al. and SenGupta et al., with a reasonable expectation of successfully coating substrates.
11. Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ikenoue et al. (US 2002/0056642) in view of SenGupta et al. (US 2008/0242582) as applied to claims 1-3, 5, 7, 10-11, 13, 15-18, and 24-26 above, and further in view of WO 02/028495 (hereinafter referred to as “WO ‘849”).
The disclosures with respect to Ikenoue et al. and SenGupta et al. in paragraph 9 are incorporated here by reference.
However, they do not specify their base resin as including cationic salt group-containing film-forming polymer comprising active hydrogen functional groups required by claim 12.
Nevertheless, WO ‘849 discloses the use of a cationic salt group containing film-forming polymer comprising active hydrogen functional groups (Page 7, line 4-Page 9, line 30 and Page 16, lines 1-15), for the purposes of preparing desired electrodepositable composition for coating substrates (Page 7, lines 4-20).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the claimed cationic salt-group containing film-forming polymer comprising active hydrogen functional groups taught by WO ‘849 in the electrodepositable composition suggested by Ikenoue et al. and SenGupta et al., with a reasonable expectation of successfully coating substrates.
Correspondence
12. On this record, it is noted that there are no prior art rejections of present claim 8 at this time.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 11/03/2025.
2 Cited in the IDS submitted by applicants on 03/05/2025.
3 Cited in the IDS submitted by applicants on 03/05/2025.
4 Cited in the IDS submitted by applicants on 03/05/2025.
5 Cited in the IDS submitted by applicants on 03/05/2025.
Prosecution Insights