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 .
Claim Status
Claims 1-20 are pending.
Election/Restrictions
The examiner thanks applicants for their timely filed response to the requirement for restriction, filed 07/22/2026. However, after further review, the requirement for restriction, has been withdrawn.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 1-8 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (US 2006/0047065 A1; cited on the IDS filed 04/06/2026) in view of Huybrechts (US 2012/0237688 A1; cited on the IDS filed 05/29/2025)
Regarding claim 1 and 13-14, Becker teaches a two-part aqueous coating composition comprising water, (A) hydroxyl-functional (meth)acrylate copolymer(s) and other hydroxy-functional binders, and (B) at least one polyisocyanate crosslinking agent with free isocyanate groups [p. 0009-0011, 0068]. Becker teaches the molar ratio of active hydrogen groups to -NCO groups is from 1:5 to 5:1 [p. 0069]. Becker further teaches [p. 0012-0015] that the (A) hydroxyl-functional (meth)acrylate copolymer component includes:
Preferably from 20-60 wt. % of a hydroxyl functional adduct of a monoepoxyester and an unsaturated acid functional monomer, reading on (i) [p. 0012];
Preferably from 10-30 wt. % of a hydroxyl functional unsaturated monomer different from (a), reading on (ii) [p. 0013];
Preferably from 2-6 wt. % of an unsaturated acid functional monomer, reading on (iii) [p. 0014];
Preferably from 20-50 wt. % of other polymerizable unsaturated monomers [p, 0015].
Becker further teaches that the “other monomers” (d) includes (d1) 10-25 wt. % of at least one ester of (meth)acrylic acid with aliphatic monohydric branched or linear or cyclic alcohols with 1 to 20 carbon atoms, reading on (iv); (d2) 10-25 wt. % of vinylaromatic monomers, reading on (v), and (d3) optionally other monomers different from (d1) and (d2), reading on (vi). See p. 4, [p. 0047-0049]. Suitable such monomers for (d1) include cyclohexyl acrylate, trimethylcyclohexylacrylate, 4-tert-butyl cyclohexylacrylate, isobornylacrylate, and the appropriate methacrylates of these, see p. 3, [p. 0036]. Cyclohexyl acrylate reads on Formula MA when Ga is hydrogen and Ra is C6 cycloalkyl. Thus this reads on component (iv) as claimed.
The amounts of these materials overlap the claimed ranges. Accordingly, it would have been obvious to have selected materials disclosed in Becker within the claimed ranges to arrive at the claimed invention. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Becker teaches, apart from the hydroxy-functional (meth)acrylic copolymers A), the coating compositions according to the invention can also contain other hydroxy-functional binders, wherein examples of other hydroxy-functional binders which can be used are hydroxy-functional polyester [p. 0068]. However, Becker is silent with respect to suitable molecular weights, hydroxyl values, and acid values of these polyesters.
Huybrechts also describes a two-part aqueous coating composition comprising (A) a water-dilutable (meth)acrylate copolymer and (B) at least one polyisocyanate crosslinking agent [p. 0009-0011] [p. 0021] specifying a water-based composition. Huybrechts discloses that the (meth)acrylate resins may advantageously be used in combination with at least one hydroxyl-functional polyester oligomer in order to ensure sufficient water dilutability of A) [p. 0043, 0046]. Huybrechts teaches preferred polyester oligomers have a number average molecular weight of 500 to 10,000 g/mol (preferably 1,100-8,000 g/mol), a hydroxyl number of from 40-400 mgKOH/g and preferably 50-200 mgKOH/g [p. 0043]. An example such material is a reaction product of monopentaerythritol (which has four -OH groups) and methyl hexahydrophthalic anhydride (which has no -OH groups), see p. 8, [p. 0116-0117]. Huybrechts exemplifies non-aromatic hydroxyl-functional polyesters having an acid value of less than 1 mgKOH/g and a hydroxyl functionality of 2-4 [p. 0117] (also see instant claims 13 and 14).
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to selected the polyester binder taught by Huybrechts when preparing the invention of Becker, as Becker teaches hydroxyl component (A) may further comprise polyester binders and Huybrechts teaches a similar coating composition and that (meth)acrylate resins may advantageously be used in combination with at least one hydroxyl-functional polyester in order to ensure sufficient water dilutability of the binder component. Additionally, 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 claim 2; Huybrechts fails to disclose a suitable range for the ratio by weight of solids of the hydroxyl function binders in component A). However, Huybrechts teaches component A) may comprise 10-100% by weight of at least one hydroxyl functional (meth)acrylate copolymer and 0-90% by weight of at least one hydroxyl functional polyester oligomer [p. 0053]. Huybrechts exemplifies a (meth)acrylate copolymer having a solids content of 60% and a polyester having a solids content of 75% [p. 0110, 0113, 0117]. It would have been obvious to one having ordinary skill in the art at the time the invention was filed that the general teachings of Huybrechts embrace the claimed range of (meth)acrylate copolymer solids to polyester solids of 100:1 to 100:35. For instance, considering the solids content of the exemplary embodiments, if component A) of Huybrechts comprised 92 wt. % of the (meth)acrylate copolymer and 8 wt. % of the polyester, the ratio of solids would be approximately 100:11.
Regarding claim 3; Becker uses the same components as the claimed two-part water borne coating composition and teaches that the amount of organic solvents in the composition is kept at a minimum (up to 10% by weight) but does not specify the amount of volatile organic content (VOC) [p. 0003, 0070].
Huybrechts teaches the coating composition may comprise up to 10% by weight of organic solvents, and the amount of volatile organic content (VOC) in the composition is 420 g/l or less [p. 0008, 0082, 0107].
In light of this, a skilled artisan would reasonably predict a coating composition prepared according to the teachings of Becker would have a VOC of 420 g/l or less. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the invention to formulate the composition of Becker to have low VOC to arrive at the claimed invention, as Huybrechts teaches that the low VOC composition has excellent drying performance and sufficient pot life [p. 0008].
Regarding claims 4-5; Becker teaches the use of cyclohexyl methacrylate, which corresponds to Formula MA when Ga is methyl and Ra is C6 cycloalkyl [p. 0036]. Furthermore, Becker teaches the use of isobornylacrylate. Thes monomers are specified in claim 5, and therefore also meet the glass transition temperature limitation of claim 4.
Regarding claims 6-8; Becker teaches using from 10-25 wt. % of vinyl aromatic monomers, which overlaps the claimed amounts [p. 0047-0049]. Becker teaches examples of the vinyl aromatic monomer include, styrene, vinyl toluene and/or tertiary butyl styrene [p. 0040]. Styrene reads on formula VA when Ar is unsubstituted phenyl, n is 0, and R1 and R2 are H. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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 claim 12; Becker teaches the (meth)acrylate copolymer is prepared by a skew feed polymerization process with at least two feed streams and wherein one feed stream comprises [p. 0017-0020]:
60-100% by weight of the reaction product of a monoepoxyester and an unsaturated acid functional monomer a), based on the total amount of component a) in the copolymer,
0-60% by weight of the hydroxy functional unsaturated monomer b), based on the total amount of monomer b) in the copolymer,
0-30% by weight of the unsaturated acid functional monomer c) based on the total amount of monomer c) in the copolymer, and
0-80% by weight of the other polymerisable unsaturated monomers d), based on the total amount of monomers d) in the copolymer.
Regarding claim 15; Huybrechts exemplifies a polyester comprising mono paentaethritol (a2h) and methyl hexahydrophthalic anhydride (a2c), wherein a2h is 100% mono paentaethritol and a2c is 100 methyl hexahydrophthalic anhydride. The ranges exemplified by Huybrechts fall within the claimed range.
Regarding claims 16 and 17; Huybrechts also teaches an acid-functional (meth)acrylic copolymer B having an acid number of 23 [p. 0113]. The (meth)acrylic copolymers having an acid number of 5-60 mg KOH/g binder solids are referred to as organic solvent-based composition binder [p. 0029]. Huybrechts teaches the hydroxy-functional (acid number less than 5) and acid-functional (meth)acrylic copolymers may be used together [p. 0029]. Huybrechts teaches the at least one hydroxyl and optionally acid functional binder A) may have a hydroxyl number of 40-400 mg KOH/g binder solids, preferably of 80-200 mg KOH/g binder solids, and a number average molar mass Mn of 1000-20000 g/mole [p. 0023, 0032, 0038]. Huybrechts teaches component A of the coating composition comprises 10-80 wt. % by weight solids of at least one hydroxyl-functional binder, and the acid functional binder can be present in the coating composition in the range of from 0.05 to 2.5% by weight, preferably in the range of from 0.08.to 2.0% by weight, based upon the solids of binder A) [p. 0076]. Furthermore, Huybrechts teaches that the presence of an acid functional binder in A), drying performance of the coating composition and hardness of the coating could remarkably be improved [p. 0015]
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to include an organic solvent-based acid functional binder at an amount of 0.05 to 2.5% by weight of binder A) in order to improve the drying performance and hardness of the coating composition. Furthermore, a skilled artisan would reasonably predict that the acid functional binder is insoluble in water as it is specified to be organic solvent based, therefore satisfying the solubility parameters of claim 16. The ranges for hydroxyl value, acid value, and molecular weight taught by Huybrechts satisfy the ranges of claim 17, and 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 claims 18-20; Becker discloses applying the coating composition to a metallic substrate and curing the coating, [p. 0074, 0110] in which the topcoat composition is applied to a primed electrocoated steel panel.
Becker gives an example in which the disclosed coating composition is a clearcoat formulation which is applied over a commercial black waterborne basecoat [p. 0136]. Such a substrate may be a primed electrocoated steel panel as described at [p. 0110], and thus a multilayer coating is formed on a metallic substrate in which the multilayer coating includes a primer layer on the substrate, a base coat layer having a black color, and a clear coat layer of the disclosed aqueous coating composition. The coatings are cured as described at p. 5, [p. 0074].
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (US 2006/0047065 A1) in view of Huybrechts (US 2012/0237688 A1), as applied to claims 1-8 and 12-20, and further in view of Haveman (US 2020/0148892 A1).
Becker is relied upon as described above regarding claim 1. Becker does not specify including a component having the formula AM1 as claimed.
Haveman describes a casting resin coating composition which may be an aqueous coating composition [p. 0001] and [p. 0003]. The composition includes a surfactant such a non-ionic surfactant [p. 0105]. Suitable non-ionic surfactants are fatty acid ester alkoxylates, and methyl esters of C12-C18 fatty acids containing an average of 5-12 ethylene oxide (EO) units are particularly preferred [p. 0126-0127]. A methyl ester of C12 fatty acid (also called dodecanoic acid or lauric acid) having 5-12 ethylene oxide units reads on formula AM1 in which R4 is hydrogen, R5 is methyl, A is -C(O)O-, (R6O)[a] is the 5 to 12 ethylene oxide units (thus R6 is an ethyl group which is a C2 alkyl group and a is 5 to 12), and R7 is C12 alkyl. This is also called lauryl ethoxylate [p. 5-12] methacrylate, meeting the limitation of claim 12.
Becker and Haveman are analogous because they are similar in function, as they each disclose aqueous coating compositions.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include a surfactant as described in Haveman in the aqueous composition of Becker to arrive at the claimed invention, as the surfactant ensures that the coating components are emulsified in the aqueous coating composition to allow for reaction [p. 0105].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2017/0088724 A1 discloses a significantly similar aqueous two-part composition and their use in coating compositions, adhesives, inks and varnishes. However, 742 is primarily directed towards plastic substrates.
US 5753756 A discloses a significantly similar coating composition. The coating composition of ‘756 is concerned with VOC of the composition but is not disclosed as water-borne.
US 2011/0151264 A1 discloses a significantly similar aqueous coating composition comprising a binder combination comprising:
A1) 60 to 90 wt. % of at least one water-dilutable (meth)acrylate copolymer comprising
a) 10 to 80 wt. %, preferably 20 to 60 wt. %, of at least one reaction product of a monoepoxyester and an unsaturated acid functional monomer,
b) 0 to 40 wt. %, preferably 10 to 30 wt. %, of at least one hydroxyl functional unsaturated monomer which is different from component a),
c) 1 to 8 wt. %, preferably 2 to 6 wt. %, of an unsaturated acid functional monomer, and
d) 0 to 70 wt. %, preferably 20 to 50 wt. %, of at least one other polymerisable unsaturated monomer, wherein the sum of the wt. % of a), b), c) and d) add up to 100% by weight of A1), and
A2) 10 to 40 wt. % of at least one water-dilutable epoxyester resin,
wherein the binder combination is prepared by mixing together both A1) and A2) after their preparation and jointly neutralizing this mixture by adding the appropriate amount of a base and conversion into an aqueous dispersion, wherein the sum of the wt. % of A1) and A2) add up to 100% by weight of A), and B) at least one isocyanate compound as cross-linking agent, wherein the sum of the wt. % of components A) and B) add up to 100% by weight of A). The aqueous coating composition further comprises B) at least one isocyanate compound as cross-linking agent. [abstract, p. 0007-0014].
The aqueous coating composition according to the invention is particularly useful as top coat for direct coating of metal surfaces, particularly un-treated steel surfaces, providing high corrosion resistance and adhesion on the un-treated metal surface as well as high performance on appearance, e.g., gloss and flow. [p. 0015]
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
