DETAILED ACTION
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 .
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 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.
Application Status
This is a first action on the merits. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 29 May 2025, 28 October 2025, 17 March 2026, 06 April 2026, and 13 August 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
US Patent Citation #3 (U.S. Pat. 9,984,157 to Benini) in the IDS filed 29 May 2025 is directed to an unrelated technology (relationship detection within biometric match results candidates) and appears to be included in error. The reference has been crossed off the IDS. Applicant is invited to submit an IDS with the correct intended reference. Alternately, if the Benini reference is indeed intended to be included on the IDS, applicant is invited to explain its relevance to a 2K water borne coating composition.
Drawings
The drawings received on 23 January 2025 are acceptable.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3-7 and 18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 19/364,096. The claims filed on 21 October 2025 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘096 application also recites a two-part waterborne coating composition comprising a binder part that includes a water-dilutable, hydroxyl-functional (meth)acrylate copolymer and a crosslinker part comprising a polyisocyanate compound having pendant -NCO groups. The molar ratio of active hydrogen groups to -NCO groups is from 1:5 to 5:1. Claim 7 of the ‘096 application further recites that the binder part includes:
From 20-60 wt. % of a hydroxyl functional adduct of a monoepoxyester and an unsaturated carboxylic acid;
10-30 wt. % of a hydroxyl functional unsaturated monomer different from (i);
2-6 wt. % of an unsaturated acid functional monomer;
20-60 wt. % of a (meth)acrylate monomer represented by Formula MA which has the same definition as in the present claim;
From 0-15 wt. % of at least one vinyl aromatic monomer, and
From 0-20 wt. % of at least one polymerizable unsaturated monomer different from (i)-(v).
Regarding claim 3, the definition of monomer MA in claim 7 overlaps the claimed component.
Regarding claim 4, the definition of monomer MA in claim 7 includes monomers which meet the claimed limitation. For example, cyclohexyl methacrylate reads on Formula MA when Ga is methyl and Ra is C6 cycloalkyl. This is one of the monomers specified in claim 5 and thus meets the claimed glass transition temperature limitation.
Regarding claim 5, the definition of monomer MA in claim 7 includes monomers which meet the claimed components. For example, cyclohexyl methacrylate reads on Formula MA when Ga is methyl and Ra is C6 cycloalkyl.
Regarding claims 6-7, claim 7 recites that component (v) is present it the amount of 0-15 wt. % which overlaps the claimed ranges.
Regarding claim 18, claim 20 of the ‘096 application recites a method which includes curing the waterborne coating composition.
Claims 1-15 and 18-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 19/035,392. The claims filed on 23 January 2025 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘392 application also recites a two-part waterborne coating composition comprising water, binder part that includes (a1) a hydroxyl-functional (meth)acrylate copolymer and (b) a crosslinker part comprising a polyisocyanate compound having pendant -NCO groups. The molar ratio of active hydrogen groups to -NCO groups is from 1:5 to 5:1. Claims 4 and 6 of the ‘392 application further recites that the binder part includes:
From 10-80 wt. % of a hydroxyl functional adduct of a monoepoxyester and an unsaturated carboxylic acid; (see claim 4)
0-40 wt. % of a hydroxyl functional unsaturated monomer different from (i); (see claim 4)
1-8 wt. % of an unsaturated acid functional monomer; (see claim 4)
20-60 wt. % of a (meth)acrylate monomer represented by Formula MA which has the same definition as in the present claim; (see claim 6)
From 0-15 wt. % of at least one vinyl aromatic monomer, (see claim 6) and
From 0-25 wt. % of at least one polymerizable unsaturated monomer different from (i)-(v). (see claim 6).
Regarding claim 2, claim 3 of the ‘392 application recites this limitation.
Regarding claim 3, the definition of monomer MA in claim 6 overlaps the claimed component.
Regarding claim 4, claim 7 of the ‘392 application recites this limitation.
Regarding claim 5, claim 8 of the ‘392 application recites this limitation.
Regarding claims 6-7, claim 6 recites that component (v) is present it the amount of 0-15 wt. % which overlaps the claimed ranges.
Regarding claim 8, claim 9 of the ‘392 application recites this limitation.
Regarding claim 9, claim 10 of the ‘392 application recites this limitation.
Regarding claim 10, claim 11 of the ‘392 application recites this limitation.
Regarding claim 11, claim 12 of the ‘392 application recites this limitation.
Regarding claim 12, claim 13 of the ‘392 application recites this limitation.
Regarding claim 13, claim 1 of the ‘392 application recites component (a2) which is at least one non-aromatic polyester having active hydrogen groups.
Regarding claim 14, claim 14 of the ‘392 application recites the number average molecular weight, acid valid, calculated hydroxyl value, and calculated hydroxyl functionality parameters which are within the claimed ranges.
Regarding claim 15, claim 17 of the ‘392 application recites this limitation.
Regarding claim 18, claim 18 of the ‘392 application recites this limitation.
Regarding claim 19, claim 19 of the ‘392 application recites this limitation.
Regarding claim 20, claim 20 of the ‘392 application recites this limitation.
Claims 1-15 and 18-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 19/035,386. The claims filed on 23 January 2025 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘386 application also recites a two-part waterborne coating composition comprising water, binder part that includes (a1) a hydroxyl-functional (meth)acrylate copolymer and (b) a crosslinker part comprising a polyisocyanate compound having pendant -NCO groups. The molar ratio of active hydrogen groups to -NCO groups is from 1:5 to 5:1. Claim 1 further recites that the binder part includes:
From 20-60 wt. % of a hydroxyl functional adduct of a monoepoxyester and an unsaturated carboxylic acid;
From 10-30 wt. % of a hydroxyl functional unsaturated monomer different from (i);
2-6 wt. % of an unsaturated acid functional monomer;
20-60 wt. % of a (meth)acrylate monomer represented by Formula MA which has the same definition as in the present claim;
From 0-15 wt. % of at least one vinyl aromatic monomer, and
From 0-20 wt. % of at least one polymerizable unsaturated monomer different from (i)-(v).
Regarding claim 2, claim 3 of the ‘386 application recites this limitation.
Regarding claim 3, the definition of monomer MA in claim 1 overlaps the claimed component.
Regarding claim 4, claim 4 of the ‘386 application recites this limitation.
Regarding claim 5, claim 5 of the ‘386 application recites this limitation.
Regarding claims 6-7, claim 6 recites that component (v) is present it the amount of 4-14 wt. % which overlaps the claimed ranges.
Regarding claim 8, claim 7 of the ‘386 application recites this limitation.
Regarding claim 9, claim 8 of the ‘386 application recites this limitation.
Regarding claim 10, claim 9 of the ‘386 application recites this limitation.
Regarding claim 11, claim 10 of the ‘386 application recites this limitation.
Regarding claim 12, claim 11 of the ‘386 application recites this limitation.
Regarding claim 13, claim 1 of the ‘386 application recites component (a2) which is at least one non-aromatic polyester having active hydrogen groups.
Regarding claim 14, claim 13 of the ‘386 application recites the number average molecular weight, acid valid, calculated hydroxyl value, and calculated hydroxyl functionality parameters which are within the claimed ranges.
Regarding claim 15, claim 16 of the ‘386 application recites this limitation.
Regarding claim 18, claim 18 of the ‘386 application recites this limitation.
Regarding claim 19, claim 19 of the ‘386 application recites this limitation.
Regarding claim 20, claim 20 of the ‘386 application recites this limitation.
Claim Objections
Claims 5 and 9 and 12 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, the last line of the claim has an extra comma in the phrase “…and[[,]] mixtures thereof.”.
Regarding claim 9, the last line of the claim has an extra comma in the phrase “…and[[,]] mixtures thereof.” .
Regarding claim 12, line 5 claim has an extra comma in the phrase “…and[[,]] mixtures thereof,”.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1-9 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. Pub. 2006/0047065).
Regarding claim 1, Becker teaches a two-part aqueous coating composition which includes water, (A) at least one water-dilutable (meth)acrylate copolymer, and (B) at least one polyisocyanate crosslinking agent with free isocyanate groups, see p. 1, [0001] and [0009-0011]. The molar ratio of active hydrogen groups to -NCO groups is from 1:5 to 5:1, see p. 5, [0069]. Becker further teaches at p. 2, [0012-0015] that the (A) component includes:
Preferably from 20-60 wt. % of a hydroxyl functional adduct of a monoepoxyester and an unsaturated acid functional monomer, reading on (i);
Preferably from 10-30 wt. % of a hydroxyl functional unsaturated monomer different from (a), reading on (ii);
Preferably from 2-6 wt. % of an unsaturated acid functional monomer, reading on (iii);
Preferably from 20-50 wt. % of other polymerizable unsaturated monomers.
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, [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, [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).
Regarding claim 2, as Becker contains the same ingredients as claimed as described above, the amount of volatile organic content (VOC) is expected to be at most 420 g/l as claimed.
Regarding claims 3-5, Cyclohexyl methacrylate reads on Formula MA when Ga is methyl and Ra is C6 cycloalkyl. See p. 3, [0036]. This is one of the specified monomers in claim 5, and thus also meets the glass transition temperature limitation of claim 4.
Regarding claims 6-7, Becker teaches using from 10-25 wt. % of vinyl aromatic monomers, which overlaps the claimed amounts. See p. 4, [0047-0049]. 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 claims 8-9, Becker teaches that suitable vinyl aromatic monomers are styrene, vinyl toluene (methyl styrene), and/or tert-butyl styrene, see p. 3, [0040]. These are among the monomers specified in claim 9. Styrene reads on formula VA when Ar is unsubstituted phenyl, n is 0, and R1 and R2 are H.
Regarding claims 18-20, Becker discloses applying the coating composition to a metallic substrate and curing the coating, see p. 5, [0074] and p. 9, [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, see p. 11, [0136]. Such a substrate may be a primed electrocoated steel panel as described at p. 9, [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, [0074].
Claims 2 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. Pub. 2006/0047065) in view of Huybrechts (U.S. Pub. 2012/0237688). The rejection of claim 2 is in alternative to the above rejection of this claim over Becker alone.
Regarding claim 2, Becker is relied upon as described above in regards to claim 1. Becker uses the same components as the claimed two-part water borne coating composition, but does not specify the amount of volatile organic content (VOC).
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, see abstract and p. 1, [0009-0011] and p. 2, [0021] specifying a water-based composition. The amount of volatile organic content (VOC) in the composition is 420 g/l or less, see p.1, [0008] and p. 7, [0107].
The limitation “as measured in accordance with ISO 11890-2: 2006” is a limitation referring to the method of testing the amount of VOC in the composition and does not determine the patentability of the product. The method of testing the product is not germane to the issue of patentability of the product itself. Cf. MPEP § 2113 in regards to products made by different processes in which the product is the same or obvious over the product of the prior art, and MPEP § 2111.02(II) regarding preamble statements reciting the purpose or intended use of a product. Using any accurate method to determine the amount of VOC in the composition can demonstrate the claimed property.
Becker and Huybrechts are analogous because they are similar in composition and function, as they each disclose two-part aqueous coating compositions formed from reacting an hydroxy-functional acrylic copolymer with an isocyanate-containing crosslinking component.
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, see p. 1, [0008].
Regarding claims 13 and 14, Huybrechts discloses that the coating composition further includes a hydroxy-functional polyester resin in component A), see p. 3, [0043]. Such a component has 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. See p. 3, [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, [0116-0117]. This material is non-aromatic and has an acid value of less than 1 mgKOH/g. The hydroxyl functionality of this material is thus in the range of 2-4.
Regarding claim 15, Huybrechts also teaches an acid-functional (meth)acrylic copolymer B in the example at p. 7, [0113] which is soluble in organic solvent. The hydroxy-functional and acid-functional (meth)acrylic copolymers may be used together, see p. 2, [0029] such that the total amount of component A is from 10-80 % by weight solids, preferably 50-70 wt. % solids, based on the total of component A having hydroxyl- and/or acid-functionality and component B having free isocyanate groups, see p. 2, [0031].
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. Pub. 2006/0047065) in view of Haveman (U.S. Pub. 2020/0148892).
Regarding claims 10-12, Becker is relied upon as described above in regards to 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, see p. 1, [0001] and [0003]. The composition includes a surfactant such a non-ionic surfactant, see p. 6, [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. See p. 7, [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 [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. See Haveman at p. 6, [0105].
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (U.S. Pub. 2006/0047065) in view of Kendi (U.S. Pub. 2015/0353771).
Regarding claims 16 and 17, Becker is relied upon as described above in regards to claim 1. Becker does not also specify including a binder component (a4), or (a5) as claimed.
Kendi also describes a two-part aqueous dispersible coating composition, see abstract and p. 1, [0001]. Kendi combines an aliphatic acid-containing anionic polyurethane with an acid-reactive crosslinking agent, see id. Suitable components for preparing a polyester polyol in the composition include 2-ethyl-2-butyl propanediol or 1,4-cyclohexanedimethanol, see p. 3, [0029]. These are water-insoluble or sparingly soluble non-polymeric polyols, one of which is acyclic as in claim 16 and the other of which is cycloaliphatic as in claim 17. The molecular weights of these materials are each less than 300 Daltons.1 Paragraph [00150] of the present disclosure notes that 2-butyl-2-ethyl-1,3-propanediol is an exemplary non-polymeric, acyclic polyol for component (a4).
Becker and Kendi are analogous because they are similar in structure and function, as they each disclose two-part aqueous coating compositions having a hydroxy-functional component and a reactive crosslinking agent component.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include the diol components of Kendi in the aqueous composition of Becker to arrive at the claimed invention, as Kendi teaches that the polyols are used to form a polyurethane component, see p. 2-3, [0022] similar to the polyurethane component used in the aqueous coating composition of Becker.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
1 The molecular weight of 2-ethyl-2-butyl propane diol (C9H20O2) is about 160.2 g/mol, and the molecular weight of cyclohexanediol (C6H10(OH)2) is about 116.2 g/mol.
