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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/31/2026 has been entered. Claims 1-3 are amended; and claims 1-6 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Moriwaki et al (WO 2021/095202 A1) in view of Craun et al (US 5,260,356).
It is noted that WO 2021/095202 A1 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Moriwaki et al (US 2023/0002530 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, Moriwaki et al disclose a thermosetting resin composition containing a resin component A which includes a structure (a) represented by the general formula:
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wherein n = 0 to 20, R1 is an alkyl group having 50 or less carbon atoms, R3 is hydrogen or alkyl group having 10 or less carbon atoms (i.e., reads on ester group having a structure represented by 0formula 2 (i.e., (a-3)) in present claim 1), and a hydroxy group (i.e., reads on hydroxyl group in present claim 1) and transesterification catalyst (abstract) which reads on the transesterification catalyst in present claim 1. The polymer can be a copolymer using another monomer (paragraph 0123) including epoxy group containing monomers such as glycidyl (meth)acrylate (paragraph 0130) which reads on the epoxy group in present claim 1. The thermosetting composition may be an aqueous thermosetting resin composition or a solvent-based thermosetting composition (paragraph 0251) which reads on solvent-based thermosetting composition in present claim 1. Thermosetting resin is converted into an aqueous form using a water-soluble or water-dispersible component (paragraphs 0254-0255) which reads on aqueous thermosetting resin composition containing water-soluble or water-dispersible component in present claim 1.
Moriwaki et al are silent with respect to the species of transesterification catalyst.
However, Craun et al teach thermosetting coating produced by copolymerizing ethylenic monomers including hydroxyl monomers and carboxyl ester monomers to provide a catalyst activated transesterification cure between hydroxyl groups and carboxyl ester groups. The transesterification catalyst comprises oxirane functionality in combination with certain classes of nucleophilic compounds. The oxirane functionality can be a copolymerized glycidyl monomer (abstract). The excellent ambient cure is obtained in the presence of transesterification catalysts, particularly when a blend of epoxies such as glycidyl (meth)acrylates are used as a cocatalyst with a tertiary amine (col. 3, lines 31-36). Therefore, in light of the teachings in Craun et al in the same field of endeavor and given that Moriwaki et al contemplate inclusion of epoxy group containing monomers such as glycidyl methacrylate in its thermosetting resin, it would have been obvious to one skilled in art prior to the filing of present application to include the tertiary amine, of Craun et al, in the thermosetting composition, of Moriwaki et al, for above mentioned advantages.
Regarding claim 3, polymer can be a copolymer using another monomer (paragraph 0123) such as various carboxyl group containing monomers (paragraph 0130).
Regarding claims 4 and 5, resin having an acid group can be obtained by performing a polymerization reaction using a monomer having functional groups such as carboxylate group. Thereafter, neutralization is performed by adding water and an amine and/or ammonia to convert the resin into an aqueous form (paragraphs 0260-0261).
Regarding claim 6, cured film is obtained by curing the resin composition (paragraph 0026). Cured film is obtained by three-dimensionally crosslinking the thermosetting resin composition (paragraph 0315).
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Moriwaki et al (WO 2021/006290 A1) in view of Craun et al (US 5,260,356).
It is noted that WO 2021/006290 A1 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Moriwaki et al (US 2022/0251274 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, Moriwaki et al disclose a resin composition which has a thermosetting property (i.e., reads on thermosetting resin composition in present claim 1). The curable resin composition comprises resin component (A) containing a (meth)acryloyl group (a), hydroxyl group (b) (i.e., reads on hydroxyl group in present claim 1) and an alkyl ester group (c) (abstract). The curable resin uses as a curing reaction, curing with active energy rays and a transesterification reaction which uses a transesterification catalyst (paragraph 0001) which reads on transesterification catalyst in present claim 1. The compound represented by general formula 7 may be a compound having a functional group represented by general formula 31:
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wherein n = 0 to 20, R1 is an alkyl group having 50 or less carbon atoms and R3 is hydrogen or alkyl group having 10 or less carbon atoms (paragraphs 0149-0152) which reads on ester group having a structure represented by formula 2 (i.e., (a-3)) in present claim 1). Other monomers that can be used in the polymer (paragraph 0210) include epoxy group containing monomers such as glycidyl (meth)acrylate (paragraph 0215) which reads on epoxy group in present claim 1. The thermosetting composition is used as a solvent-based coating material (paragraph 0251) which reads on solvent-based thermosetting composition in present claim 1.
Moriwaki et al are silent with respect to the species of transesterification catalyst.
However, Craun et al teach thermosetting coating produced by copolymerizing ethylenic monomers including hydroxyl monomers and carboxyl ester monomers to provide a catalyst activated transesterification cure between hydroxyl groups and carboxyl ester groups. The transesterification catalyst comprises oxirane functionality in combination with certain classes of nucleophilic compounds. The oxirane functionality can be a copolymerized glycidyl monomer (abstract). The excellent ambient cure is obtained in the presence of transesterification catalysts, particularly when a blend of epoxies such as glycidyl (meth)acrylates are used as a cocatalyst with a tertiary amine (col. 3, lines 31-36). Therefore, in light of the teachings in Craun et al in the same field of endeavor and given that Moriwaki et al contemplate inclusion of epoxy group containing monomers such as glycidyl methacrylate in its thermosetting resin, it would have been obvious to one skilled in art prior to the filing of present application to include the tertiary amine, of Craun et al, in the thermosetting composition, of Moriwaki et al, for above mentioned advantages.
Regarding claim 2, examples of (meth)acryloyl having two functional groups include 1,4-butanediol di(meth)acrylate (paragraph 0053) which reads on resin component further contains an unsaturated functional group in present claim 2.
Regarding claim 3, Other monomers that can be used in the polymer (paragraph 0210) include carboxyl group-containing monomers such as (meth)acrylic acid (paragraph 0215).
Regarding claims 4-5, when a polymer having a structural unit derived from a carboxyl group-containing monomer is used, the polymer can be neutralized to obtain a polymer soluble in water (paragraph 0223).
Regarding claim 6, Moriwaki et al teach a curable resin composition and cured film by curing the resin component with active energy rays and transesterification reaction using a transesterification catalyst (paragraph 0001).
Response to Arguments
The objections, and the rejections under 35 U.S.C. 103 as set forth in paragraphs 5 and 10-11, of Office action mailed 10/31/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 11 below).
Applicant's arguments and Declaration under 37 CFR 1.132, filed 3/31/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) examples presented in the Applicant's specification demonstrate the improvement in curing performance that is achieved by using methoxycarbonyl methyl methacrylate in the claimed compositions. Example 1, which corresponds to the invention of the present application, exhibits superior curing effects compared to the Comparative Examples. Only difference between Example 1 and Comparative Example 1 is the presence or absence of an epoxy component. All other compositional parameters are held constant. A comparison of Comparative Examples 6 and 7 with Examples 9 and 10 in Table 3 demonstrates that incorporating an epoxy component yields favorable curing performance; (B) Neither Craun nor Moriwaki reference teaches or suggests that the curing performance demonstrated in Applicant's Example 1 would be achieved by the Examiner's proposed combinations. Specification data show that the observed curing performance depends on a particular compositional combination, including methoxycarbonyl ethyl methacrylate in combination with epoxy functionality, within solvent-based or aqueous thermosetting resin compositions containing a water-soluble or water-dispersible component; and (C) in Asada Declaration, experiments reproducing Craun's system, and modified versions thereof, demonstrate that substituting ester units characteristic of Moriwaki into a Craun-type curing system does not yield satisfactory curing performance.
With respect to (A) and (B), applicant attention is drawn to comparative examples 4-5 and inventive examples 9-11, wherein the comparative examples which do not include a resin having epoxy group exhibit same properties, except that DMEA is included in the inventive examples. Hence, applicant arguments of unexpected results with respect to inclusion of epoxy resin resulting in superior curing behavior is not convincing.
With respect to (C), the comparison is not with closest prior art of Moriwaki et al. A side-by-side comparison would compare the results of Moriwaki et al without and with epoxy functionality to show the criticality of epoxy group in the resin of thermosetting composition in present invention. Also, note that Moriwaki et al do teach inclusion of epoxy monomers in preparing the resin. Additionally, showing of unexpected results, if any, should be commensurate with scope of present claims
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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