DETAILED ACTION
Summary
This is a non-final rejection for application 19/213,441 filed on 20 May 2025. The preliminary amendment filed on 21 May 2025 is acknowledged.
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 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.
Claim 35 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.
Claim 35 recites that the first coating is obtained from a coating composition including a resin composition. Claim 35 depends upon, and therefore includes, Claim 33. Claim 33 already recites a coating composition including a resin composition as wherein the second coating is obtained from. It is not clear whether the coating and resin composition recited in Claim 35 is the same as the coating and resin composition recited in Claim 33 or if it can be different.
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 21-22, 25, 27-35, 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over WEHNER (US-20180100069-A1).
Regarding Claim 21, WEHNER teaches a coating material based on real Michael addition (RMA) systems ([0001]). WEHNER teaches including at least one CH- acidic compound (MA donor) and one vinylogous carbonyl compound (MA acceptor). WEHNER teaches a method of a cure time of 0.5-12 hours at temperatures between 5-50°C, preferably 0.5-4 hours at 20-35°C ([0076]). This satisfies the requirement that the coating composition cures in about 12 hours or less at ambient temperature. WEHNER teaches that a primer can be used before application ([0073]) and exemplifies its use as a topcoat ([0082], Claim 44). WEHNER teaches the inclusion of corrosion protection agents ([0047]), performs gloss and corrosion resistance test ([0086]-[0088]) and teaches its coatings have a high anti-corrosion effect ([0073]) which satisfies the recitation that its coating composition is corrosion resistant.
WEHNER teaches that its CH acidic (MA donor) component can be malonic acid esters or acetoacetic acid esters of epoxy resins ([0028]) and that its vinylogous carbonyl (MA acceptor) component can be a polyacrylate obtained from the reaction of acrylic acid with epoxy resins ([0029]). WEHNER does not exemplify these choices, but it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of WEHNER to use malonic acid esters or acetoacetic acid esters of epoxy resins as its MA donor component and to use polyacrylates obtained by reaction of acrylic acid with an epoxy resin as its MA acceptor component based on the teachings of its specification. This satisfies the requirement of the MA acceptor and MA donor being part of an epoxy backbone of the resin composition.
Regarding Claim 22, modified WEHNER teaches the invention of Claim 21. WEHNER teaches that its composition contains low proportions of volatile organic substances, for example, solvents ([0077]). WEHNER teaches solid contents that remain after evaporation of 65-95 wt% ([0077]) and exemplifies a composition with only 14.83 wt% solvents (0.15*27+5 butyl acetate + 0.261*3 propanol +2 ethanol +3 MEK)([0082]). Examiner calculates using a density of about 0.8 g/cm3 for the solvents this would require a solids density of less than 4.59 g/cm3 for all of the solids in the exemplary composition of 85.17wt% solids and solids densities of less than 12.5 g/cm3 for compositions that have 95wt% solids in order for the amount of volatile solvents in the composition to be less than 400 g/L. To the extent that WEHNER does not exemplify a VOC content within the recited range, a VOC content within the recited range is an obvious modification of the invention of WEHNER based on the teachings of its specification.
Regarding Claim 25, modified WEHNER teaches the invention of Claim 21 where WEHNER makes obvious the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component.
Regarding Claim 27, modified WEHNER teaches the invention of Claim 21 where WEHNER makes obvious the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component. WEHNER generally teaches that its vinylogous carbonyl compound MA acceptor component is present in an amount of 4-40 wt% of the coating material (Abstract; [0013]) which overlaps with the 2-12.5 wt% that is recited for the epoxy acrylate in the claim. WEHNER exemplifies two non-epoxy acrylates in amounts of 12 wt% and 3 wt% ([0082]), but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of WEHNER and use amounts of epoxy acrylate that are within the 4-40 wt% range taught in its specification that is also within the 2-12.5 wt% recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 28, modified WEHNER teaches the invention of Claim 21. WEHNER teaches that its composition contains a catalyst ([0009]) and exemplifies a catalyst ([0082]).
Regarding Claim 29, modified WEHNER teaches the invention of Claim 28. WEHNER teaches that its catalyst is preferably a latent-basic catalyst ([0014]). WEHNER further teaches its catalyst component can be a quaternary alkyl ammonium carbonate such as tetrabutylammonium methyl carbonate ([0060]). The tetrabutylammonium methyl carbonate catalyst matches Formula (I) of the claim and is listed as an example of this type of catalyst in the specification of the current application (cur spec: [0067]).
Regarding Claims 30, modified WEHNER teaches the invention of Claim 28. WEHNER teaches that its catalyst component can be a quaternary alkyl ammonium carbonate such as tetrabutylammonium methyl carbonate ([0060]). Note that this structure also satisfies Claim 29. WEHNER teaches examples where tetrabutyl ammonium hydroxide is used to create its non-latent catalyst ([0081]). Tetrabutyl ammonium hydroxide is listed in the specification of the current invention as a non-latent catalyst (current spec: [0070]). Any unreacted hydroxide present from this reaction would result in a mixture of latent and non-latent catalysts which would satisfy the requirements of the claim.
Regarding Claim 31, modified WEHNER teaches the invention of Claim 28. WEHNER teaches that its latent catalyst is preferably present in an amount of 0.3-5 wt% (0014]). Using tetrabutylammonium methyl carbonate (MW=317.52) for the calculation, this corresponds to a range of 1000*0.3/317.52/(100-0.3) to 1000*5/317.52/(100-5) which is 0.009-0.17 mmol/g which is the same as 0.009-0.17 meq/g which is within the range recited by the claim.
Also, for consideration of non-latent catalysts, WEHNER teaches an open-time extender containing basic NH-functional compounds such as succinimides and 1,2,4-triazoles ([0045]). The specification of the current invention discloses that basic anions created by the reaction of 1,2,4-triazole with hydroxides is an example of a non-latent catalyst of the X-H type described in the claim (current spec: [0071]). WEHNER teaches the inclusion of hydroxide ([0081]) above. WEHNER teaches that its open-time extender component is present in amounts of 0.1-5 wt% ([0016]). Using 1,2,4-triazole (MW = 69.0 g/mol), the lower bound corresponds to 0.1 g (1 mol/69.0 g)(1000 mmol/mol)/100 g ≈ 0.014 meq/g and the upper bound corresponds to 5 g (1 mol/69.0 g)(1000 mmol/mol)/100 g ≈ 0.72 meq/g. The recited range is 0.001-1 meq/g, so only a small fraction of 1,2,4 triazole would need to react with the other basic catalysts to produce amounts of the basic anion of 1,2,4 triazole that are within the range recited by the claim.
Regarding Claim 32, modified WEHNER teaches the invention of Claim 21. WEHNER further teaches an open-time extender containing basic NH-functional compounds such as succinimides and 1,2,4-triazoles ([0045]). WEHNER teaches this component in an amount preferable between 0.1-5wt% which overlaps the range recited by the claim on both ends. WEHNER exemplifies succinimide in an amount of 1 wt% ([0082]) which is within the range recited by the claim.
WEHNER also teaches several compounds which satisfy the (3) component of the claim including metal silicates such as talc ([0047]) and fillers such as calcium carbonate ([0050]). WEHNER does not characterize these compounds as acid scavengers. Here, the specification of the current invention is used as evidence to disclose the inherent acid scavenging functionality of the talc and calcium carbonate taught by WEHNER (cur spec: [0073]).
Regarding Claim 33, WEHNER teaches a coating material based on real Michael addition (RMA) systems ([0001]) to produce a coating on substrates ([0073]). WEHNER teaches that its substrates may be pre-treated and teaches several specific pre-treatments ([0073]) and exemplifies pre-treated steel plate substrates ([0086]). WEHNER teaches that the substrates may be provided with a primer, for example conventional primers known by those skilled in the art based on epoxy resins or polyurethanes ([0073]). WEHNER does not exemplify the use of a primer as a first coating, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of WEHNER and use a primer as a first coating based on the teachings of the specification.
WEHNER exemplifies its use as a topcoat ([0082], Claim 44). WEHNER teaches the inclusion of corrosion protection agents ([0047]), performs gloss and corrosion resistance test ([0086]-[0088]) and teaches its coatings have a high anti-corrosion effect ([0073]) which satisfies the recitation that its coating composition is corrosion resistant. WEHNER also teaches that the coatings of its invention demonstrated good adhesion to pre-treated substrates suggestion good intercoat treatment between the topcoat and the primer ([0073]). WEHNER teaches including at least one CH- acidic compound (MA donor) and one vinylogous carbonyl compound (MA acceptor). WEHNER teaches a method of a cure time of 0.5-12 hours at temperatures between 5-50°C, preferably 0.5-4 hours at 20-35°C ([0076]). This satisfies the requirement that the coating composition cures in about 12 hours or less at ambient temperature.
WEHNER teaches that its CH acidic (MA donor) component can be malonic acid esters or acetoacetic acid esters of epoxy resins ([0028]) and that its vinylogous carbonyl (MA acceptor) component can be a polyacrylate obtained from the reaction of acrylic acid with epoxy resins ([0029]). WEHNER does not exemplify these choices, but it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of WEHNER to use malonic acid esters or acetoacetic acid esters of epoxy resins as its MA donor component and to use polyacrylates obtained by reaction of acrylic acid with an epoxy resin as its MA acceptor component based on the teachings of its specification. This satisfies the requirement of the MA acceptor and MA donor being part of an epoxy backbone of the resin composition.
Regarding Claim 34, modified WEHNER teaches the invention of Claim 33 where WEHNER teaches a primer coating can be used before application of its composition ([0073]). WEHNER does not specified whether the primer coating is fully dried and cured when its composition is applied, but the Claim allows for both conditions where the primer coating is fully cured or not fully cured.
Regarding Claim 35, modified WEHNER teaches the invention of Claim 33. WEHNER teaches that the substrates may be provided with a primer, for example conventional primers known by those skilled in the art and includes a teaching for primers based on epoxy resins ([0073]). WEHNER also teaches that a primer can be used before application ([0073]) but it is not required, and that its composition demonstrate good adhesion to pre-treated metal substrates ([0073]). The direct application of WEHNER’s coating onto metal substrates satisfies the recitation that the composition is suitable for use as a primer coating composition for application directly to a metal substrate. The remaining limitations on the first coating pertaining to MA acceptor, MA donor, epoxy backbone and cure times and conditions are the same as those recited by the topcoat second coating in Claim 33. Rejection of these limitations is incorporated here by reference. Note that the epoxy backbone of the composition taught by WEHNER used as a topcoat also matches the teaching of epoxy resins in the suitable primers taught by WEHNER. WEHNER also exemplifies applying its composition directly to steel plates that are pre-treated with a silane conversion layer which satisfies the requirement of a first coating that is applied to a pretreated substrate.
For the requirement that the composition of WEHNER is used for both the first coating and the second coating, note that the claim is directed to a coated substrate. The presence of two applied coatings can be interpreted as a product by process limitation, especially when the structural limitations recited for each of the two coatings in this claim are the same. The patentability of a product-by-process claim is determined by the end product. See MPEP 2113. It has not been shown that there is a structural difference between a coated substrate formed from two applied coating that each meet the same recited conditions and a single thick coating. WEHNER makes obvious a composition applied directly to a substrate which satisfies the structural limitations of each coating, which satisfies the claim.
Regarding Claim 38, modified WEHNER teaches the invention of Claim 33 where WEHNER makes obvious the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component.
Regarding Claim 40, modified WEHNER teaches the invention of Claim 38 where WEHNER makes obvious the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component. WEHNER generally teaches that its vinylogous carbonyl compound MA acceptor component is present in an amount of 4-40 wt% of the coating material (Abstract; [0013]) which overlaps with the 2-12.5 wt% that is recited for the epoxy acrylate in the claim. WEHNER exemplifies two non-epoxy acrylates in amounts of 12 wt% and 3 wt% ([0082]), but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of WEHNER and use amounts of epoxy acrylate that are within the 4-40 wt% range taught in its specification that is also within the 2-12.5 wt% recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Claims 23-24, 26, 36-37 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over WEHNER (US-20180100069-A1) in view of ANANTHACHAR (WO-2005037935-A2).
Regarding Claim 23, modified WEHNER teaches the invention of Claim 21 above. WEHNER does not specify that its epoxy MA donors or epoxy MA acceptors are aromatic epoxy resins. ANANTHACHAR, in an invention of a coating formulation containing a Michael addition resin (Abstract), teaches multifunctional acrylate Michael acceptor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates. This compound provides acrylate Michael acceptor groups grafted onto the common aromatic epoxy bisphenol A resin. ANANTHACHAR also teaches that beta-dicarbonyl Michael donor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diacetoacetate (p. 8, first paragraph) as an example of one of these beta-dicarbonyl Michael donor compounds. This compound provides the acetoacetate Michael donor group grafted onto the common aromatic epoxy bisphenol A resin. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of WEHNER based on the teachings of ANANTHACHAR and use either an ethoxylated bisphenol A diglycidyl ether diacrylate as its MA acceptor component or an ethoxylated bisphenol A diacetoacetate as its MA donor component. Either modification would satisfy the requirement that at least a portion of the resin composition has an aromatic epoxy backbone.
Regarding Claim 24, modified WEHNER teaches the invention of Claim 23 where ANANTHACHAR teaches the aromatic epoxy components. ANANTHACHAR teaches ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates MA acceptor compounds. ANANTHACHAR teaches ethoxylated bisphenol A diacetoacetate (p. 8, first paragraph) as an example of one of these beta-dicarbonyl Michael donor compounds. Either one of these compounds would satisfy the requirement that the MA acceptor and/or the MA donor are derived from the recited aromatic compounds which includes bisphenol A.
Regarding Claim 26, modified WEHNER teaches the invention of Claim 25. WEHNER teaches the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component, but WEHNER does not specify that its epoxy MA acceptors is an aromatic epoxy acrylate. ANANTHACHAR, in an invention of a coating formulation containing a Michael addition resin (Abstract), teaches multifunctional acrylate Michael acceptor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates. This compound provides acrylate Michael acceptor groups grafted onto the common aromatic epoxy bisphenol A resin. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of WEHNER based on the teachings of ANANTHACHAR and use either an ethoxylated bisphenol A diglycidyl ether diacrylate as its MA acceptor component.
Regarding Claim 36, modified WEHNER teaches the invention of Claim 33 above. WEHNER does not specify that its epoxy MA donors or epoxy MA acceptors are aromatic epoxy resins. ANANTHACHAR, in an invention of a coating formulation containing a Michael addition resin (Abstract), teaches multifunctional acrylate Michael acceptor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates. This compound provides acrylate Michael acceptor groups grafted onto the common aromatic epoxy bisphenol A resin. ANANTHACHAR also teaches that beta-dicarbonyl Michael donor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diacetoacetate (p. 8, first paragraph) as an example of one of these beta-dicarbonyl Michael donor compounds. This compound provides the acetoacetate Michael donor group grafted onto the common aromatic epoxy bisphenol A resin. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of WEHNER based on the teachings of ANANTHACHAR and use either an ethoxylated bisphenol A diglycidyl ether diacrylate as its MA acceptor component or an ethoxylated bisphenol A diacetoacetate as its MA donor component. Either modification would satisfy the requirement that at least a portion of the resin composition has an aromatic epoxy backbone.
Regarding Claim 37, modified WEHNER teaches the invention of Claim 36 where ANANTHACHAR teaches the aromatic epoxy components. ANANTHACHAR teaches ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates MA acceptor compounds. ANANTHACHAR teaches ethoxylated bisphenol A diacetoacetate (p. 8, first paragraph) as an example of one of these beta-dicarbonyl Michael donor compounds. Either one of these compounds would satisfy the requirement that the MA acceptor and/or the MA donor are derived from the recited aromatic compounds which includes bisphenol A.
Regarding Claim 39, modified WEHNER teaches the invention of Claim 38. WEHNER teaches the inclusion of polyacrylates obtained from the reaction of acrylic acid with epoxy resins ([0029]) as the MA acceptor component, but WEHNER does not specify that its epoxy MA acceptors is an aromatic epoxy acrylate. ANANTHACHAR, in an invention of a coating formulation containing a Michael addition resin (Abstract), teaches multifunctional acrylate Michael acceptor compounds are suitable for its coating formulations (p. 5, second paragraph) and includes ethoxylated bisphenol A diglycidyl ether diacrylate (p. 6, first paragraph) as an example of one of these multifunctional acrylates. This compound provides acrylate Michael acceptor groups grafted onto the common aromatic epoxy bisphenol A resin. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of WEHNER based on the teachings of ANANTHACHAR and use either an ethoxylated bisphenol A diglycidyl ether diacrylate as its MA acceptor component.
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.
Claims 21, 23-26 and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 7, 11, 13-14 and 16 of U.S. Patent No. 12,331,143. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims contain all of the limitations of the instant claims. The mappings between the instant claims and the issued claims are as follows:
Regarding Claim 21, issued Claim 1 recites a coating composition comprising a resin composition which includes an epoxy backbone and contains an MA acceptor and an MA donor where both the MA acceptor and the MA donor provide the epoxy backbone portion of the resin composition wherein the coating has the same cure times in the same curing conditions as recited in the instant claim and the cured coating is corrosion resistant. The instant claim recites “and/or” before the recitation of providing good intercoat adhesion to a primer layer, so this limitation is optional and not required. The issued claim does not recite that its coating composition is a topcoat composition, but this is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Issued Claim 1 recites a primer composition. A primer composition is capable of performing the intended use of a topcoat composition.
Regarding Claim 23, Issued claim 1 already recites that the epoxy backbone of MA acceptor and/or the epoxy backbone of the MA donor are an aromatic epoxy backbone.
Regarding Claim 24, Issued Claim 3, which includes the limitations of Issued Claim 2, adds a limitation to Issued Claim 1 that the epoxy backbone of the MA acceptor is derived from the recited aromatic epoxy compounds satisfies the limitation that instant claim 24 adds to instant Claim 23. Issued Claim 16 also adds the limitation to Issued Claim 1 that the MA acceptor and MA donor are derived from the recited list of aromatic epoxy compounds.
Regarding Claim 25, Issued Claim 1 already recites that the MA acceptor is an ester of (meth)acrylic acid and provides an epoxy backbone.
Regarding Claim 26, Issued Claim 1 already recites that the MA acceptor is an ester of (meth)acrylic acid and can provide an aromatic epoxy backbone.
Regarding Claim 28, Issued Claim 1 recites a latent catalyst which satisfies the limitation that instant Claim 28 adds to instant Claim 21.
Regarding Claim 29, Issued Claim 1 already recites that its catalyst is a latent catalyst. Issued Claim 7 adds the limitation to the Instant Claim 1 that the latent catalyst has structure of formula (I) which is the same structure recited in the limitation that instant claim 29 adds to instant Claim 28.
Regarding Claim 30, Issued Claim 10, which includes the limitation of Claim 9, adds the limitation to Issued Claim 1 that a non-latent catalyst is included with the recited basic anion X- structure. This matches the limitation that instant Claim 30 adds to instant Claim 28.
Regarding Claim 31, Issued Claim 10, which includes the limitation of Claim 9, adds the limitation to Issued Claim 1 that a non-latent catalyst is included with the recited basic anion X- structure in the recited 0.001-1.0 meq/g amounts which satisfies the limitation that instant Claim 31 adds to instant Claim 28.
Regarding Claim 32, Issued Claims 11 adds the same potlife extending component limitation to Issued Claim 1 that instant Claim 32 adds to instant Claim 21, Issued Claim 13, which includes the limitations of issued Claim 12, adds the same adhesion promoter component selected from organosilane and zircoaluminate to Issued Claim 1 that instant Claim 32 adds to instant Claim 21. Issued Claim 14 adds the same acid-scavenging limitation to Issued Claim 1 that instant Claim 21 adds to Instant Claim 21.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights