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 § 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.
Claim(s) 1-6, 8 and 34-37 is/are rejected under 35 U.S.C. 103 as being unpatentable US20060063860(US’860), further in view of US20110151244A1(US’244).
Regarding claims 1, 4 - 6, 8, 34 - 35, and 37, US’860 discloses a latex coating composition exhibit improved waterproofing characteristics and significantly reduce the temperature increase due to solar rays when applied to industrial or architectural surfaces(abstract). The latex coating composition comprises between 5-50% by volume of glass bubbles uniformly distributed throughout the composition, 0.5-10% by weight of a thickener, water and a latex and wherein said composition has a density of between 0.5-1.5 g/cm3 ([0005]). The thickener is a cellulosic additive such as hydroxyethylcellulose (claims 1 - 3). The glass bubbles are composed of sodium borosilicate and are advantageously selected from the Scotchlite Glass Bubbles manufactured by the 3M Corporation ([0022]). The spherical glass bubbles have a density of between 0.1-0.6 g/cm3 ([0019]). Color imparting additives may be added to the coating composition ([006]). The coating composition may further comprise other materials such defoamers and coalescent solvents for the latex. In a preferred embodiment of the invention the coating composition comprises Texanol (an ester alcohol manufactured by Eastman) as a coalescent solvent and BYK 024 as a defoamer (manufactured by BYK Chemie) ([0027]).
After conversing the volume to mass, the glass bubble amount overlaps with the claimed range. For example, the glass bubble density can be 0.6 g/cm3 (5lb/gal). The mass of 19 gallons glass bubble is 95lb. Thus, the glass bubble (0.6g/cm3) mass percent content in the formulation of example 5 is read on the claimed range. The mass percent is about 10%.
10%= [95/ (400+12+4+40+200+200+95+5)]*100%.
Furthermore, the volume of the glass bubble can be up to 50%. It appears that the mass percent of the glass bubble (volume 50%) is also read on the claimed range.
Carbon black is not used in the coating (see example 5).
But it is silent about using a colorant other than white colorant.
US20110151244A1discloses conventional colorant such as dye or a dispersed dye may be used to impart color to a coating composition for roof. See [0007] and [0020].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use the colored colorant (such as red, green, yellow and et al) in the composition of US’860, motivated by the fact that US20110151244A1discloses conventional colorant such as dye or a dispersed dye may be used to impart color to a coating composition for roof. See [0007] and [0020]. The coating composition is free of infrared reflective pigments
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “close” ranges, and overlapping ranges or close have been held to establish prima facie obviousness (MPEP 2144.05).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The claimed properties are deemed to naturally flow from the structure in the prior art, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 2, US’860 disclose using filler such as titanium oxide. See Example 5.
Regarding claim 3, US’860 discloses that the thickener amount is about 0.65 % (example 5). Typically, between 0.5-10% by weight of the thickener is added to the water, preferably between 1-5% by weight and most preferably between 2-4% by weight e.g. 3% by weight ([0011]).
Regarding claim 36, US’860 disclose using filler such as ZnO. See Example 5.
Allowable Subject Matter
Claims 32-33 and 38-39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 6, and 34 -37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 8, 10, 12-13, 15, 17 and 32-36 of copending Application No. 16825153 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a coating composition comprising substantially similar components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 06/05/2026 have been fully considered but they are not persuasive.
The applicant argues that the examiner completely ignores paragraphs [0021]-[0026] of Wu, which provide endless colorant examples with no guidance for one of ordinary skill in the art to modify Savin and arrive at what is claimed. Paragraphs [0021]-[0023] Wu disclose over 110 pigment examples, some of which include white colorants and carbon black. This listing presumably does not even include the listing of pigments or mixtures thereof disclosed in the "Pigment Handbook, T.C. Patton, Ed." cited in paragraph [0021] of Wu. Then at paragraph [0023], Wu introduces the use of infrared pigments. The applicant argues that in its well over 110 examples of pigments, Wu discloses white colorants, infrared reflective pigments, and carbon black; yet white colorants, infrared reflective pigments, and carbon black are excluded from claim 1. Wu provides absolutely no guidance for one of ordinary skill in the art to selectively pick certain pigments that fall within the scope of claim 1 (i.e., not a white colorant, not carbon black, not infrared reflective pigments) to incorporate into Savin. With such endless examples listed, including those that are white pigments (e.g., titanium dioxide), Wu provides no further information than Savin's general recitation of using "[c]olor imparting additives."
The Examiner respectfully submits that US20110151244A1discloses conventional colorant such as dye or a dispersed dye may be used to impart color to a coating composition for roof. See [0007] and [0020]. Colorant include pigment and dye, Thus, dye is one kind of colorant and it is read on color imparting additive. The applicant argues that the Examiner picking and choosing dye from the Wu teaching. It should be noted that "A reference can be used for all it realistically teaches and is not limited to the disclosures in its specific examples". See In re Van Marter et al 144 USPQ 421; In re Windmer et al 147 USPQ 518, 523; and In re Chapman et al 148 USPQ 711. Furthermore, it is not picking and choosing to select one element from one list, however long the list may be. When the species is clearly named, the selection from a long list does not avoid a 102rejection. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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