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 .
Status of the Claims
By amendment filed February 03, 2026 claim 46 is new. Claims 1 through 46 are currently pending.
Response to Arguments
Applicant's arguments filed February 03, 2026 have been fully considered but they are not persuasive. Applicant’s arguments are not persuasive for the reasons discussed in the previous Office Action.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s arguments that conventional cleaning solutions have a pH greater than 11.5 is not persuasive because, as was discussed in the previous Office Action, Ruckle teaches that it was known in the art for floor finish/polish removers to have a pH below 11.5.
Furthermore, in addition to the teachings of Ruckle, the examiner takes the position that the composition of Nagata either alone or in combination with the references of Boulanger, Kim, Gregory and Conner would have been inherently capable of being removed with a remover solution having a pH of less than 11.5 and by the remover of claim 46 because the prior art taught a floor finish composition that was substantially the same as required by the claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP section 2112.01.
Applicant’s arguments concerning the teachings of Nagata in view of Boulanger and Kim and Gregory and Conner are not persuasive because applicant has not provided any evidence that the floor finish/polish compositions of the cited prior art either alone or in combination would not have been able to be removed by a remover solution having a pH less than 11.5 or by the remover solution of claim 46. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) See MPEP section 2112.
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, 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 1-6, 27, 29-35, 41-44 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Nagata et al (U.S. Patent # 7,825,178) in view of Boulanger et al (U.S. Patent Publication No. 2015/0190844) and Kim et al (U.S. Patent Publication No. 2019/0352493) and Gregory (U.S. Patent # 4,317,755) and Conner et al (U.S. Patent # 8,461,256) and Ruckle (U.S. Patent # 5,342,551).
In the case of claims 1, 5 and 46, Nagata teaches a floor finish/polish composition comprised of at least one polymer emulsion in the form of a water-insoluble/emulsified polymer (Abstract, Column 14 Lines 40-49 and Column 15 Lines 7-13 and 49-59) and two or more kinds of alkali-soluble resins wherein one of the resins was an acrylic polymer (Column 17 Lines 35-47) and therefore at least a first alkali soluble resin and a second alkali soluble resin.
Nagata further teaches that the alkali soluble resins concentration was less than 10%, preferably in the range of about 0.5 to about 5 wt% of the total weight of the composition (Column 17 Lines 59-67), which overlapped with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP section 2144.05.I.
Furthermore, Nagata teaches that the composition comprised at least one wax (Column 17 Lines 11-25) in the amount of about 0.1 to about 10 wt%, based on a total weight of the composition (Column 17 Lines 26-34), which overlapped with the claimed range of 5 to 10 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Nagata does not specifically teach that the at least one polymer emulsion was present in the amount of (i) 35% to 55% (w/w), based on a total weight of the composition, and (ii) from 55% to 75% based on a total solids content in the composition and that the at least one polymer emulsion and the total amount of alkali soluble resin were present in a ratio of between about 3:1 and about 20:1. However, section 2144.05.II.A of the MPEP states, “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)”
Nagata further teaches that the amount of polymer emulsion affected the gloss and viscosity of the composition (Column 15 Line 60 through Column 16 line 2) and that the amount of alkali-soluble resin affected the viscosity and ease of application of the composition (Column 17 Lines 59-67).
Furthermore, Boulanger teaches a floor polishing composition comprising a polymer and an alkali soluble resin wherein the ratio of polymer to resin was a known cause effective variable affecting the properties of the composition such as the glossiness (Abstract and Page 7 Paragraphs 0059-0060).
Based on the teachings of Nagata and Boulanger, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal ration between the polymer emulsion and total amount of alkali soluble resin through routine experimentation because the concentration of each component ant the ratio between them affected the viscosity of the composition and the glossiness of the formed coating.
Neither Nagata nor Boulanger teach that the second alkali soluble resins was comprised of a styrene/acrylic polymer and had an average molecular weight in the range of about 3000 to 6000 and an acid number between 210 and 260. Nagata does teach that the composition comprised conventional alkali soluble resins used in floor polishing composition including those made of a styrene-maleic acid copolymer or which where acrylic based (Column 17 Lines 36-45) and teaches an example composition comprising an acrylic alkali soluble resin and an acrylic-styrene polymer (Column 21 Lines 6-30).
Furthermore, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP section 2144.06.
Gregory teaches a floor polishing composition (Abstract) comprised of conventional alkali soluble resins including styrene/acrylic acid, styrene-maleic acid copolymer resins and acrylic comprising resins where it was known for conventional alkali soluble resins to have an average molecular weight in the range of 500 to 10,000 and an acid number in the range of 140 to 300 (Column 5 Lines 3-19).
Based on the teachings of Gregory, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used a styrene/acrylic alkali soluble resins in the composition of Nagata in view of Boulanger with an average molecular weight in the range of 500 to 10,000 and an acid number in the range of 140 to 300 because this was a known and conventional alkali soluble resin used in floor polishers and therefore one of ordinary skill would have had a reasonable expectation of success in the combination. Furthermore, the average molecular weight and acid number ranges of Nagata in view of Boulanger and Gregory overlapped with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
None of the references teach that the second alkali soluble resins had a glass transition temperature between 95 and 120 ℃. However, Nagata teaches that suitable alkali soluble resins included those known in the art and were acrylic resins (Column 17 Lines 35-45).
Kim teaches an emulsion based top coating composition (Abstract and Page 1 Paragraphs 0002-0004) comprising acrylic based alkali soluble resins having a glass transition temperature in the range of 30 to 120 ℃ (Page 1 Paragraph 0019 and Page 2 Paragraph 0037) wherein alkali soluble resins having a glass transition temperature in the taught range provided a coating with improved hardness and or/wettability (Page 2 Paragraph 0038).
Based on the teachings of Kim, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have had the second alkali soluble resin in the composition of Nagata in view of Boulanger and Gregory have a glass transition temperature of between 30 and 120 ℃ because this was a known glass transition temperature in the art for resins used in top coat/floor finishing composition and provided improved hardness and/or wettability to the formed coating. Furthermore, the glass transition temperature of Kim overlapped with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
None of the references specifically teach that the second alkali soluble resin had a volatile organic compound content of less than 2% (w/w), based on the total weight of the composition.
Conner teaches a floor treatment composition (Abstract and Column 15 Lines 6-18) wherein it was known and desired in the art for such composition to have low or no VOCs in order to reduce the odor and toxicity of the composition (Column 1 Lines 23 and Column 3 Lines 54-58).
Based on the teachings of Conner, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have had no VOCs present in the composition of Nagata in order to reduce the odor and toxicity of the composition.
None of the references teach that the composition was capable of being removed with an alkaline remover solution having a pH less than 11.5 or with the alkaline remover solution of claim 46. However, Nagata teaches that the presence of the alkali soluble resins allowed for the composition to be peeled off/removed from a surface when contacted with an alkaline release agent/remover (Column 17 Lines 53-58).
The examiner takes the position that the composition of Nagata in view of Boulanger and Kim and Gregory and Conner would inherently have been capable of being removed by an alkaline remover solution of claim 46 and having a pH of less than 11.5 because the composition of the references was substantially the same as that required by the claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Furthermore, Ruckle teaches a noncaustic floor finish remover having a pH between 8.0 and 10.0 which was used to remove floor finishes and waxes (Abstract, Column 1 Lines 35-43 and Column 2 Lines 51-64).
Based on the teachings of Ruckle, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have made the floor finish composition of Nagata in view of Boulanger and Kim and Gregory and Conner to be removable with a remover solution of less than 11.5 because it was known in the art for floor finish removers to have pHs in the range of 8 to 10.
As for claim 2, Nagata teaches that the composition further comprised at least one plasticizer (Column 16 Lines 59-67).
As for claim 3, Nagata teaches that the composition comprised a solvent in the form of water (Column 14 Lines 40-49).
As for claim 4, Nagata further teaches that the composition comprised at least one surfactant (Column 16 Lines 10-27). Nagata does not teach that the composition comprised at least one fragrance.
Boulanger teaches that it was known for polish compositions to comprise a fragrance (Page 8 Paragraph 0067).
Based on the teachings of Boulanger, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included a fragrance in the composition of Nagata to provide a desired smell to the composition.
As for claim 6, Nagata does not specifically teach that the ratio of the first alkali soluble resin to the second alkali soluble resin was between 5:1 and 1:1. However, as was discussed previously, the concentration of the resin was a cause effective variable and therefore it would have been obvious to have determined optimal concentration for each resin and therefore the ratio between each resin through routine experimentation.
As for claims 27 and 30, as was discussed previous in the rejection of claim 1, Nagata in view of Boulanger and Kim and Gregory and Ruckle render obvious an average molecular weight range, an acid number range and a glass transition temperature range which overlapped with the claimed ranges and as was discussed previously overlapping ranges are obvious.
As for claims 29 and 41-42, as was discussed previously, it would have been obvious for the composition of Nagata to have no VOCs.
As for claims 31 and 32, though Nagata teaches that the composition comprised at least one plasticizer Nagata does not teach that the plasticizer was present in an amount from about 8% to about 18%, based on a total solids content in the composition or in an amount from about 10% to about 30%, based on a total polymer solids content in the composition. However, Nagata teaches that the amount of plasticizer present was a cause effective variable affecting the hardness and flexibility of the film formed by the composition (Column 17 Lines 1-9) and as was discussed previously, cause effective variables are obvious.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal amounts for the plasticizer in the composition through routine experimentation because the amount of plasticizer affected the hardness and flexibility of the film formed from the taught composition.
As for claims 33 and 34, Nagata teaches that the composition comprised a solvent/coalescent which included diethylene glycol monoethyl ether (Column 16 Lines 38-44), which Paragraph 0011 of the specification of the present application discloses as being a polar organic solvent. Nagata does not teach that the composition further comprised a nonpolar organic solvent, specifically either ethylene glycol phenyl ether or ethylene glycol hexyl ether. Nagata does teach that the composition comprised a combination of coalescents/solvents (Column 16 Lines 45-46).
Boulanger teaches that the composition comprised at least one coalescing agent which included diethylene glycol ethyl ether, ethylene glycol hexyl ether and ethylene glycol phenyl ether (Pages 8-9 Paragraphs 0070-0071).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included either ethylene glycol hexyl ether or ethylene glycol phenyl ether to the composition of Nagata because it was known in the art to combine multiple solvents/coalescents.
Neither Nagata nor Boulanger teach that the polar organic solvent was present in an amount between about 30% to about 45%, based on a total polymer solids content in the composition and that the nonpolar organic solvent was present in an amount between about 5% to about 10%, based on a total polymer solids content in the composition. However, Nagata teaches that the amount of the coalescents was a cause effective variable affecting how continuous the formed film would be (Column 16 Lines 50-58).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal amounts for the polar and nonpolar organic solvents/coalescents of Nagata in view of Boulanger and Kim and Gregory and Ruckle through routine experimentation because the amounts of these solvents affected how continuous the film formed by the taught composition would be.
As for claim 35, it is rejected for the same reasons discussed in the rejection of claim 1 because the amount of polymer emulsion was a cause effective variable.
As for claims 43 and 44, Nagata does not teach or suggest that the at least one polymer emulsion had an alkyl phenol ethoxylate (APE) content of more than 1% (w/w), based on the total content of the composition.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nagata et al in view of Boulanger et al and Kim et al and Gregory and Conner et al and Ruckle as applied to claim 1 above, and further in view of Li et al (U.S. Patent # 8,585,829).
The teachings of Nagata in view of Boulanger and Kim and Gregory and Conner and Ruckle as they apply to claim 1 have been discussed previously and are incorporated herein.
Boulanger teaches that it was known in the art to provide an abrasive pad in the form of a burnishing pad to prepare the floor for a surface finish composition when servicing and maintaining floor surfaces (Page 1 Paragraph 0001 and 0003).
However, none of the references teach having provided the floor finish of claim 1 in a container and having provided a container configured to contain a remover solution.
Li teaches a floor cleaning and servicing composition (Abstract and Column 2 Lines 18-23) wherein the composition such as a remover solution/detergent composition and a finish/soil resistant agent were provided in separate container within a kit (Column 2 Lines 49-55).
Based on the teachings of Boulanger and Li, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art it would have been obvious to have provided a kit containing an abrasive pad and separate container for the floor finish composition and a remover solution because this was a known kit in the art for floor service and maintenance.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Nagata et al in view of Boulanger et al and Kim et al and Gregory and Conner et al.
In the case of claim 45, it is rejected for substantially the same reasons discussed previously in the rejection of claim 1.
Conclusion
Claims 1 through 6, 10, 27, 29 through 35 and 41 through 46 have been rejected. No claims have been allowed.
THIS ACTION IS MADE FINAL. 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 MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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