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 .
This Office action is in response to the amendment filed 6/18/2026. Claims 1 and 29-31 are amended; claims 2, 6, 10-14, 17-18, 20, 23-26 and 28 are cancelled; claims 16, 19, 21-22 and 32 are withdrawn from consideration as being drawn to non-elected invention; claim 35 is added. Accordingly, claims 1, 3-5, 7-9, 15-16, 19, 21-22, 27 and 29-35 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.
Double Patenting
Claims 1, 3-5, 7-9, 15, 27, 29-31, and 33-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-34 of copending Application No. 18/862,735. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to compositions comprising a polymer of at least one acetoacetyl functional ethylenically unsaturated monomer of formula I or II:
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, having similar molecular weight and a polyetheramine. The amount of acetoacetyl functional ethylenically unsaturated monomer in copending claims is open to any amount including greater than 90% (homopolymer as well as copolymer of present claims).
Copending claims are silent with respect to the species of polyetheramine; and the ratio of polymer to polyetheramine.
However, applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application, wherein the polyether amine is a derivative of formula:
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wherein R7 is H or methyl, R8 is H or methyl, and having weight average molecular weight of 200 to 4,000 (page 15, lines 25-32). The binder polymer may be present in amounts of 1 to 90% by weight (page 17, lines 5-10). Additionally, polyetheramine is present in amounts of 0 to 10% in claim 31 of copending application. Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art prior to the filing of present application to include the polyether amine having the above stated formula in the coating composition including a ratio for the polymer to polyetheramine in overlapping ranges, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “polyether diamine has a weight average molecular weight Mw no less than 400”. For clarity and consistency with the limitation “polyether diamines have a weight average molecular weight (Mw) in the range of 104 to 8,000” in claim 1, and to overcome a potential new matter issue, applicant is advised to rephrase it as “polyether diamine has a weight average molecular weight Mw in the range of 400 to 8,000” Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 7-9, 15, 27, 29-31 and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “wherein the polymer is either a homopolymer with a weight average molecular weight Mw of less than 26,000 or a copolymer” (lines3-4). However, there is no support for a molecular weight of homopolymer as recited either in the general disclosure or in exemplary embodiments, because a molecular weight as recited can be any number lower than 26,000 which could include values outside 5,000 taught in general disclosure (page 10, lines 33-35) and lower than 18,000 in exemplary embodiments (Table 4).
Claims 3-5, 7-9, 15, 27, 29-31 and 35 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1.
Claims 1, 3-5, 7-9, 15, 27, 29-31 and 35 are 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 1 recites “copolymer which contains at least 90 wt% of at least one acetoacetyl functional ethylenically unsaturated monomer … and 0 to 10 wt% of at least one ethylenically unsaturated monomer other than the acetoacetyl functional ethylenically unsaturated monomer” (lines 5-6 and 29-30). It is not clear if a homopolymer or copolymer is being claimed, because a copolymer comprising at least 90 wt% and 0 wt% of other monomer would be a homopolymer and not a copolymer. Hence, the metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. Examiner interprets the copolymer to be a homopolymer comprising only acetoacetyl functional ethylenically unsaturated monomer or copolymer comprising at least 90 wt% of acetoacetyl functional ethylenically unsaturated monomer and other monomer in amounts greater than 0 wt% to 10 wt%.
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, 3, 5, 7-9, 15, 29-31 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2012/0148858 A1) in view of Krasia et al (Chem. Commun., 2003; pp538-539) and Huntsman (downloaded from internet on 2/16/2023).
Regarding claims 1, 29-31 and 35, Wu discloses an aldehyde abatement composition comprising amino functional compound with a primary amino functional group (abstract). See example NJ02 (Table 3) wherein the formaldehyde abatement coating composition comprises AAEM functional acrylic latex (i.e., acetoacetoxyethyl methacrylate and reads on acetoacetyl functional ethylenically unsaturated monomer of formula I in present claim 1, wherein R1, and R2 are H, R3 is C1-alkyl, R4 is C2-alkylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1) and Jeffamine T403. Suitable amino functional compounds with a primary amino functional group include polyether amines having at least one primary amino group attached to a polyether backbone. Examples of suitable polyetheramines include diamines (paragraph 0013) which reads on polyether diamine in present claim 1. It is noted that monomer other than acetoacetyl functional ethylenically unsaturated monomer is optional, since it is present in amounts of 0% and not required.
Wu is silent with respect to homopolymer of acetoacetyl functional ethylenically unsaturated monomer and its molecular weight, or amount of acetoacetyl functional ethylenically unsaturated monomer in a copolymer; and species of polyether diamine.
However, regarding homopolymer of acetoacetyl functional ethylenically unsaturated monomer and its molecular weight, or amount of acetoacetyl functional ethylenically unsaturated monomer in a copolymer, Wu in the general disclosure teaches that acetoacetyl functional polymer is added to the aldehyde abatement composition to provide additional reactivity with an aldehyde and reduction of aldehyde in the environment near the substrate. Amino functional groups on amino-functional compound react with the acetoacetyl functional group to enhance the reactivity of acetoacetyl group towards aldehydes (paragraph 0024). Additionally, Krasia et al teach a homopolymer of 2-(acetoacetoxy)ethyl methacrylate (Fig. 1) which reads on homopolymer in present claims 1 and 35. The homopolymer of 2-(acetoacetoxy)ethyl methacrylate has a weight average molecular weight of 7656 g/mol (page 538, col. 2, 2nd full paragraph) which reads on Mw of less than 26,000 of homopolymer in present claim 1. It is noted that (weight average molecular weight Mw) = Mn (i.e., 6.6 kg/mol) * PDI (i.e., 1.16). Therefore, in light of the teachings in Krasia et al and given that Wu teaches its polymer comprising acetoacetyl functional monomer in combination with amine reduces the aldehyde in its compositions, it would have been obvious to one skilled in art prior to the filing of present application to include the homopolymer of 2-(acetoacetoxy) ethyl methacrylate having a Mw of less than 26,000, in the composition, of Wu, for above mentioned advantages.
Regarding species of polyether diamine, Wu in the general disclosure teach that suitable polyether amines are available under the trade designation Huntsman (paragraph 0013). Examples of Jeffamine available from Huntsman include polyether diamines represented by formula
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and have a molecular weight of from 230 to 4000 (page 4) which reads on the polyether diamines in present claims 1 and 29-31. Therefore, in light of the teachings in Huntsman and given that Wu contemplates using Jeffamine available from Huntsman, it would have been obvious to one skilled in art prior to the filing of present application to include any of the polyether amines from Huntsman including the polyether diamines having a Mw no less than 400, in the composition, of Wu in view of Krasia et al, absent evidence to the contrary.
Regarding claims 3, 5, and 8, it is noted that 2-(acetoacetoxy)ethyl methacrylate is represented by formula:
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(i.e. reads on monomer of formula I in claim 3 wherein R1, and R2 are H, R3 is C1-alkyl, R4 is C2-alkylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1; monomer of formula I in claim 5 wherein R1, and R2 are H, R3 is methyl, R4 is ethylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1; and monomer of 1st formula in claim 8).
Regarding claim 7, monomer of formula II is in the alternative and therefore not required.
Regarding claim 9, Krasia et al teach a homopolymer of 2-(acetoacetoxy)ethyl methacrylate has a weight average molecular weight of 7656 g/mol (page 538, col. 2, 2nd full paragraph). It is noted that (weight average molecular weight Mw) = Mn (i.e., 6.6 kg/mol) * PDI (i.e., 1.16). This is in light of the interpretation of copolymer in paragraph 9 above.
Regarding claim 15, Wu teaches that amount of film-forming additional polymer is preferably from 5 to 95% by weight (paragraph 0027). The amount of amino-functional compound is about 0.1 to 90% by weight (paragraph 0021) which overlaps with the ratio of polymer of acetoacetyl functional ethyenically unsaturated monomer and amine in present claim 15. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claims 4 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2012/0148858 A1) in view of Krasia et al (Chem. Commun., 2003; pp538-539), Huntsman (downloaded from internet on 2/16/2023), and Fan et al (WO 2017/011972 A1).
The discussion with respect to Wu, Krasia et al and Huntsman in paragraph 14 above is incorporated here by reference.
Wu, Krasia et al and Huntsman differ with respect to the species of acetoacetyl functional unsaturated monomer.
Fan et al in the same field of endeavor teach polymer comprising as copolymerized units at least one acetoacetoxy functional ethylenically unsaturated monomer (abstract). Examples of acetoacetoxy functional ethylenically unsaturated monomer include acetoacetoxyethyl (meth)acrylate, and allyl acetoacetate (bridging paragraph pages 2-3). Less formaldehyde content in the aqueous solution, higher formaldehyde abatement effectiveness of coating film (bridging paragraph pages 5-6). It is noted that allyl acetoacetate is represented by formula:
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. Therefore, in light of the teachings in Fan et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to include allyl acetoacetate, of Fan et al, which is functionally equivalent to acetoacetoxyethyl (meth)acrylate, in the co(polymer), of Wu in view of Krasia et al and Huntsman, absent evidence to the contrary.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 13-14, of Office action mailed 2/19/2026, 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 17 below).
Applicant's arguments filed 6/18/2026 have been fully considered but they are not persuasive. Specifically, general thrust of Applicant is that with the current amendment to claims limiting the molecular weight of homopolymer and polyether diamine, there is a showing of unexpected results with respect to the combination of homopolymer and polyether diamine in reducing the amount of aldehyde.
In response, it is known from the teachings in Wu that a combination of polymer comprising acetoacetoxy functional ethylenically unsaturated monomer and amine helps reduce aldehyde content. Further, the showing of unexpected results, if any, is only with a combination of specific homopolymer and polyether diamine species in specific amounts. Hence, it is the Office’s position that showing of unexpected results, if any, is not commensurate with scope of present claims.
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.
Contact Information
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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