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 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.
Claims 1, 3-6, 8, 10, 12-13, 15, 17 and 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20060063860(US’860), ), further in view of US20110151244A1(US’244).
Regarding claims 1, 4 - 6, and 8, US’860 discloses a latex coating composition exhibits 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- 8). 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 ([0017-0019]). Color imparting additives may be added to the coating composition([0026]). 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]). Carbon black or/and raw number are not used in the coating.
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.
But it is silent about using the claimed 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 dye 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 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 claims 10, 13, and 15 -17, US20060063860 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- 8). 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 ([0017-0019]). Color imparting additives may be added to the coating composition. Preferably when coating composition is applied to roofs the composition is tinted white. US’860 discloses using titanium dioxide and ZnO ([0026] and example 5). 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]). Carbon black and raw number are not used in the coating.
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.
But it is silent about using non-white colored pigment.
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 US’042 discloses that the particular choice of pigments can be selected so as to impart superior weatherability, color retention, and low gloss uniformity to when exposed to high ultra violet sunshine.
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 12, US’860 discloses that example 5 discloses 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 claims 32 and 34, US’860 discloses that the latex is a stable aqueous dispersion of any suitable water-insoluble polymer. The polymer may be a homopolymer or a copolymers. Suitable polymers include polyvinylacetates. See [0017]. Color imparting additives may be added to the coating composition ([0026]). Thus, the coloring imparting additive should be vinyl safe.
Regarding claim 33 and 35, US’860 discloses that the latex is a stable aqueous dispersion of any suitable water-insoluble polymer. The polymer may be a homopolymer or a copolymers. Suitable polymers include polyvinylacetates, polyacrylates, polyurethanes, acrylic acid polymers and polyvinylchorides. See [0017].
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, 3- 6, 8, 10, 12-13 and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 and 8 of copending Application No. 16070115 (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 07/30/2025 have been fully considered but they are not persuasive.
. Newly cited US20110151244A1 discloses 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].
Conclusion
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731