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 Application
Claims 1, 2, 8, 10-12, 17-19, 25, 26 and 33-41 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive. Applicant argues that newly amended claims are not obvious over the prior art of record. Applicant claims that the range for the terpolymer is critical. However, this range is only critical in combination with the exclusion of isocyanate hardeners as evidenced in Table 2 of Applicant’s declaration field 6/1/2026. Therefore, the previous evidence as filed does not demonstrate criticality of the claimed range commensurate in scope with claims 33-41 which does not exclude an isocyanate hardener. Thus, claims 33-41 are rejected under 35 U.S.C. 103 over the prior art of record.
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.
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.
1. Claim(s) 33-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yanan et al. (U.S. PGPUB No. 2013/0196162) in view of Padget et al. (EP 0075396).
I. Regarding claims 33-37 and 39-41, Yanan teaches an article comprising: a wood substrate comprising 5-12% tannin (0065 and note that overlapping ranges are prima facie evidence of obviousness), selected from a group comprising oak (0065), cedar (0065) or an engineered wood product, such as plywood (0066); an aqueous based clear (note that pigments are optional, see 0034) sealer/primer coat directly applied on a major surface of the wood substrate (abstract and 0072) which may contain a defoamer (0037); and an aqueous-based white-colored (note that white reflects all colors of light) topcoat applied on the sealer/primer coat (0091). Yanan teaches the aqueous based composition used to provide the sealer/primer coat is based on a dispersion consisting of a resin comprising active hydrogen in groups such as acid groups (0025 and 0027), which has a pH in the range of about 4.2-8 (0030 and note that this is overlapping with Applicant’s claimed range of 3-6, and overlapping ranges are prima facie evidence of obviousness), water (abstract and claim 1), and one or more additional additives comprising defoamers and hardeners (claims 1, 3 and 4). Yanan fails to explicitly teach that the resin can be a vinylidene chloride-acrylic acid-vinyl chloride terpolymer that is neutralized with ammonia. Yanan further fails to teach explicitly teach the amount of water, aqueous dispersion and additives as claimed in claims 33-35 and 39.
First, Padget teaches use of polyvinylidene chloride-acrylic acid-vinyl chloride terpolymer HALOFLEX 202 (Example 1, page 11 and note that applicant’s specification makes clear that HALOFLEX 202 is a terpolymer as claimed, see applicant’s specification at 0038) neutralized with ammonia (Example 1, page 11) in aqueous dispersions (abstract and page 6) for application to wood substrates (top of page 10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yanan’s article by including a vinylidene chloride-acrylic acid-vinyl chloride terpolymer in the aqueous dispersion for forming the primer/seal coating. One would have been motivated to make this modification as the Padget teaches that the specific selection of the vinylidene chloride/vinyl chloride type polymers provide heat/fire resistance to substrates (pages 9-10).
Second, adjusting the amounts of the dispersion of the polymer, water and defoamer compounds will alter the sealing properties of the composition, defoaming properties and its viscosity (thereby also altering its coatability). Therefore, the amounts of these components are result-effective variables, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
II. Regarding claim 38, Yanan in view of Padget teach an article as claimed (see above), and Yanan additionally teaches that there is no visual discoloration of the topcoat overlying the seal/primer coat after a week (0080). Therefore, the Examiner contends that based on Yanan in view of Padget’s teaching an essentially identical article, and Yanan explicitly teaching that there is no color change (see above) that Yanan in view of Padget’s article would inherently have a color difference of no greater than 3 as claimed.
Allowable Subject Matter
2. Claims 1, 2, 8, 10-12, 17-19, 25 and 26 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach or suggest the article of claim 1 and the method of claim 19. In particular, the prior art fails to teach or suggest the paint or primer coat only consisting of the elements as claimed as Yanan requires a hardener. Further, the prior art fails to teach or suggest the paint/primer consisting of the aqueous dispersion of terpolymer in the range of 70-90%. Thus, claims 1 and 19 are allowed. Claims 2, 8, 10-12, 17, 18, 25 and 26 depend from claim 1 or 19 and are allowed for the same reasons.
Conclusion
Claims 1, 2, 8, 10-12, 17-19, 25, 26 and 33-41 are pending.
Claims 1, 2, 8, 10-12, 17-19, 25 and 26 are allowed.
Claims 33-41 are rejected.
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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 21, 2026Primary Examiner, Art Unit 1717
