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 1-3, 5, 8, 10-12, 17-20 and 25-32 are pending. Claims 28-32 are withdrawn. Claims 1-3, 5, 8, 10-12, 17-20 and 25-27 are presented for examination.
Response to Arguments
Applicant's arguments filed 1/8/2026 have been fully considered but they are not persuasive. The Applicant argues that the amendment overcomes the prior art of record. In particular, the Applicant argues that the amendment to recite the paint “consists” of the aqueous dispersion, water and additives excludes the use of an isocyanate hardener. However, the Examiner disagrees and notes that the language of additives is open-ended and allows for the inclusion of an isocyanate hardener as an additive. Therefore, the Examiner disagrees that the limitation overcomes the prior art of record, and the rejections are maintained as presented below. If Applicant wishes to exclude an isocyanate hardener, the Examiner recommends reciting the composition consisting of the aqueous dispersion, water, and one or more additives selected from the group consisting of a co-solvent, a coalescing agent, a wetting agent, a defoamer, a surfactant, an anti-sagging agent and a thickener.
Applicant’s arguments with respect to newly added claims 28-32 are moot as these claims have been withdrawn (see below).
Election/Restrictions
Newly submitted claims 28-32 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The common technical feature is a composition comprising 70-90% of an aqueous vinylidene chloride-acrylic acid-vinyl chloride terpolymer, 9-20% water and additional additives. However, this common technical feature is not a special technical feature as it is not novel as evidenced in the rejections previously presented and below.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 28-32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 1-3, 5, 8, 10-12, 17-20 and 25-27 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 1, 3, 5, 8, 10-12, 17, 25 and 27, 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 acylic 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 1, 8 and 25.
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 2, Yanan in view of Padget teach all the limitations of claim 1, but fail to teach the thickness of the primer coat. However, the thickness of the primer coat is a result-effective variable, as altering the thickness will alter the barrier properties of the coating. Therefore, 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 range for coating thickness 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).
III. Regarding claim 18, 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.
IV. Regarding claims 19, 20 and 26, Yanan teaches application of a water-based varnish (note that pigments are optional, see 0034) primer coat directly on a major surface of the wood substrate (abstract and 0072), where the wood substrate comprises 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). Yanan teaches the aqueous based composition used to provide the sealer/primer coat is based on a dispersion 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 about 4.2 is considered as overlapping with Applicant’s claimed range of 3-4, and overlapping ranges are prima facie evidence of obviousness) and may include additional additives, such as a defoamer (0037). Yanan fails to explicitly teach that the resin can be a vinylidene chloride-acrylic 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.
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 application of a primer by including a vinylidene chloride-acrylic acid-vinyl chloride terpolymer in the aqueous dispersion for forming the primer coating which would inherently prevent tannin or rosin from immigrating out from the wood substrate. One would have been motivated to make this modification as Padget teaches that the specific selection of the vinylidene chloride/vinyl chloride type polymer provides 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).
Conclusion
Claims 1-3, 5, 8, 10-12, 17-20 and 25-32 are pending.
Claims 28-32 are withdrawn.
Claims 1-3, 5, 8, 10-12, 17-20 and 25-27 are rejected.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S WALTERS JR/
February 2, 2026Primary Examiner, Art Unit 1717
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