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 .
Examiner’s Comments
Applicants’ response filed on 1/14/2026 has been fully considered. Claims 2, 4, 7, 9-24, 26-27, 30, 32, 34, 39, 41-43, 45-61, 63-68, 70-75 and 77 are cancelled, claims 62 and 69 are withdrawn and claims 1, 3, 5-6, 8, 25, 28-29, 31, 33, 35-38, 40, 44, 62, 69, 76 and 78-86 are pending.
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, 6, 8, 25, 28-29, 31, 33, 35-36, 38, 40, 44 and 76, 81-82 and 84 are rejected under 35 U.S.C. 103 as being unpatentable over Chauvette et al (US 6,391,226 B1).
Regarding claim 1, Chauvette discloses a selectively strippable coating (coating composition; col. 2, lines 17-25) comprising one or more organic polymers comprising carboxylic acid functionalities (an agent comprising ethylene acrylic acid copolymer emulsion; col. 8, lines 1-30), a metallic agent (an agent comprising a modified acrylic zinc completed polymer emulsion; col. 5, lies 49-56) and a boron agent selected from acidic boron compound (a buffer of borax/HCl; col. 6, lines 49-56).
The buffer of borax/HCl provides a reaction product of boric acid and sodium chloride and is considered to be the acidic boron compound.
Chauvette does not disclose the selectively strippable coating comprising the molar ratio of metallic agent to boron agent being from about 10:1 to about 1:10 of metallic agent to boron agent.
However, Chauvette discloses 1 to 60% by weight of at least one agent to form a sealer and buffer in an amount of 0.5% to 4% by weight.
The molar mass of zinc acrylate is 207.5 g/mol. The molar mass of HCl is 36.12 g/mol. The molar mass of borax is 381.38 g/mol. The molar mass of a mixture of equal amounts of borax/HCl is 208.92 g/mol (0.5 x 381.38 g/mol + 0.5 x 36.12 g/mol). Converting the amounts of at least one agent and buffer into moles would result in 0.005 moles (1/205.5) to 0.289 moles (60/207.5) of modified acrylic zinc completed polymer emulsion and 0.002 moles (0.5/208.92 g/mol) to 0.019 moles (4/208.92) of buffer of borax/HCl. The molar ratio of modified acrylic zinc completed polymer emulsion to buffer of borax/HCl would be 0.263:1 (0.005/0.019) to 144.5:1 (0.289/0.002)
This molar ratio overlaps the claimed molar ratio of metallic agent to boron agent being from about 10:1 to about 1:10 of metallic agent to boron agent.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Chauvette does not disclose the selectively strippable coating comprising the metallic agent and the boron agent providing coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
However, since the modified acrylic zinc completed polymer emulsion contains zinc and is considered to be a metallic agent and the buffer of borax/HCl provides a reaction product of boric acid and sodium chloride and is considered to be an acidic boron compound, the modified acrylic zinc completed polymer emulsion and buffer of borax/HCl would inherently provide coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
Regarding claim 3, Chauvette discloses the selectively strippable coating of claim 1 as noted above and Chauvette discloses the selectively strippable coating comprising an organic film former (an ethylene acrylic acid copolymer emulsion; col. 8, lines 1-30).
The ethylene acrylic acid copolymer emulsion is considered to be an organic film former as it is an agent adapted to form a coating or sealer (col. 5).
Regarding claim 6, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selectively strippable coating comprising the carboxylic acid functionalities of each organic polymer provided in an mount between about 1 to 30 wt% of the organic polymer.
However, Chauvette discloses the coating composition comprising 1 to 60% by weight of at least one agent to form a sealer.
The amount of at least one agent overlaps the claimed amount of carboxylic acid functionalities of each organic polymer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selectively strippable coating comprising the molar ratio (M:A) of the metallic agent (M) to the carboxylic acid functionality (A) of the organic polymer being provided between about 10:1 (M:A) to 1:10 (M:A).
Chauvette discloses the coating composition comprising 1 to 60% by weight of at least one agent to form a sealer and buffer in an amount of 0.5% to 4% by weight.
The ratio of these amounts and their molar masses would provide a molar ratio that overlaps the claimed molar ratio of metallic agent to carboxylic acid functionality being from about 10:1 to about 1:1 of metallic agent to boron agent.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 25, Chauvette discloses a primer coated substrate (article; col. 3) comprising a substrate (substrate of concrete; col. 5), a primer formed on the substrate (at least one lower coat formed from a coating composition; col. 5) and at least one upper coat (col. 5); and wherein the coating composition is the selectively strippable coating of claim 1 disclosed by Chauvette as noted above.
Regarding claim 28, Chauvette discloses a coating system (article; col. 3) comprising a coated substrate (substrate of concrete; col. 5), a selectively strippable coating between the coated substrate and the at least one post coating layer (at least one lower coat from a coating composition; col. 5) and at least one upper coat (at least one post coating layer; col. 5); and wherein the coating composition is the selectively strippable coating of claim 1 disclosed by Chauvette as noted above.
Regarding claim 29, Chauvette discloses a selectively strippable coating composition (coating composition; col. 2) comprising an organic polymers comprising carboxylic acid functionalities (ethylene acrylic acid copolymer emulsion; col. 8, lines 1-30), a metallic agent (modified acrylic zinc completed polymer emulsion; col. 5, lies 49-56), a boron agent selected from acidic boron compound (buffer of borax/HCl; col. 6, lines 49-56) and solvent (water; col. 8, lines 1-30).
Chauvette does not disclose the selectively strippable coating comprising the molar ratio of metallic agent to boron agent being from about 10:1 to about 1:10 of metallic agent to boron agent.
However, Chauvette discloses 1 to 60% by weight of at least one agent to form a sealer and buffer in an amount of 0.5% to 4% by weight.
The molar mass of zinc acrylate is 207.5 g/mol. The molar mass of HCl is 36.12 g/mol. The molar mass of borax is 381.38 g/mol. The molar mass of a mixture of equal amounts of borax/HCl is 208.92 g/mol (0.5 x 381.38 g/mol + 0.5 x 36.12 g/mol). Converting the amounts of at least one agent and buffer into moles would result in 0.005 moles (1/205.5) to 0.289 moles (60/207.5) of modified acrylic zinc completed polymer emulsion and 0.002 moles (0.5/208.92 g/mol) to 0.019 moles (4/208.92) of buffer of borax/HCl. The molar ratio of modified acrylic zinc completed polymer emulsion to buffer of borax/HCl would be 0.263:1 (0.005/0.019) to 144.5:1 (0.289/0.002)
This molar ratio overlaps the claimed molar ratio of metallic agent to boron agent being from about 10:1 to about 1:10 of metallic agent to boron agent.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Chauvette does not disclose the selectively strippable coating comprising the metallic agent and the boron agent providing coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
However, since the modified acrylic zinc completed polymer emulsion contains zinc and is considered to be a metallic agent and the buffer of borax/HCl provides a reaction product of boric acid and sodium chloride and is considered to be an acidic boron compound, the modified acrylic zinc completed polymer emulsion and buffer of borax/HCl would inherently provide coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
Regarding claim 31, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above.
Chauvette does not disclose the selectively strippable coating composition comprising the composition has a solid concentration of about 0.1% to 40% based on the total weight of the composition.
However, Chauvette discloses the coating composition comprising 1 to 60% by weight of material (col. 5).
This range overlaps the claimed range for the solid concentration of the composition.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 33, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above.
Chauvette does not disclose the selectively strippable coating composition comprising the organic film former or the organic polymer comprising carboxylic acid functionalities is provided in the coating composition in an amount of about 1 to 20 wt% based on the weight of the total composition
However, Chauvette discloses the coating composition comprising 1 to 60% by weight of at least one agent to form a sealer (col. 5).
The amount of at least one agent overlaps the claimed amount of organic polymer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 35, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above and Chauvette discloses the selectively strippable coating composition comprising an organic film former (ethylene acrylic acid copolymer emulsion; col. 8, lines 1-30).
The ethylene acrylic acid copolymer emulsion is considered to be an organic film former as it is adapted to form a coating or sealer (col. 5).
Regarding claim 36, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above and Chauvette discloses the selectively strippable coating composition comprising a metallic agent and boron agent provided by a salt (modified acrylic zinc completed polymer emulsion and a buffer of borax/HCl; col. 5, lies 49-56 and col. 6, lines 49-56).
The modified acrylic zinc completed polymer emulsion and a buffer of borax/HCl together provide a metallic agent and boron agent provided by a salt.
Regarding claim 38, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above.
Chauvette does not disclose the selectively strippable coating composition comprising the carboxylic acid functionalities of each organic polymer is provided in an amount of between about 1 to 30 wt % of the organic polymer
However, Chauvette discloses the coating composition comprising 1 to 60% by weight of at least one agent to form a sealer.
The amount of at least one agent overlaps the claimed amount of carboxylic acid functionalities of each organic polymer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 40, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above.
Chauvette does not disclose the selectively strippable coating composition comprising the molar ratio (M:A) of the metallic agent (M) to the carboxylic acid functionality (A) of the organic polymer is provided between about 10:1 (M:A) to 1:10 (M:A).
However, Chauvette discloses the coating composition comprising 1 to 60% by weight of at least one agent to form a sealer and buffer in an amount of 0.5% to 4% by weight.
The ratio of these amounts and their molar masses would provide a molar ratio that overlaps the claimed molar ratio of metallic agent to carboxylic acid functionality being from about 10:1 to about 1:1 of metallic agent to boron agent.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 44, Chauvette discloses the selectively strippable coating composition of claim 29 as noted above and Chauvette discloses the selectively strippable coating composition being a water based coating formulation comprising an aqueous solvent (water; cols. 7-8).
Regarding claim 76, Chauvette discloses the selectively strippable coating of claim 1 as noted above and Chauvette discloses the selectively strippable coating comprising an organic crosslinker (an alkali soluble resin comprising styrene maleic anhydride; col. 6, lines 1-10).
Regarding claim 81, Chauvette discloses the selectively strippable coating of claim 1 as noted above and Chauvette discloses the selectively strippable coating comprising the boron agent being an acidic boron compound capable of providing a Lewis acid and/or Bronsted acid functionality (buffer of borax/HCl; col. 6, lines 49-56).
The buffer of boron agent would provide a reaction product of boric acid and sodium chloride.
Regarding claim 82, Chauvette discloses the selectively strippable coating of claim 1 as noted above and Chauvette discloses the selectively strippable coating comprising the boron agent being a reaction product of a metallic agent and a boron compound (buffer of borax/HCl; col. 6, lines 49-56)
The buffer of boron agent would provide a reaction product of boric acid and a salt of sodium chloride.
Regarding claim 84, Chauvette discloses the selectively strippable coating of claim 1 as noted above and Chauvette discloses the selectively strippable coating comprising the boron agent being boric acid (buffer of borax/HCl; col. 6, lines 49-56).
The boric acid is considered to be dissolvable in an ammonia solution
Claims 5 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Chauvette et al (US 6,391,226 B1) in view of Herten et al (US 4,853,427 A1).
Regarding claims 5 and 37, Chauvette discloses the selectively strippable coating of claim 1 as noted above and the selectively strippable coating composition of claim 29 as noted above.
Chauvette does not disclose the selectively strippable coating or the selectively strippable coating composition each comprising one or more organic polymers comprising carboxylic acid functionalities having a number average molecular weight of at least 5000.
However, Herten discloses a composition comprising a one or more organic polymers comprising carboxylic acid functionalities having a number average molecular weight from about 500 to about 10,000 (thermoplastic polymer comprising a copolymer of ethylene and acrylic acid with an average number molecular weight from about 500 to about 10,000; col. 3, lines 14-23).
The average number molecular weight from about 500 to about 10,000 for the ethylene acrylic acid copolymer overlaps the claimed range for the one or more organic polymers comprising carboxylic acid functionalities having a number average molecular weight of at least 5000.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide increased strength and toughness for the ethylene acrylic acid while not increasing viscosity in order to improve processability. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the average number molecular weight of the copolymer of ethylene and acrylic acid for the ethylene acrylic acid emulsion of Chauvette because having the required average number molecular weight provides increased strength and toughness for the ethylene acrylic acid while not increasing viscosity in order to improve processability.
Claim 78 is rejected under 35 U.S.C. 103 as being unpatentable over Chauvette et al (US 6,391,226 B1) in view of Tada et al (EP 1 063 252 A1).
Regarding claim 78, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selectively strippable coating comprising the boron agent being selected from ammonium borate.
However, Tada discloses a resin composition (paragraph [0008]) comprising the boron agent being selected from ammonium borate (paragraph [0050]).
It would have been obvious to one of ordinary skill in the art to modify the selectively strippable coating of Chauvette to include the ammonium borate in the coating composition of Chauvette because having the required flame retardant of Chauvette provides high flame retardance to a resin composition (paragraph [0050] of Tada).
Claims 79-80, 83 and 85-86 are rejected under 35 U.S.C. 103 as being unpatentable over Chauvette et al (US 6,391,226 B1) in view of Reinheimer et al (US 2004/0256605 A1).
Regarding claim 79, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selective strippable coating comprising the boron agent being zinc borate.
However, Reinheimer discloses a composition comprising a boron agent being zinc borate (fire protection additive comprising zinc borate; paragraph [0033]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the zinc borate of Reinheimer in the coating composition of Chauvette because having zinc borate incorporates fire protection into the coating composition.
Regarding claim 80, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selective strippable coating comprising the boron agent being zinc borate.
However, Reinheimer discloses a composition comprising a boron agent being zinc borate (fire protection additive comprising zinc borate; paragraph [0033]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the zinc borate of Reinheimer in the coating composition of Chauvette because having zinc borate incorporates fire protection into the coating composition.
Regarding claim 83, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selective strippable coating comprising the boron agent being a reaction product of a metallic agent and a boron compound.
However, Reinheimer discloses a composition comprising a boron agent being a reaction product of a metallic agent and a boron compound (a fire protection additive comprising zinc borate; paragraph [0033]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the zinc borate of Reinheimer in the coating composition of Chauvette because having zinc borate incorporates fire protection into the coating composition.
Regarding claim 85, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selective strippable coating comprising the boron agent being zinc borate.
However, Reinheimer discloses a composition comprising a boron agent being zinc borate (fire protection additive comprising zinc borate; paragraph [0033]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the zinc borate of Reinheimer in the coating composition of Chauvette because having zinc borate incorporates fire protection into the coating composition.
Regarding claim 86, Chauvette discloses the selectively strippable coating of claim 1 as noted above.
Chauvette does not disclose the selective strippable coating comprising the boron agent being a zinc-boron complex.
However, Reinheimer discloses a composition comprising a boron agent being zinc-boron complex (fire protection additive comprising zinc borate; paragraph [0033]).
It would have been obvious to one of ordinary skill in the art to modify the coating composition of Chauvette to include the zinc borate of Reinheimer in the coating composition of Chauvette because having zinc borate incorporates fire protection into the coating composition.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive.
Applicants argue that the buffer of borax/HCl does not read on the claimed acidic boron compound and that evidence has not been provided for an amount of boric acid satisfying the clamed molar ratio requirement and coordination complex functionality.
This argument is not persuasive as the a mixture of borax and HCl would result in reaction resulting in boric acid and sodium chloride.
Also, the molar mass of zinc acrylate is 207.5 g/mol. The molar mass of HCl is 36.12 g/mol. The molar mass of borax is 381.38 g/mol. The molar mass of a mixture of equal amounts of borax/HCl is 208.92 g/mol (0.5 x 381.38 g/mol + 0.5 x 36.12 g/mol). Converting the amounts of at least one agent and buffer into moles would result in 0.005 moles (1/205.5) to 0.289 moles (60/207.5) of modified acrylic zinc completed polymer emulsion and 0.002 moles (0.5/208.92 g/mol) to 0.019 moles (4/208.92) of buffer of borax/HCl. The molar ratio of modified acrylic zinc completed polymer emulsion to buffer of borax/HCl would be 0.263:1 (0.005/0.019) to 144.5:1 (0.289/0.002)
This molar ratio overlaps the claimed molar ratio of metallic agent to boron agent being from about 10:1 to about 1:10 of metallic agent to boron agent.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have the desired pH for the sealer while having the desired coating and sealing property for the composition (cols. 5-6). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, since the modified acrylic zinc completed polymer emulsion contains zinc and is considered to be a metallic agent and the buffer of borax/HCl provides a reaction product of boric acid and sodium chloride and is considered to be an acidic boron compound, the modified acrylic zinc completed polymer emulsion and buffer of borax/HCl would inherently provide coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
Based on these reasons, Chauvette would still suggest claims 1 and 29.
Applicants argue that the overlap analysis does not address the claim as written.
This argument is not persuasive as the amount of modified acrylic zinc completed polymer emulsion and boric acid would overlap the claimed ranges based on the calculation in the rejection noted above.
Applicants argue that the Office Action employs surrogate assumptions that detach from the analysis of the claim language and that the reliance on overlapping ranges is inappropriate because Chauvette does not disclose a range in the same parameter.
This argument is not persuasive as the Examiner is using the molar masses of the components in Chauvette and converting the amounts for the modified acrylic zinc completed polymer emulsion and boric acid into molar amounts to obtain the molar ratio which overlaps the claimed range.
Applicants argue that the claimed functional relationship is not taught.
This argument is not persuasive as since the modified acrylic zinc completed polymer emulsion contains zinc and is considered to be a metallic agent and the buffer of borax/HCl provides a reaction product of boric acid and sodium chloride and is considered to be an acidic boron compound, the modified acrylic zinc completed polymer emulsion and buffer of borax/HCl would inherently provide coordination complexes with the carboxylic acid functionalities of the one or more organic polymers, the coordination complexes enhancing adhesion of the coating during service while rendering the coating selectively strippable upon treatment with a stripping agent.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/ Examiner, Art Unit 1785
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