Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3 to 8, 10 and 27 to 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brasen 4,255,308.
This rejection is maintained from the previous office action.
Brasen teaches an acrylic lacquer composition that contains a mixture of three
polymers as described in the abstract. Addition attention is directed to column 1, line 66, through column 2. This describes the Polymer A as containing diethyl amino ethyl methacrylate units and meeting claimed copolymer P1. This also describes the Polymer B as containing a carboxylic acid group and meeting claimed copolymer P2. This also contains a graft copolymer which is the polymerized result of Polymer A and Polymer B. This meets the claimed requirement that P1 and P2 be copolymerized with one another.
Starting in column 2, line 40 and on, Brasen teaches that the monomers for Poly-mer A are first polymerized, followed by the polymerization of monomers for Polymer B. This meets the requirement of polymerizing the copolymer P2 in the presence of P1.
Finally see column 4, lines 41 to 48, which teaches weight amounts of each poly-mer within the amounts as claimed.
In addition to the above, see the working examples, such as Example 1 on line 7, which show amounts that roughly correspond to 71/29. In this manner claim 1 is anticipated.
For claims 3 to 6, 27 to 28 again see the monomers used in Example 1 as they meet these requirements. Also see the teachings in column 2 which teach these monomers as well.
For claim 10, see the abstract which teaches that this is a dispersion. Also note that products of identical chemical composition can’t have mutually exclusive properties. A chemical composition and its properties are inseparable. If the prior art teaches the identical chemical structure, the property applicants claims are necessarily present.
For claims 30 and 31, note that hydroxylated or an anhydride groups are not required and again, see the working examples.
For claims 7 and 81 note that Brasen teaches monomers on column 4, lines 10 and on, that meet the requirement of an alkoxylated group as claimed. See also Example 1 which includes butyl acrylate, an alkoxylated monomer.
Claims 2, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Brasen.
For claim 2, Brasen does not specifically teach the presence of a tertiary amine
in the copolymer that corresponds to P2. However, the monomers for preparing P2 are added to the reaction product of P1. Since the skilled artisan would not have expected the reaction of the P1 monomers to proceed to 100% completion, it follows that the skill-ed artisan would have expected residual monomers from P1 to be polymerized to some degree with the monomers of P2.
In other words, in Example 1 the skilled artisan would have expected at least a portion, even if it is small, of the diethylamino ethyl methacrylate monomer in Portion 1 and 3 to be left unreacted in the reaction vessel such that it would be present in the polymerization of Portion 4 and to some degree be included therein.
In this manner the skilled artisan would have found the requirement of claim 2 to have been obvious.
For claim 11 note that adjusting the amount of solids and solvent in the system of Brasen would have been well within the skill of the ordinary artisan, while balancing the desire not to use an excess amount of solvent while trying to keep the solids content at a useful and operable level. In this manner the skilled artisan would have found a solids content within the claimed range to have been obvious. Note relevant teachings on this point which include the fact that the organic solvent is to be kept as low as possible (column 5, line 20 to 25) while the aqueous medium (which includes water and solvent) is from 40 to 95 wt$ of the composition (column 1, line 40).
For claim 12 see the teachings of useful solvents as found in column 5, line 39, and the solvents in Example 1 which include diethylene glycol monobutyl ether, which contains two ether groups and a hydroxyl group.
Response to Amendment
Applicants’ amendment and arguments dated 4/7/26 have been entered and fully considered. They are not sufficient to establish novelty and/or unobvious of the instant claims.
Applicants rely on the newly added phrase "consisting essentially of" for patent-ability. This phrase limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristics” of the claimed invention. For purposes of searching for and applying prior art, absent a clear indica-tion in the specification or claims of what the basic and novel characteristics actually are this term is construed as equivalent to "comprising".
If applicants contend that any materials in Brasen are excluded by "consisting essentially of” applicants have the burden of showing that the introduction of additional steps or components would materially change the characteristics of the invention. Again, in the absence of any such showing (as at this point in examination) this termed is given the weight of "comprising".
The Examiner stressed sections above to reinforce the fact that the material
affect must be on the claimed invention. Applicants’ arguments are directed to the presence of polymers in the composition of Brasen. Note for instance language such as “removing Polymers A and B from Brasen would change the principle of operation of Brasen…” (bottom of response page 9). This is an incorrect standard for interpreting the phrase “consisting essentially of”. As such these remarks do not overcome the prior art rejection.
In addition to the above, please note that applicants cannot rely on a showing of unexpected results in overcoming an anticipation rejection. It is well settled that the discovery of a new and unobvious property and use does not overcome anticipation when the claimed composition is known.
Claim Objections
Claim 9 is objected to as being based on an independent claim that is rejected but contains allowable subject matter. There is nothing that adequately teaches or suggest the presence of this polyalkoxylated group in the copolymer corresponding to P2 in Brasen. This is consistent with that noted in the previous office action, para. 5.
Conclusion
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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
Mgm
5/5/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
1 The Examiner recognizes that PTO-326 in the previous office action (11/7/25) indicated that claims 7 and 8 were objected to. A full reading of the action makes it clear that this was an unintentional oversight and that claims 7 and 8 were rejected. Applicants did not make note claims 7 and 8 in the response and the Examiner presumes that applicants are aware that claims 7 and 8 were rejected over Brasen.
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