DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
Response to Amendment
The amendment of claim 1 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim 1-15, 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsukiyama (JP 2006117812, hereafter Tsukiyama) in view of Tsukiyama et al (JP2006070149, hereafter ‘149).
In setting forth this rejection a machine translation of JP2006070149 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 1-3, 5-11, 13-15, 19-21: Tsukiyama teaches a composition comprising an aqueous polymer dispersion and sodium silicate (example 2). The polymer is formed by free radical polymerization of a monomer mixture comprising 1.1wt% of p-styrene sulfonic acid sodium, 1.1 wt% of a reactive surfactant
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, 1.8 wt% of methacrylic acid, styrene, and 2-ethylhexyl acrylate. The composition has a solid content of 15.2wt% and a pH of 11. The sulfonate monomer can be sodium p-styrene sulfonate or t-butyl acrylamido sulfonic acid (i.e. 2-acrylamido-2-methylpropanesulfonic acid) (0020, 0045). In example 2, the content of vinyl copolymer is 3.76wt%, the content of silicate is 11.25 wt%, the ratio of vinyl copolymer to silicate is 0.334. Tsukiyama teaches the weight ratio of vinyl copolymer to silicate is 1/10 to 10/1. Therefore, one skilled in the art would recognize there are embodiments comprising silicate in an amount overlapping the claimed range, for example when the content of vinyl copolymer is 3.76 wt%, the content of silicate can be in a range of 0.376-37.6wt%. The composition does not contain organic solvents.
Tsukiyama further teaches the resin composition is for inorganic boards and may contain known additives such as pigment [0065].
Tsukiyama does not teach the amount of the pigment.
However, ‘149 discloses a similar water-dispersible resin composition for inorganic board, which can be used as a clear film or a paint by blending with additives such as pigments and teaches the color pigment are used in an amount of 0.01-50 parts by weight per 100 parts by weight of copolymer resin emulsion [0066-0069]. Considering the exemplified solid content of copolymer resin emulsion and the density of coloring pigments, the pigment volume concentration overlaps the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include pigment in an amount like claimed because it is recognized in the art such an amount of pigment is suitable for a coating for inorganic boards.
Alternatively, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of the pigments through routine experimentation in the composition, because the pigment volume concentration is a result effective variable if the concentration is too low the concealing property are insufficient, if the concentration is too high, the film will crack. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 4, 22: Tsukiyama teaches the polymer has a particle size of 30-800nm (0052). Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 12: the carboxylic acid can be acrylic acid, or methacrylic acid [0020]. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claim 17: the polymer has a Tg of -30 to 60°C [0051].
Claim 18: Tsukiyama is silent with respect to the claimed property of the composition. However, the teachings from Tsukiyama have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that one skilled in the art would not look to Tsukiyama 149 because it is directed to such a specific type of coating made to withstand very high temperatures, the argument is not persuasive because 1) the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). 2) the content of the pigment does not rely on if the coating can withstand high temperature or not.
In response to applicant's argument regarding unsupported statement, it is noted that teaching, suggestion, or motivation can be found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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