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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/28/2026 has been entered.
Election/Restrictions
Claims 16-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Applicant is advised that should claim 7 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-5, 8-12, 14 and 15 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wu et al. (CN 107001844).
In the abstract, ¶’s 76-78, and claims, Wu et al. teach a low VOC coating composition, comprising:
an acrylic latex polymer with a glass transition temperature of 0 degrees centigrade to 60 degrees centigrade;
0.1-7% by weight of a glycol ether solvent such as dipropylene glycol methyl ether, propylene glycol n-butyl ether, dipropylene glycol n-butyl ether or diethylene glycol methyl ether (See ¶ 66); and
0.1 to 4.3% by weight of a silica.
In ¶ 83, Wu et al. teach 0.001 wt % to 10 wt % of an additive such as humectants, biocides, plasticizers and adhesion promoters in the aqueous coating composition.
In ¶ 69, Wu et al. also teach that the aqueous coating composition may further comprise one or more thickeners.
While Wu et al. do not expressly teach each of the disclosed properties of the claimed coating composition, i.e. coalescence, water vapor permeance, etc., it is reasonable that the coating composition in Wu et al. would possess the presently claimed properties since the prior art coating composition is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 7 and 21 is/are rejected under 35 U.S.C. 103 as obvious over Wu et al. (CN 107001844) in view of Coward et al. (US 2006/0207476) or Ono et al. (TW 200411022).
Wu et al., above, differ from the claimed invention in that they do not exemplify the humectants to include the humectants recited in the claims. However, it is known in the art to use polyhydric alcohols, glycerin, glycols, sorbitol or glycerol as humectants for coating compositions, such as taught in ¶ 40 and claim 18 of Coward et al. and page 21 of Ono et al., for the purpose of retaining moisture in the composition
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to recognize the polyhydric alcohols, glycerin, glycols, sorbitol or glycerol humectants taught in Coward et al. or Ono et al. as the humectants taught in the coating composition of Wu et al, motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 09/28/2026 have been fully considered but they are not persuasive.
Applicant argues the “Wu discloses a composition that not only comprises silica as a filler, but further requires titanium dioxide which was also recited in the previously examined claim 1 as a filler” and further argues that “the ‘filler’ component of Wu's composition as defined in claim 1 includes both silica and titanium dioxide, and the amount significantly exceeds 2-10% by weight.”
Applicant’s argument is not persuasive as their arguments are not consistent with what is actually being claimed, particularly in light of the specifications. Contrary to applicant’s arguments, the amendments do not change the Examiner’s interpretation of the claimed subject matter. The claims are read in the context of the specification (See ¶ 26), and it is still clear that the 2% to 10% recited in claim 1 is in reference to the filler content, even if the paragraph is rearranged, and the filler is still selected from one of the name fillers, including the silica.
Further, if the Examiner were to interpret the amended claims as claiming 2% to 10% separately and independent of the fillers, claiming the total content of any compound listed between the kaofin clay and the carbon black is 2% to 10% (or 2% to 5% in claim 12), the Examiner would have to make a finding that new matter has been added to the claims, as there is no support for limiting the total of “any” of the compounds listed to 2% to 10% in the originally files specification; wherein the “comprising” language allows for the presence of compounds not specifically claimed as fillers in the composition, including other compounds included among the list of fillers. At which case a rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph would be made, as the claims would fail to comply with the written description requirement, as containing subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 10, Wu et al. teaches glycol ethers in the composition, which are freeze-thaw additives.
All of applicant’s other arguments stem from their above misconstruction of the claims, thus they are not persuasive.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
