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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2025 has been entered.
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.
Claim(s) 1-7, 12-19, and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20130245155A1(US’155) evidenced by WO 2008/135209 A1(See page 16, lines 23-26).
Regarding claims 1-2, 6 - 7 and 22 - 23, US’155 discloses a composition comprising between 12 wt % and 45 wt % of a hydrophilic binder;
between 30 wt % and 80 wt % of a filler (Krono 2315, which is read on the claimed pigment; WO 2008/135209 A1 discloses that examples of commercially available pigments include Kronos™ 2160, 2340, 2315, 3645, 2222, 2305 (available from Kronos);
0.05-2 wt % of a thickener (such as xanthan gum);
a silica sol of surface modified colloidal silica in an amount of between 0 wt % and 15 wt %; and between 10 and 50 wt % of water. See claim 1; and [0007-0010; 0039; 0041; 0109; 0107 and 0122].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claims 3-4 and 12-14, US’155 discloses that the silica is Bindzil® CC30 and CC40, epoxy-silane surface modified colloidal silica's of Akzo Nobel with a total solids content of 30 wt % and 40 wt % respectively, which has the claimed silane structure and the particle size. See [00107].
Regarding claims 5 and 15-17, US’155 discloses that the pigment such as Krono 2315 hast the claimed size.
Regarding claims 18-19, US’155 discloses that the thickener is xanthan gum.
Response to Arguments
Applicant's arguments filed 02/26/2025 have been fully considered but they are not persuasive.
The applicant argues that Krono 2315 is a filler not a pigment. The Examiner respectfully submits that Krono 2315 can be treated as a pigment. WO 2008/135209 A1 discloses that examples of commercially available pigments include Kronos™ 2160, 2340, 2315, 3645, 2222, 2305 (available from Kronos).
The applicant argues that Titanium oxide used as fillers are different from the titanium oxide used as pigments.
The Examiner respectfully submits that the applicant claims any kind of pigment available. The applicant failed to provide any factual evidence to show that Krono 2315 cannot be a pigment. In fact WO 2008/135209 A1 discloses that examples of commercially available pigments include Kronos™ 2160, 2340, 2315, 3645, 2222, 2305 (available from Kronos).
The applicant argues that the Office cannot assume that the Kronos 2315 is a pigment or could even be used as such and if used as a pigment, given the differences in particle size, crystal structure, etc. described above, it is unlikely that the Kronos 2315 would even achieve the goal of acting as a pigment.
The Examiner respectfully submits that WO 2008/135209 A1, which discloses that examples of commercially available pigments include Kronos™ 2160, 2340, 2315, 3645, 2222, 2305 (available from Kronos). See page 16, lines 23-26. Thus, Krono 2315 can be treated as pigment. Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., particle size, crystal structure, properties, etc) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Please note the applicant claims the pigment has a size up to or larger than 10 microns.
The applicant argues that the reference does not disclose Kronos 2315 for use as a pigment and does not disclose 30-80 wt % of any sort of pigment.
The Examiner respectfully submits that US’155 discloses a composition comprising between 12 wt % and 45 wt % of a hydrophilic binder; between 30 wt % and 80 wt % of a filler (Krono 2315, which can be treated as a pigment evidenced by WO 2008/135209 A1, which discloses that examples of commercially available pigments include Kronos™ 2160, 2340, 2315, 3645, 2222, 2305 (available from Kronos).
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731