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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-9, 11-12, 15-16, and 25-30 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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.
Claim 1, line 4, and Claim 28, line 4, each read “a dampening layer… removable from the backing layer”. While there is support in paragraph 0013 of the present specification, and in Claim 16, to claim the composite article comprises a release layer which facilitates the removal of the dampening layer from the backing layer, there is not support to broadly claim the dampening layer is removable.
Claims 2-3, 5-9, 11-12, 15-16 and 25-27 are rejected as dependent on rejected Claim 1, and Claims 29-30 are rejected as dependent on rejected Claim 28.
Claim 1, lines 15-16, reads, “E) a surfactant component present in an amount of from 0.05 to five part(s) by weight based on 100 parts by weight of the composition”. While there is support in paragraph 0045 of the present specification to claim the surfactant in an amount of “about 0.05 to about 1 part(s)”, there is no support to claim an upper limit of 5 parts.
Examiner acknowledges applicant’s remarks regarding 0050 of the specification, which incorporates additional amounts disclosed in the documents cited therein. However, para 0050 is directed to “other components”. Since the surfactant is specifically described in para 0045 of the present specification, it would not be considered one of the “other components”.
Claims 2-3, 5-9, 11-12, 15-16 and 25-27 are rejected as dependent on rejected Claim 1.
Claim 1, lines 17-18, reads, “F) an inorganic filler component present in an amount of from 0.01 to75 part(s) by weight based on 100 parts by weight of the composition”, and Claim 9 reads “the inorganic filler component F)… is present in an amount of from about 0.01 to about 50 part(s) by weight based on 100 parts by weight of the composition”. While there is support in paragraph 0049 of the present specification to claim the filler in an amount of “about 0.01 to about 1 part(s)”, there is no support to claim an upper limit of 100 or 50 parts.
Examiner acknowledges applicant’s remarks regarding 0050 of the specification, which incorporates additional amounts disclosed in the documents cited therein. However, para 0050 is directed to “other components”. Since the filler is specifically described in para 0049 of the present specification, it would not be considered one of the “other components”.
Claims 2-3, 5-9, 11-12, 15-16 and 25-27 are rejected as dependent on rejected Claim 1.
Claim 28, lines 15-18, reads, “E) a surfactant component present in an amount of at least 0.05 part(s) by weight based on 100 parts by weight of the composition; and F) an inorganic filler component-present in an amount of at least 0.01 part(s) by weight based on 100 parts by weight of the composition”. While there is support in paragraph 0045 of the present specification to claim the surfactant in an amount of “about 0.05 to about 1 part(s)”, there is no support to claim any amount of “at least 0.05 part(s)”. Similarly, while there is support in paragraph 0049 of the present specification to claim the filler in an amount of “about 0.01 to about 1 part(s)”, there is no support to claim any amount of “at least 0.01 part(s)”.
Examiner acknowledges applicant’s remarks regarding 0050 of the specification, which incorporates additional amounts disclosed in the documents cited therein. However, para 0050 is directed to “other components”. Since the surfactant and filler are specifically described in paras 0045 and 0049 of the present specification, they would not be considered one of the “other components”.
Claims 29-30 are rejected as dependent on rejected Claim 28.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 5-7, 9, 11-12, 15, and 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Xin et al. (US 2015/0353759 A1) in view of Goto et al. (JP 10-230212 A) and Jung et al. (WO 00/55268 A1).
Regarding Claims 1-3, 5-6, and 9, Xin discloses a coating composition applied to a substrate (para 0008) (i.e. backing layer) where the composition comprises 5-50 wt% first acrylic resin made from methyl methacrylate and butyl methacrylate (paras 0012, 0023), 5-45 wt% second acrylic resin made from methyl methacrylate and butyl acrylate (paras 0012, 0023), 5-40 wt% organic solvent (para 0026), 0.01-10 wt.% surfactant (para 0029), plasticizer (para 0030), and filler (para 0030). Xin further discloses the substrate may be polymeric (para 0033). The coating is cured (paras 0026-0027) (i.e. is in a solid form).
While Xin discloses the coating is used on metal cans and flexible packaging (para 0038), there is no disclosure in Xin of the amount plasticizer or the amount of filler.
Goto discloses a coating for metal and/or plastic packaging materials (para 0053), that comprises up to 15% plasticizer including ester-based plasticizers to impart flexibility and softness (para 0051).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition using up to 15% ester-based plasticizer. Doing so would impart flexibility and softness.
Jung discloses coating composition for metal substrate including metal cans (page 1, lines 11-16), where the composition comprises acrylic resin (page 35, line 15) and 0-25 wt% inorganic filler such as fumed silica to improve physical properties (page 36, lines 1-12).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin in view of Goto to incorporate the teachings of Jung to produce the coating composition using 0-25 wt% inorganic filler such as fumed silica. Doing so would improve physical properties.
Although there is no disclosure that the polymer coating forms a “dampening layer” that is “removable”, given that Xin in view of Goto and Jung discloses a polymer coating as claimed, including amounts and types of materials as claimed, it would inherently be removable as claimed and would function as a dampening layer as claimed.
Regarding Claim 7, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the surfactant may be ethoxylated nonyl phenol polyether (i.e. nonionic surfactant) (para 0029).
Regarding Claim 11, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating has a thickness of 0.04-4 mils (para 0035), however, there is no disclosure of the thickness of the substrate or backing layer.
However, Goto discloses that the thickness of the substrate to which the coating is applied is preferably 0.1-0.5 mm or 3.93-19.6 mils depending on the type of metal and the use or size of the container (para 0058).
Therefore, it would have been obvious to one of ordinary skill in the art to use a substrate (i.e. backing layer) in Xin that has thickness of 3.93-19.6 mils depending on its end use and thereby arrive at the claimed invention.
Regarding Claims 12 and 15, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating composition forms a layer (i.e. dampening layer) on the substrate (i.e. backing layer) (para 0033). While Xin discloses additional layers may be used, Xin also discloses the coating composition may be used alone (para 0036) (i.e. the article may consist of the coating composition and the substrate).
Regarding Claim 26, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating is flexible and extensible (i.e. elastic)(para 0037).
Regarding Claim 27, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating is flexible and extensible (i.e. elastic)(para 0037). Since the coating composition comprises the materials as claimed, and is disclosed to be flexible and extensible, it is inherently configured to stretch and engage with a surface as claimed.
Regarding Claim 28, Xin discloses a coating composition applied to a substrate (para 0008) (i.e. backing layer) where the composition comprises 5-50 wt% first acrylic resin made from methyl methacrylate and butyl methacrylate (paras 0012, 0023), 5-45 wt% second acrylic resin made from methyl methacrylate and butyl acrylate (paras 0012, 0023), 5-40 wt% organic solvent (para 0026), 0.01-10 wt.% surfactant (para 0029), plasticizer (para 0030), and filler (para 0030). The coating is flexible and extensible (i.e. elastic)(para 0037). Xin further discloses the substrate may be polymeric (para 0033).
While Xin discloses the coating is used on metal cans and flexible packaging (para 0038), there is no disclosure in Xin of the amount plasticizer or the amount of filler.
Goto discloses a coating for metal and/or plastic packaging materials (para 0053), that comprises up to 15% plasticizer including ester-based plasticizers to impart flexibility and softness (para 0051).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition using up to 15% ester-based plasticizer. Doing so would impart flexibility and softness.
Jung discloses coating composition for metal substrate including metal cans (page 1, lines 11-16), where the composition comprises acrylic resin (page 35, line 15) and 0-25 wt% inorganic filler such as fumed silica to improve physical properties (page 36, lines 1-12).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin in view of Goto to incorporate the teachings of Jung to produce the coating composition using 0-25 wt% inorganic filler such as fumed silica. Doing so would improve physical properties.
Although there is no disclosure that the polymer coating forms a “dampening layer” that is “removable”, given that Xin in view of Goto and Jung discloses a polymer coating as claimed, including amounts and types of materials as claimed, it would inherently be removable as claimed and would function as a dampening layer as claimed.
Regarding Claim 29, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 28 above. Xin further discloses the coating is cured (paras 0026-0027) (i.e. is in a solid form).
Regarding Claim 30, Xin in view of Goto and Jung discloses all the limitations of the present invention according to Claim 28 above. Since the coating composition comprises the materials as claimed, and is disclosed to be flexible and extensible, it is inherently configured to stretch and engage with a surface as claimed.
Claims 1-3, 5-7, 9, 11-12, 15, and 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Xin et al. (US 2015/0353759 A1) in view of Goto et al. (JP 10-230212 A).
Regarding Claims 1-3, 5-6, and 9, Xin discloses a coating composition applied to a substrate (para 0008) (i.e. backing layer) where the composition comprises 5-50 wt% first acrylic resin made from methyl methacrylate and butyl methacrylate (paras 0012, 0023), 5-45 wt% second acrylic resin made from methyl methacrylate and butyl acrylate (paras 0012, 0023), 5-40 wt% organic solvent (para 0026), 0.01-10 wt.% surfactant (para 0029), plasticizer (para 0030), and filler (para 0030). Xin further discloses the substrate may be polymeric (para 0033). The coating is cured (paras 0026-0027) (i.e. is in a solid form).
While Xin discloses the coating is used on metal cans and flexible packaging (para 0038), there is no disclosure in Xin of the amount plasticizer or the amount of filler.
Goto discloses a coating for metal and/or plastic packaging materials (para 0053), that comprises up to 15% plasticizer including ester-based plasticizers to impart flexibility and softness (para 0051).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition using up to 15% ester-based plasticizer. Doing so would impart flexibility and softness.
Goto further discloses the coating for metal and/or plastic packaging materials comprises 30-50% fine particles of titanium oxide, to improve scratch resistance (para 0010).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition comprising 30-50% fine particles of titanium dioxide as the filler. Doing so would improve scratch resistance. The present specification indicates that titanium dioxide is considered a filler (para 0048).
Although there is no disclosure that the polymer coating forms a “dampening layer” that is “removable”, given that Xin in view of Goto discloses a polymer coating as claimed, including amounts and types of materials as claimed, it would inherently be removable as claimed and would function as a dampening layer as claimed.
Regarding Claim 7, Xin in view of Goto discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the surfactant may be ethoxylated nonyl phenol polyether (i.e. nonionic surfactant) (para 0029).
Regarding Claim 11, Xin in view of Goto discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating has a thickness of 0.04-4 mils (para 0035), however, there is no disclosure of the thickness of the substrate or backing layer.
However, Goto discloses that the thickness of the substrate to which the coating is applied is preferably 0.1-0.5 mm or 3.93-19.6 mils depending on the type of metal and the use or size of the container (para 0058).
Therefore, it would have been obvious to one of ordinary skill in the art to use a substrate (i.e. backing layer) in Xin that has thickness of 3.93-19.6 mils depending on its end use and thereby arrive at the claimed invention.
Regarding Claims 12 and 15, Xin in view of Goto discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating composition forms a layer (i.e. dampening layer) on the substrate (i.e. backing layer) (para 0033). While Xin discloses additional layers may be used, Xin also discloses the coating composition may be used alone (para 0036) (i.e. the article may consist of the coating composition and the substrate).
Regarding Claim 26, Xin in view of Goto discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating is flexible and extensible (i.e. elastic)(para 0037).
Regarding Claim 27, Xin in view of Goto discloses all the limitations of the present invention according to Claim 1 above. Xin further discloses the coating is flexible and extensible (i.e. elastic)(para 0037). Since the coating composition comprises the materials as claimed, and is disclosed to be flexible and extensible, it is inherently configured to stretch and engage with a surface as claimed.
Regarding Claim 28, Xin discloses a coating composition applied to a substrate (para 0008) (i.e. backing layer) where the composition comprises 5-50 wt% first acrylic resin made from methyl methacrylate and butyl methacrylate (paras 0012, 0023), 5-45 wt% second acrylic resin made from methyl methacrylate and butyl acrylate (paras 0012, 0023), 5-40 wt% organic solvent (para 0026), 0.01-10 wt.% surfactant (para 0029), plasticizer (para 0030), and filler (para 0030). The coating is flexible and extensible (i.e. elastic)(para 0037). Xin further discloses the substrate may be polymeric (para 0033).
While Xin discloses the coating is used on metal cans and flexible packaging (para 0038), there is no disclosure in Xin of the amount plasticizer or the amount of filler.
Goto discloses a coating for metal and/or plastic packaging materials (para 0053), that comprises up to 15% plasticizer including ester-based plasticizers to impart flexibility and softness (para 0051).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition using up to 15% ester-based plasticizer. Doing so would impart flexibility and softness.
Goto further discloses the coating for metal and/or plastic packaging materials comprises 30-50% fine particles of titanium oxide, to improve scratch resistance (para 0010).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Xin to incorporate the teachings of Goto to produce the coating composition comprising 30-50% fine particles of titanium dioxide as the filler. Doing so would improve scratch resistance. The present specification indicates that titanium dioxide is considered a filler (para 0048).
Although there is no disclosure that the polymer coating forms a “dampening layer” that is “removable”, given that Xin in view of Goto discloses a polymer coating as claimed, including amounts and types of materials as claimed, it would inherently be removable as claimed and would function as a dampening layer as claimed.
Regarding Claim 29, Xin in view of Goto discloses all the limitations of the present invention according to Claim 28 above. Xin further discloses the coating is cured (paras 0026-0027) (i.e. is in a solid form).
Regarding Claim 30, Xin in view of Goto discloses all the limitations of the present invention according to Claim 28 above. Since the coating composition comprises the materials as claimed, and is disclosed to be flexible and extensible, it is inherently configured to stretch and engage with a surface as claimed.
Claims 1-2, 5-9, 11-12, 16, and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Akhtar et al. (US 2008/0264559 A1) in view of Victorius (US 4,451,597 A).
Regarding Claim 1-2, 5-7, 9, and 11, Akhtar discloses polymeric coating comprising 20-50 wt.% acrylic polymer comprising one or more acrylic polymers (para 0016), 2-10% sucrose acetate isobutyrate plasticizer (i.e. ester plasticizer) (para 0016), 54-92 wt.% organic solvent (para 0055), and approximately 0.6% flow improver FX8 which is a mixture of ethylene glycol n-butyl ether and alkoxylated polydimethylsiloxane (paras 0051, 0054) (i.e. nonionic surfactants).
The polymeric coating is coated onto a water release slide paper (i.e. backing layer comprising lignocellulosic material) and has a thickness of 4-7 mils (para 0019). The polymeric coating is cured or dried (i.e. is in a solid form) (para 0019). The polymeric coating is removable from the water release slide paper (para 0081).
The acrylic polymers include butyl methacrylate copolymer (para 0048) (i.e. first acrylic resin) and methyl methacrylate copolymer para (0047) (i.e. second acrylic resin). The first acrylic resin is resistant to gasoline, oil, and grease (para 0047) and the second acrylic resin has superior cohesion (para 0048). Therefore, it would have been obvious to one of ordinary skill in the art to use amounts of first acrylic resin and second acrylic resin, including that presently claimed, in order to produce desired balance of resistance to gasoline, oil, and grease and cohesion.
Akhtar further discloses the polymeric coating may comprise pigments (i.e. filler) (para 0018), but does not disclose a type or amount of pigment.
Victorius discloses a coating composition for exterior finishes comprising binder, comprising acrylic polymer, volatile organic solvent, pigment, and cellulose acetate butyrate (Abstract). Victorius discloses conventional pigments can be used, such as metallic oxides, metal hydroxides, metal flake, carbon black, silica, or talc, in a pigment-to-binder ratio of about 2/100 to 150/100 (Col 7, lines 17-18 and 27-33).
Therefore it would have been obvious to a person having ordinary skill in the art to use a conventional pigment such as metallic oxides, metal hydroxides, metal flake, carbon black, silica, or talc, in a pigment-to-acrylic polymer ratio of about 2/100 to 150/100 in the polymeric coating of Akhtar to provide color.
Since the pigment-to-acrylic polymer ratio is 2/100 to 150/100, and the polymeric coating comprises 20-50 wt.% acrylic polymer, the polymeric coating would have 0.4-75% pigment (20*(2/100) to 50*(150/100)) (i.e. inorganic filler).
Although there is no disclosure that the polymer coating forms a dampening layer, given that the layer is identical to that presently claimed, it would inherently form a dampening layer as claimed.
Regarding Claim 8, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 1 above. Akhtar further discloses the coating can also include pigment (para 0018). Although there is no disclosure of the amount of pigment used, it would have been obvious to one of ordinary skill in the art to use pigment in an amount, including that presently claimed, in order to produce coating with desired tint or color.
Regarding Claim 12, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 1 above. Akhtar further discloses the polymeric coating (i.e. dampening layer) may be coated directly onto the water release slide paper (i.e. backing layer) (para 0019).
Regarding Claims 16 and 25, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 1 above. Akhtar further discloses there can be a release coating between the polymeric coating and the water release slide layer (paras 0034-0035, Fig 1). While additional layers are disclosed, they are not required.
Regarding Claim 26, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 1 above. Akhtar further discloses the coating is flexible (para 0056) (i.e. elastic).
Regarding Claim 27, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 1 above. Akhtar further discloses the coating is flexible (para 0056) (i.e. elastic). Since the coating comprises the materials as claimed, and is disclosed to be flexible, it is inherently configured to stretch and engage with a surface as claimed.
Regarding Claim 28, Akhtar discloses polymeric coating comprising 20-50 wt.% acrylic polymer comprising one or more acrylic polymers (para 0016), 2-10% sucrose acetate isobutyrate plasticizer (i.e. ester plasticizer) (para 0016), 54-92 wt.% organic solvent (para 0055), and approximately 0.6% flow improver FX8 which is a mixture of ethylene glycol n-butyl ether and alkoxylated polydimethylsiloxane (paras 0051, 0054) (i.e. nonionic surfactants). Akhtar further discloses the coating is flexible (para 0056) (i.e. elastic).
The polymeric coating is coated onto a water release slide paper (i.e. backing layer comprising lignocellulosic material) (para 0019). The polymeric coating is removable from the water release slide paper (para 0081).
The acrylic polymers include butyl methacrylate copolymer (para 0048) (i.e. first acrylic resin) and methyl methacrylate copolymer para (0047) (i.e. second acrylic resin). The first acrylic resin is resistant to gasoline, oil, and grease (para 0047) and the second acrylic resin has superior cohesion (para 0048). Therefore, it would have been obvious to one of ordinary skill in the art to use amounts of first acrylic resin and second acrylic resin, including that presently claimed, in order to produce desired balance of resistance to gasoline, oil, and grease and cohesion.
Akhtar further discloses the polymeric coating may comprise pigments (i.e. filler) (para 0018), but does not disclose a type or amount of pigment.
Victorius discloses a coating composition for exterior finishes comprising binder, comprising acrylic polymer, volatile organic solvent, pigment, and cellulose acetate butyrate (Abstract). Victorius discloses conventional pigments can be used, such as metallic oxides, metal hydroxides, metal flake, carbon black, silica, or talc, in a pigment-to-binder ratio of about 2/100 to 150/100 (Col 7, lines 17-18 and 27-33).
Therefore it would have been obvious to a person having ordinary skill in the art to use a conventional pigment such as metallic oxides, metal hydroxides, metal flake, carbon black, silica, or talc, in a pigment-to-acrylic polymer ratio of about 2/100 to 150/100 in the polymeric coating of Akhtar to provide color.
Since the pigment-to-acrylic polymer ratio is 2/100 to 150/100, and the polymeric coating comprises 20-50 wt.% acrylic polymer, the polymeric coating would have 0.4-75% pigment (20*(2/100) to 50*(150/100)) (i.e. inorganic filler).
Although there is no disclosure that the polymer coating forms a dampening layer, given that the layer is identical to that presently claimed, it would inherently form a dampening layer.
Regarding Claim 29, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 28 above. Akhtar further discloses the polymeric coating is cured or dried (i.e. is in a solid form) (para 0019).
Regarding Claim 30, Akhtar in view of Victorius discloses all the limitations of the present invention according to Claim 28 above. Since the coating comprises the materials as claimed, and is disclosed to be flexible, it is inherently configured to stretch and engage with a surface as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11/25/2025, with respect to the rejection(s) of claim(s) 1-2, 5-9, 11-12, 16, 25-26, and 28 under 35 USC 103 over Akhtar in view of Victorius have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is set forth above.
Applicant's arguments filed 11/25/2025, regarding the rejection of record under 35 USC 103 over Xin in view of Goto and Jung have been fully considered but they are not persuasive.
Applicant argues that the polymer coating of Xin cannot be said to inherently form a dampening layer as claimed, because Xin does not disclose the amount of plasticizer or amount of filler as claimed.
The inherency statement as written in the office action filed 09/03/2025 was misplaced. Accordingly, in the present rejection above, Examiner states that Xin in view of Goto and/or Jung discloses a polymer coating as claimed, including amounts and types of materials as claimed, which would inherently function as a dampening layer as claimed.
Applicant argues that, even if the polymer coating of Xin in view of Goto and Jung may function as a dampening layer, this does not establish inherency because it would not necessarily function as a dampening layer.
However, the basis for inherency is not based on mere possibility or probability but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed property is not positively stated by the reference. However, the reference teaches all of the claimed components. Therefore, the claimed property would be inherently necessarily be capable of being achieved by the prior art. If it is applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the applicant and the prior art are the same, one would expect the claimed property to necessarily be present (i.e. naturally flow from the prior art), and thus, the burden is properly shifted back to applicant to show that they are not.
Applicant argues that the rejection under 103 is improper, because Xin, Goto, and Jung are not analogous art to the claimed invention, which is drawn to a dampening layer.
However, since the claims are broadly drawn to a composite article, and since the prior art of record discloses composite articles comprising the same materials as the claimed dampening layer, Examiner maintains that the art is analogous to the claimed invention does read on the article as claimed, with a layer that would function as a dampening layer.
Applicant argues that Goto teaches 0-15% plasticizer, and so the benefits of flexibility could be achieved using 0% plasticizer. Applicant argues there would then be no motivation to use any plasticizer in view of Goto.
However, the disclosure of Goto specifically reads, the composition “can contain a plasticizer for imparting flexibility and flexibility to the film…. These plasticizer may be used in an amount of 15 parts by weight or less per 100 parts by weight of the resin composition” (para 0051). It is clear that Goto teaches the use of some positive amount of plasticizer to impart flexibility, and teaches this amount may be up to 15%. Therefore, there is clear motivation to modify Xin to incorporate this teaching from Goto, and use a positive amount of plasticizer up to 15%.
Similarly, applicant argues that Jung discloses 0-25% inorganic filler such as fumed silica to improve physical properties, and therefore 0% inorganic filler would improve physical properties. Applicant argues there would then be no motivation to use any inorganic filler in view of Jung.
However, the disclosure of Jung specifically reads, “To achieve the full advantage of the present invention, a powder coating composition includes... preferably 0% to about 25% by total weight of the composition, of an inorganic filler. An inorganic filler is included to improve the physical properties of an applied coating composition” (page 36, lines 2-8). It is clear that Jung teaches the use of some positive amount of inorganic filler to improve physical properties, and teaches this amount may be preferably up to 25%. Therefore, there is clear motivation to modify Xin to incorporate this teaching from Jung, and use a positive amount of inorganic filler up to 25%.
Applicant argues that Akhtar and Victorius are non-analogous art.
However, since the claims are broadly drawn to a composite article, and since the prior art of record discloses composite articles comprising the same materials as the claimed dampening layer, Examiner maintains that the art is analogous to the claimed invention and does read on the article as claimed, with a layer that would function as a dampening layer.
Applicant argues that Akhtar does not disclose nonionic surfactant in amount as claimed, and that the nonionic surfactant of paragraph 0069 which is cited in the rejection filed 09/03/2015 is part of the remover, not the polymeric coating.
Examiner agrees that the nonionic surfactant of paragraph 0069 is part of the remover, not the polymeric coating, and therefore the rejection over Akhter in view of Victorius filed 09/03/2015 is withdrawn. New grounds of rejection are set forth above over Akhter in view of Victorius, because Akhtar does disclose the polymer composition comprises approximately 0.6% flow improver FX8 which is a mixture of ethylene glycol n-butyl ether and alkoxylated polydimethylsiloxane (paras 0051, 0054) (i.e. nonionic surfactants).
Applicant argues that Akhtar does not disclose the claimed damping layer comprising a filler given that a pigment as disclosed by Akhtar is not the same as, or interchangeable with a filler as claimed. Similarly, Victorius discloses a pigment and not a filler.
However, given the broadest reasonable interpretation of a filler is a substance added to a product to increase bulk, weight, etc. (Merriam-Webster, “Filler”, definition 1(a)) or a thing that fills/something added to fill space (The Free Dictionary, “Filler” definition 1(a)), the examiner’s position remains that a filler is broad enough to encompass a pigment given that a pigment would increase bulk, weight, etc. by its presence and does fill space. Further, given that the present invention refers to silica as a filler while Victorius refers to silica as a pigment, it is clear that a pigment can be considered a type of filler.
Applicant argues that the examiner must provide documentary evidence and an explanation irrefutably establishing that Xin and Akhtar inherently/necessarily include a damping layer as claimed in light of the examiner’s taking of Official Notice regarding this claim limitation.
However, the examiner has not taken Official Notice that Xin and Akhtar inherently/necessarily include a damping layer. Rather, it is the examiner’s position that given that Xin in view of Goto and Jung, Xin in view of Goto, and Akhtar in view of Victorius each disclose layer identical to that presently claimed, each layer would inherently form a dampening layer as claimed. It is noted that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (See also MPEP 2112.01, I & II.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787