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 .
Request for Continued Examination
Examiner acknowledges applicant’s Request for Continued Examination dated 12/19/2025. Pending claims are 13-28 and 30. Claim 30 is a method claim, not previously examined directed at different statutory category.
Election/Restrictions
Newly submitted claim 30 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Specifically, newly added claim 30 is directed at a method of forming architectural coating.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
In their response dated 12/19/2025 the applicants cancelled claims 1-12 and amended claims 14 and 15 are now independent claims directed to composition. The last 2 lines of the claim 14 recites that the composition of matter is a water-based architectural coating. Last 2 lines of claim 15 recites that the composition of matter is an oil-based architectural coating. While examiner did reject the claims directed to the use of composition in architectural coatings, the recitation is an intended use. The Patentable weight is given to the product which has to be capable of forming a coating.
Response to Arguments
In their response dated 12/19/2025 the applicants argued following:
With respect to the rejection of claims 12-17, 20, 23-26 over Adams and Butuc the applicants argued that term “paint” is viewed broadly and that Adams teaches paint applied to human body, and remains on the human body until removed. The applicants indicated that claims 14 and 15 have been amended to require architectural coating which is neither suggested or taught by Adams.
Examiner’s response: while amendment requires architectural coating, the manner in which the coating is claimed the composition taught by the prior art has to only capable of being applied to architectural substrate. The claims themselves are directed to composition. As such while Adams discloses a paint, the paint, will be capable of forming a coating on any substrate.
Consequently rejections over Adams and Butuc are maintained and will be restated in order to reflect amendments to the claims.
With respect to claims 18, 21, 22 and 27 over Adams in view of Butuc and Nagasaki the applicants argued that Nagasaki does not teach or suggest composition of matter formed as an architectural coating as such claims 18, 21, 22 and 27 are allowable.
Examiner’s response: With respect to claim 14, please see arguments above. Additionally, Nagasaki was utilize to reject dependent claims directed at diblock and neutral pH, and structure of the diblock. The diblock of Nagasaki is capable of forming coating therefore it is capable of forming architectural coating.
Consequently the prior art of Nagasaki is still applicable against instant claims, the rejection will be restated to reflect amendments to the claims.
With respect to claim 19 over Adams, Butuc, Nagasaki and Dong, the applicants refer to claim 14 and indicate that the polymer of Dong was selected for its biocompatibility and physiochemical properties.
Examienr’s response: For argument directed at claim 14 please see discussion above. The disclosure of Dong was utilize to meet the pH value of the composition as such applicants have not argued the grounds of the rejection.
Consequently, teachings of Dong are still applicable against instant claims.
With respect to the Double Patenting the applicants indicated that terminal disclaimer will be filed once claims are issued. The examiner would like to note that terminal disclaimer has to be filed once claims are found allowable but before the issue fee is paid. Additional ODP rejection is stated.
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.
Claim Rejections - 35 USC § 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 13-20, 23-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 2005/0106117) in view of Butuc (US 2002/0055562) in view of evidence in Creutz article already of record.
With respect to claim 13-16, Adams discloses personal care and cosmetic composition comprising triblock polymers and pigments. Claim 1 of Adams discloses block B as polyethylene glycol and claim 3 of Adams discloses block A as poly(2-(dimethylaminoethyl methacrylate). According to further claims of Adams, the polymer is used in a composition to make hair styling products, styling gels and the like.
The filler of Adams is titanium dioxide in a generic manner, which generically includes all types of titanium dioxide and does not exclude any coatings on the surface thereof.
Butuc discloses composition, which is also used in cosmetic industry, for example, making gels. Butuc clearly discloses that the particulates suspended in the gel include regular titanium dioxide, coated titanium dioxide and surface treated titanium dioxide [0059].
It is well established in the art that pigments or fillers such as titanium dioxide are surface treated or coated for a reason. For example, to improve dispersion, whiteness and light scattering properties just to name a few. The dispersion of alumina coated titanium dioxide was also discussed in the teachings of Cruetz which was applied against instant claim 12 in the non-final rejection, which reference is already of record and now used as evidence. Surface treatments (including coatings) impart functionality to titanium dioxide that would not otherwise be present, which functionality improves interaction between titanium dioxide and polymer. Again, one of ordinary skill in the art would necessarily know this.
Adams further discloses use of carrier or a diluent (Abstract). Adams teaches that the carriers are carefully selected by one skilled in the art and they have to be cosmetically acceptable [0087-0088], and the choice of carrier will depend on will depend on the intended use of the composition. Examples include water, alcohol or cyclomethicone, which is silicon based oil. While term paint is not explicitly taught by Adams, term “paint” is viewed really broadly, and a composition that can be coated on a substrate and remain there. As such, the composition of Adams and Butuc are capable of being applied to a surface of architectural surface and remain in both aqueous and oil-based form.
With respect to claim 17, formulations are kept at room temperature, which meets the claimed range.
With respect to claim 18, while the pH of the formulation is not explicitly taught, the formulations of Adams are aqueous with ethanol is slightly above 7, because pH of ethanol is 7.3.
With respect to claim 19, while not explicitly taught the addition of sodium benzoate to the aqueous composition raises the pH to around 8.0 because sodium benzoate is a strong base so water solution will hydrolyze it creating OH-. The pH will increase with increasing amount of sodium benzoate making it suitable for coatings in aerosol formation for spraying.
With respect to claim 20, the polymer is utilized as a thickener in an amount of 0.01-10 wt.% which meets claimed range. The range was calculated based on solids content of applicant’s table 5 (Standard formulation) where the content of triblock is 3.85 % based on the content of solids.
With respect to claims 23 and 28, Adams teaches triblock of PDMAEMA-PEG-PDMAEMA that meets the formula of claim 28 [0140]. PEG has 5-500 repeat units [0064].
With respect to claim 24, while the ratio of the blocks has not been explicitly recited such can be inferred from the examples. In example 2, PEG has molecular weight of 5,500. PDMAEMA is the PDMAEMA from example in [0148] having molecular weight of 5000. (Note in examples 1-3 Adams varies the size of the PEG block not PDMAEMA), as such the ratio of the blocks is approximately 1:1:1.
With respect to claim 25, Example 2 of Adams discloses molecular weight of PEG at 5,500 [0158], however, number of repeat units n disclosed [0064] clearly renders it obvious to utilize shorter of longer PEG.
With respect to claim 26, PDMAEMA of Adams has molecular weight in a range of 1000-500,000 [0044]. See also example [0158].
Claims 18, 19, 21, 22 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US 2005/0106117) in view of Butuc (US 2002/0055562) as applied to claims 13-20, 23-26 and 28 above, and further in view of Biggs (WO 2010/038046) as evidenced by Cruetz and Dong article.
Discussion of Adams and Butuc from paragraph 1 of this office action is incorporated here by reference.
The teachings of Adams are directed to coatings formed diblock polymer based on DAEMDA and PEG. However Adams does not show that triblocks can also be utilized to form a coating.
Biggs discloses AB block polymer, which are diblocks and form coatings. Biggs defines AB diblocks as regular diblock or triblocks (page 19, 2nd paragraph). It is also preferred that the polymers be diblocks having AB configuration of triblocks having ABA configuration (Page 19, 4th paragraph),
With respect to claims 21 and 27, the monomers of Biggs are selected so that one block is hydrophilic and second hydrophobic to impart self-cleaning to the polymer. Block A being hydrophobic block, and block B being hydrophilic block. The block polymers are incorporated into a solvent system, which include water, organic solvent as well as combination of water and organic solvent (aqueous) (Page 9). One condition is that hydrophilic block has to be soluble in water.
Hydrophobic block A comprises compound of formula B (Page 10):
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With preferred compound alkylaminoalkyl acrylates and methacrylates (page 16 bottom of paragraph 4) having formula 2 (pages 10-11):
Wherein R1 is hydrogen or methyl, R2 is hydrogen, n is an integer and R2 and R3 are methyl. The integer n is defined as being in a range of 1 to 5 encompassing group having 2 carbon atoms (ethyl).
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Formula 2 of Biggs encompasses DMAEMA of Adams and its homolog is used in examples.
Hydrophilic block of Biggs can be selected from many (see page 17), and include compounds such as polyethylene oxide which also meets structurally the limitation of PEG. Biggs also specifically discloses glycols in generic manner.
With respect to claim 22, the ratio of monomer making the AB structure of the diblock of Biggs is as follows (bottom of page 15):
Units A are utilized in amount of 5-100
Units B are utilized in amount of 15-300
The content of units A and B overlaps with the content units of Adams in a triblock and with the content of units of the instant invention. Consequently the ratios of the A and B units such 1:1 is encompassed by the range disclosed in Biggs.
With respect to claims 18 and 19, if the applicants do not agree with examiner’s interpretation of the pH, Biggs teaches the polymers disclosed there in as well as polymers of Adams are stimuli-responsive polymers which respond to small changed in environment such as pH. In order to be utilized in coatings and surface treatments the stimuli responsive polymers because of that feature (p. 7, 1st full paragraph).
Biggs further teaches that properties of these polymers can be tuned using pH to influence size of the micelles and adhesion to the surface (page 23). Consequently the pH of the polymer of Adams have to be within the same as those of instant invention in order to ensure the adhesion of the polymer to the surface to be coated.
While the hydrophilic block of Biggs may be selected from many, the important aspect of this reference, is that if the compound of Adams is a diblock or triblock, it will still form film. Biggs equates the two as functional equivalent on page 19 where AB block copolymer can be equally diblock or triblock to be capable of forming coating composition.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize polymer of Adams as either diblock or triblock and still obtain instant invention. This is because both diblock and triblock polymers having DMAEMA and PEG as block will be capable of forming a coating on architectural surface.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-15, 17, 21-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7, 11, 14-16, 17-20 of copending Application No. 18/830,711. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1,2, 5 and 7 of co-pending application ‘711 discloses composition comprising PEG:PDMAEMA block copolymer which is used with titanium dioxide of claim 20. Claim 2 of ‘711 further states that block copolymer can have multiple blocks which include diblock and triblock (also in claim 3).
Claim 11 states that the molar ratio of PEG to PDMAEMA is 1:0.1 to 1:5.
Claim 19 discloses use of solvent carrier and pigment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-26, 29-30 of co-pending Application No. 18/530,417 (‘417). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 13 of ‘471 discloses use of diblock and/or triblock polymers comprising PEG block and PDMAEMA and carrier. Which meets instant claims 13 and 14
Claims 14 and 16 of ‘471 disclose aqueous composition which is latex paint which meets instant claim 14.
Claim 15 of 471 discloses that composition is oil based composition which meets instant claim 15.
Claim 17 of ‘471 is identical to instant claim 17.
Claims 18 and 19 of ‘471 disclose the same pH values as instant claims 18 and 19.
Claim 20 of ‘471 discloses the same amount of diblock as instant claim 20.
Claim 21 of ‘471 limits the polymer to diblock which is the same as instant claim 21.
Claim 22 of ‘471 discloses ratio between PEG and PDMAEMA which is the same ratio as that of the instant claim 22.
Claim 23 of ‘471 limits invention to triblock which is also the limitation of instant claim 23.
Claim 24 of ‘471 discloses ratio of the triblock polymer that is within the same range as the ratio of the instant claim 24.
Claim 25 of ‘471 discloses molecular weight of PEG that encompasses the molecular weight weight of the PIG of the instant claim 25.
Claim 26 of ‘471 discloses molecular weight of PDMAEMA which encompasses the molecular weight of the instant claim 26.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 15, 2026