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 .
Election/Restrictions
Claims 72-77 and 82-91 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant elected Group II, claims 78-91 without traverse in the reply filed on 3/05/2022.
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) 78, 80 and 81 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 Hart (CA 2,028,316).
In page 4, lines 11-18 and page 7, lines 16-36, Hart teaches a drafting film, which may be applied by electrostatic spray coating (see page 6, line 17-20), comprising an adherent layer preferably comprising from 50 to 150% of filler particles (about 33 to 60% of the dry weight), with about 100% by weight of an acrylic polymer (40 to 66% of the dry weight) (See page 8, lines 4-6), wherein the filler particles preferably are from 0.02 to 0.5 μm, and include calcium carbonate;
wherein the film further comprises a lacquer layer applied over the adherent layer to produce the drafting film, comprising a finely divided particulate filler with an average particle size of up to 15 μm (See page 9, lines 31-35).
In page 7, lines 14-20, Hart also teach the film to comprise viscosity modifiers and dispersion stabilizers (thickeners).
While Hart does not expressly teach the claimed film test, it is reasonable that the film of Hart would possess the presently claimed property since the film of Hart has essentially the same composition as the presently claimed film 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 product 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, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties. " In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990}. A product and its properties are inseparable. Therefore, if the prior art teaches the identical chemical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Thus, even if not anticipated, 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.
If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim(s) 79 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart (CA 2,028,316).
While Hart does not explicitly recite the presence of the phosphoric acid catalyst, according to the present specifications, the catalyst only has a function for the dispersion in the coating process, the advantage of which is not present/relevant in the presently claimed formed film product (See page 30 in the present specifications).
As there would be no advantage from the catalyst in the formed film as claimed, the applicant has failed to show the criticality of the phosphoric acid catalyst in the claimed film. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to arrive at the present film from the teachings of Hart, motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
While applicant argues that Hart does not teach or suggest one filler of an average particle size diameter of 3 microns or less, and another filler of an average particle size diameter of 10 microns or greater in the film, as demonstrated above, Hart teaches both the filler particles from 0.02 to 0.5 microns, and the finely divided particulate filler with an average particle size of up to 15 microns in the film.
As demonstrated above, the applicant has failed to show the criticality of the phosphoric acid catalyst in the formed film and there would be no advantage from the catalyst in the formed film as claimed. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to arrive at the present film from the teachings of Hart, motivated by a reasonable expectation of success.
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
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