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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/14/2025 has been entered.
Claims 13, 15, 17-18, 20-21, 23-24 and 29-39 are pending in the application.
Election/Restrictions
Newly submitted claims 31-39 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Invention I. (Claims 13, 15, 17-18, 20-21, 23-24 and 29-30) and II. (Claims 31-39) are directed to related compositions. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, invention I’s binder composition comprises an alkyd resin and Invention II’s binder composition comprises a styrene acrylic emulsion polymer. Since a styrene acrylic emulsion polymer is not considered an alkyd resin, the inventions are considered mutually exclusive. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
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 Accordingly, claims 31-39 are withdrawn from consideration as being directed to a non-elected invention.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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 does not further limit the coating composition of Claim 13 as the oil-modified polyester resin in the binder composition of Claim 15 synonymous to an alkyd resin as set forth by instant specification [0046]. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 13, 15, 17-18, 20-21, 23-24 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over US2020/0030276 to Scholz et al. (as found on the IDS dated 5/4/2022).
Regarding Claim 13, Scholz discloses a composition applied as a uniform wet coating [0089] i.e., a coating composition wherein example 46 [0380] comprises water (liquid carrier); a solid blend comprising GML (a binder composition); SALCARE SC92 (antimicrobial composition comprising a cationic compound); and a stabilization composition comprising DOSS (an anionic surfactant). As an alternative to GML, Scholz teaches the fatty acid ester of a polyhydric alcohol having the formula (R1-C(O)-O)n-R2; wherein n can be 0, 1 or 2 [0107]. At the broadest meaning, "polymer" means one or more units of monomer. The definition of n=2 means multiple unit; i.e. the fatty acid ester is a polyester and R2 is a polyhydric alcohol. As such, Scholz teaches the binder composition is a polymer selected from an alkyd (polyester + alcohol) i.e., alkyd resin.
Scholz does not particularly teach in the specified example 46 a binder composition that comprises an anionic binder. However, the solid blend as disclosed by Scholz comprises the alkyd resin
and the anionic surfactant DOSS, therefore the alkyd emulsion polymer binder composition is reasonably considered ionic. As such Scholz teaches an anionic alkyd emulsion polymer binder composition comprising an alkyd resin.
Scholz does not particularly teach a silicate compound in this preferred embodiment.
However, Scholz does teach the addition of thixotropes such as laponite (a silicate compound) [0218] added to water-based formulations [0214].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Scholz silicate compound to the embodiment found in example 46 thereby arriving at the claimed invention.
The motivation is that the addition of a thixotrope such as laponite increases the viscosity of a composition [0218] which are preferred to reduce migration as well as to provide substantivity (resistance to removal by fluids) to ensure long-term antimicrobial activity.
Scholz is silent regarding the HLB value of the surfactant DOSS.
However, Scholz teaches the preferred surfactants are those that have an HLB of at least 8 [0157].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include a surfactant with a HLB value between about 10 and about 14 to the embodiment of example 46 thereby arriving at the claimed invention.
The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Scholz shows that an HLB value of greater than 8 is known in the art to be suitable for emulsifying the composition and wetting the surface to aid in contacting the micro-organisms [0154].
Regarding Claim 15, Scholz teaches the coating composition of claim 13, comprising alkyd resin which is also known as oil-modified polyester resin as set forth by instant specification [0046].
Regarding Claim 17, Scholz discloses the coating composition wherein the coating composition comprises 22.51 parts of a solid blend comprising 0.94 parts GML, 0.94 parts mantellic acid, 2.70% DOSS, 8.50 parts SALCARE SC92, and 9.43 parts POLOXAMER (Example 46, [0380]). Therefore the binder component GML at 0.94 parts out of 22.51 total solid blend is reasonably calculated to be included at 4.17 wt% reading on an amount ranging from 4.0 to 80.0 wt%.
Regarding Claim 18, Scholz teaches the addition of SALCARE SC92 (Example 46, [0380]) that comprises poly(2-methacryloxyethyl trimethyl ammonium chloride) [0242] i.e., a quaternary ammonium compound. Poly(2-methacryloxyethyl trimethyl ammonium chloride) i.e., a quaternized natural amino-functional polymer is a preferred group of cationic polymeric thickeners [0223] that is in an amount less than 8 wt% and as little as 0.5 wt% [0217]. As such, Scholz teaches the cationic compound comprises quaternary ammonium compounds present in an amount ranging from about 0.1 wt% to about 10 wt%.
Regarding Claim 20, Scholz discloses the coating composition wherein the thixotropic laponite [0218] can be used in an amount less than 3 wt% and as little as 0.5 wt% [0217] reading on 0.1 to 1 wt%.
Though the prior art range is not identical to the claimed range, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 21, Scholz discloses the coating composition comprising laponite [0218] i.e., lithium sodium magnesium silicate.
Regarding Claim 23, Scholz discloses the coating composition wherein the coating composition comprises 22.51 parts of a solid blend comprising 0.94 parts GML, 0.94 parts mandelic acid, 2.70 DOSS, 8.50 parts SALCARE SC92, and 9.43 parts POLOXAMER (Example 46, [0380]). Therefore the surfactant DOSS included at 2.17 parts out of 22.51 total solid blend is reasonably calculated to be included at 11.99 wt% reading on an amount ranging from 0.2 to 14.0 wt%.
Regarding Claim 24, Scholz discloses the coating composition wherein water is added at 77.49 parts (Example 46, [0380]) reading on 5.0 to 80 wt%.
Regarding Claim 29, Scholz discloses the coating composition of claim 13 as set forth above and incorporated herein by reference.
Scholz does not particularly teach a non-ionic surfactant in the specified embodiment.
However, Scholz teaches the invention can include one or more surfactants to emulsify the composition and help wet the surface and/or to aid in contacting the microorganisms [0154] such as nonionic surfactants [0177].
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to include a secondary non-ionic surfactant in Scholz’s composition.
The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven , 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven , combining various surfactants would have been obvious given their known and shared intended use.
Regarding Claim 30, Scholz discloses the coating composition of claim 13, comprising 2.7 wt% Doss [0380, table 16] and thixotropes such as laponite (a silicate compound) [0218] in an amount of 0.5-8 wt% [0218] therefore reading on a ratio of the surfactant to the silicate compound from about 3:1 to about 1:1.
Response to Amendment
Applicant's arguments filed 9/12/2025 have been fully considered but they are not persuasive.
Applicant states that Scholz fails to disclose or suggest the newly amended limitation of a composition including an anionic alkyd emulsion polymer binder comprising and alkyd resin.
In response, attention is drawn to the updated rejection of claim 13 wherein Scholz teaches an alkyd resin polymer binder that is in an anionic emulsion i.e., anionic alkyd emulsion polymer binder.
Applicant states the binder component disclosed in Scholz is not an emulsion polymer binder and is rather a low-molecular weight antimicrobial/fatty ester. In response, Examiner agrees that Scholz teaches a low-molecular weight antimicrobial/fatty ester. However, under the broadest reasonable interpretation as set forth in the rejection of claim 13, the low-molecular weight antimicrobial/fatty ester is also considered an emulsion polymer binder.
Applicant states the fatty acid ester/polyhydric alcohol compounds disclosesd in Scholz are not alkyd emulsions. In response, Examiner agrees that Scholz teaches fatty acid ester/polyhydric alcohol compounds. However, under the broadest reasonable interpretation as set forth in the rejection of claim 13, the fatty acid ester/polyhydric alcohol compounds are also considered an alkyd emulsion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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