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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/4/2026 has been entered.
Claim Objections
Claims 2-11 and 25 are objected to because of the following informalities: “A quick drying aerosol” must be changed to “The quick drying aerosol” in each dependent claim. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: A comma must be added between “ethers” and “esters”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The volume ratio in claim 1 is indefinite. The limitation “such that volume ratio to the aerosol composition” does not make it clear that the ratio is a ratio of propellant to aerosol composition. In claim 9 only the aerosol composition, is specified in the claim. Two components are needed for determining the claimed ratio range.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The range of claim 4 is higher than is permitted by claim 1. Claim 1 only permits up to 15 wt% of a resin in the aerosol composition.
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.
Claim(s) 1-11 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 1295285C) in view of Grigoletto et al. (WO 2017/064551).
Regarding claim 1-6, 8, 9 and 11: Wang teach an oven cleaning composition that is an aerosol composition comprising 63 wt% of an emulsion comprising 1kg of polyvinyl chloride (28 wt%), 0.9 kg of cyclohexanone (25 wt%) and 1.7 kg of acetone (47 wt%); and 37 wt% (2.1 kg) of acetone (claimed non-aqueous carrier/solvent); and 0.3 kg of cyclohexane (an additional solvent permitted by the open language, comprising); the composition comprises 17 wt% polyvinyl chloride based on the aerosol composition; and 9-10.8 kg dimethyl ether as a propellant to 6kg of aerosol composition [0014].
The amounts in Wang (63 vs 60, 28 vs 25, and 37 vs 35) are very close to the claimed weight percentages.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Wang fail to teach a thickening agent or a plasticizer.
However, Grigoletto et al. teach that in an analogous aerosol composition adding 0.1 to 10 wt% of a thickener (page 17, lines 4-6) to adjust the rheological properties (page 15, line 10); and that fumed silica is a thickener (page 21, lines 13-14); and 0.1 to 10 wt% of a non-phthalate plasticizer (page 15, lines 1-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.1 to 10 wt% of a thickener, and in particular fumed silica, and 0.1 to 10wt% of a non-phthalate plasticizer as taught by Grigoletto et al. to the composition of Wang and to optimize the amount added for the desired rheological properties, flexibility and film forming properties. The addition of the components will reduce the amount of solvent in the composition. The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Since the composition is the same as claimed, it will possess the claimed volume ratio under the claimed conditions. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 7: fumed silica is structurally similar to the claimed silica. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Response to Arguments
Applicant's arguments filed 3/4/2026 have been fully considered but they are not persuasive.
The Applicant has alleged that Wang includes almost twice the amount of solvent (acetate) than is permitted by the claimed invention. This is not persuasive because the applicant’s invention includes a large amount of solvent, which is not claimed, but is permitted by the instant claims. Instant claim 1 recites 7 to 25 wt% of a solvent in the emulsion. In the instant specification, that would be the polar solvent, which is a minor component in the emulsion [0044]. The emulsion also comprises 40 to 70 wt% of a first groups of solvents [0030]. The components in Wang are very close to the components in the claimed invention. It is just a matter of how you categorize the components as part of the emulsion, or as the non-aqueous carrier/solvent, or as an additional solvent that is permitted by the claims. A significant modification of Wang is not required to meet the instant claims. Adding the additional components of thickening agent and plasticizer to the composition of Wang, will provide the same total solvent content in Wang as is present in the compositions disclosed in the instant specification.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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