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 .
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.
Claims 17-18 are 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. Specifically, claim 17 broadens the scope of the solids contents into “at least 75 wt%” indicates from 75% to more than 95%; claim 18 broadens the scope of the solids contents into “at least 80 wt%”, indicates from 80% to more than 95%; whereas claim 9 recites a narrower “solids content in the range from 60 wt % to 95 wt %”. For the purpose of further examination, it is taken to mean in claim 9 that “solids content in the range from 60 wt % to 95 wt %”.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-14, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fichtner et. al., (US20090069495, herein Fichtner), in the view of Yang et. al, (US20090149591, herein Yang).
Regarding Claims 9, 12, 13, 14, Fichtner teaches pigmented latex composition [0018] for the inventive coating compositions are used, for example, as synthetic resin-bound plasters, paste-form tile adhesives, paste-form sealants and paste-form sealing compositions, preferably for porous components, [0129], read on caulks composition, comprising:
wherein the pigmented latex composition has “solids contents of from 20 to 70% by weight,” [0105] overlaps the claimed range, comprising “polyvinyl ester dispersions comprising, vinyl acetate and ethylene” [0089] and a plasticizer [0134];
Fichtner teaches “plasticizer” [0134], Fichtner is silent on wherein the pigmented latex composition comprises one or more plasticizers out of the group of polyethylene glycol diesters with 3 to 10 ethylene glycol units of C1-C10 alkyl carboxylic acids, wherein the carboxylic acids are identical or different and being branched or unbranched alkyl carboxylic acids. However, Yang teaches “Optifilm Enhancer 400” [0014] matches the plasticizer structure with 4 ethylene glycol units C8 alkyl carboxylic acids, as evidenced by CAS Registry Number: 105921-51-5 [Scifinder], structure see below, and in the range of “about 0.1 to 5.0 wt %” [0018] overlaps the claimed range.
In the case 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 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
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Fichtner and Yang are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the inorganic pigment based latex paint composition development for coating application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the “Optifilm Enhancer 400” [0014] and the range, into the composition formation, which can further lead to the product of “Optifilm Enhancer 400, which is a very low VOC, low odor coalescent that gives good film integrity, touch-up properties and scrub resistance.” [0014] as taught by Yang.
Regarding Claims 10, 11, Fichtner teaches “The preferred monomers of this type include vinyl acetate,” [0044] in the range of “at least 40% by weight” [0045] overlaps the claimed range;
“comonomers, such as ethylene, is up to 50% by weight” [0047] overlaps the claimed range.
“α,β-unsaturated monocarboxylic acids; is up to 5% by weight” [0048] lies in the claimed range.
In the case 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 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 19, Fichtner and Yang teach the claimed composition and ranges as set forth in claim 9 above, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Fichtner and Yang teach all of the claimed ingredients in the claimed amounts, and teaches the composition as being made by a substantially similar process as of sufficiently mix the ingredients; and, while continuing to stir and/or grind [0041] as taught by Fichtner. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. flexibility at low temperature, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fichtner et. al., (US20090069495, herein Fichtner), and Yang et. al, (US20090149591, herein Yang) as applied in claim 9, in the view of Bumanlag et. al, (US5753742, herein Bumanlag).
Regarding Claims 17-18, Fichtner and Yang teach the claimed composition and ranges as set forth in claim 9 above. Fichtner does not explicitly teach the solid contents at least 80%, however, Bumanlag teaches total solids content of from 75 to 95 percent. [C10; L18] lie in the claimed ranges. Fichtner and Bumanlag are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the inorganic pigment based latex composition formation for sealant application. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to add the total solids content of from 75 to 95 percent. [C10; L18], into the composition formation, which can further lead to the desired property as of the sealants and caulks which exhibit excellent rheological, thixotropic, adhesive, low-shrinkage, and quick drying properties [C6; L9] as taught by Bumanlag.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
In response to the applicant’s argument of the “a person of ordinary skill in the art would not have a reasonable expectation of success when taking the teachings relating to paint formulations and trying to apply them to a completely and fundamentally different application like caulks and mastics”, the argument is not persuasive.
In fact, Fichtner explicitly teaches the inventive coating compositions are used, for example, as synthetic resin-bound plasters, paste-form tile adhesives, paste-form sealants and paste-form sealing compositions, preferably for porous components, [0129] which read on caulks composition, as set forth above.
In response to applicant's argument that Yang is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, as analogous art, Yang teaches specific plasticizer and the range which can lead to the good film integrity, touch-up properties and scrub resistance [0014] as taught by Yang, further matches the inclusion of a polyethylene glycol diester plasticizers suppresses the Tg of the polymer binder and produces a caulk that consistently meets the requirements of ASTM C834, including the mandrel bend test. [Instant App. US20220403139; 0011], which is known for the coating integrity, and further lead to excellent strength, flexibility and workability, as well as extension-recovery and barrier properties [Instant App. US20220403139; 0048].
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, Fichtner and Yang teach the claimed composition and ranges as set forth above, which collectively lead to the inventive coating compositions are used, for example, as synthetic resin-bound plasters, paste-form tile adhesives, paste-form sealants and paste-form sealing compositions, preferably for porous components, [0129] which read on caulks composition as taught by Fichtner; and the good film integrity, touch-up properties and scrub resistance [0014] as taught by Yang, which further collectively match the excellent strength, flexibility and workability, as well as extension-recovery and barrier properties [Instant App. US20220403139; 0048].
Conclusion
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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