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 § 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 9-16 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], 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 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 have optimized Fichtner to add the teachings of Yang and provide wherein said the “Optifilm Enhancer 400” [0014] and the range, into the composition development, which can further lead to the product development 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 Claims 15-16, Fichtner and Yang teach the claimed composition and ranges, hence, the mastic and caulk, are the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Conclusion
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.
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/Z.L./
Examiner, Art Unit 1767
/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767