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 .
In view of the appeal brief filed on 1/30/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 18-23 and 25-34 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Cosysns et al. (US 20120121921).
In ¶ 10, and claims 1 and 10-14, Cosysns et al. teach an aqueous (waterborne) coating composition comprising pigments, preferably titanium dioxide (See ¶ 113), and an aqueous polymer dispersion (latex) comprising a polymer prepared from polymerizing by free radical emulsion polymerization of:
from 20 to 75% by weight of tert-butyl (meth)acrylate;
from 25 to 80% by weight of monomer (M1) comprising:
c) at least 50% by weight of main monomer (HM) preferably comprising n-butyl acrylate (See ¶’s 18 and 36 and 38), and
d) at least 0.1 % of secondary monomers (NM) which are particularly preferably (meth)acrylic acid, (meth) acrylamide, itaconic acid, and mixtures of them thereof. (See ¶’s 40 and 41).
It is noted that the Examiner understands the term “the total amount of the monomer composition M” in claims 18, 26 and 27 to mean the total amount of a), b), c) and d) according to the independent claims.
In Example N, Cosysns et al. teaches a polymer comprising:
54.69 wt. % [(210/384)x100] of tert-butyl acrylate,
40.93 wt. % [(157.2/384)x100] of n-butyl acrylate,
2 wt. % [(7.8/384)x100] of acrylic acid, and
2.3 wt. % [(9/384)X100] of acrylamide.
wherein the combined weight of tert-butyl acrylate and n-butyl acrylate are above 90% of the total amount of a), b), c) and d).
In Example S, Cosysns et al. teaches a polymer comprising:
49.78 wt. % [(210/421.8)x100] of tert-butyl acrylate,
46.23 wt. % [(195/421.8)x100] of n-butyl acrylate,
1.85 wt. % [(7.8/421.8)x100] of acrylic acid, and
2.13 wt. % [(9/421.8)X100] of acrylamide.
wherein the combined weight of tert-butyl acrylate and n-butyl acrylate are above 90% of the total amount of a), b), c) and d).
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Response to Arguments
Applicant's arguments filed 1/30/2026 have been fully considered but they are not persuasive.
Applicant argues that (a) t-butyl acrylate and (b) n-butyl acrylate together in the range of 90.0 to 99.8 wt% based on the total weight of the monomers is not disclosed by Cosyns et al. However, Cosyns et al. teach from 20 to 75% by weight of tert-butyl acrylate and from 25 to 80% by weight of the monomer (M1) comprising n-butyl acrylate, based on the total amount of a), b), c) and d). Thus, the 90.0 to 99.8 wt% falls within the upper limits for (a) t-butyl acrylate and (b) n-butyl acrylate taught by Cosyns et al. Further, in each of the Examples N and S, above, monomer a) and b) together are 95.62% and 96.01%, respectively, based on the total weight of the monomers a), b), c) and d) together, which fall within the range of 90.0 to 99.8 wt%.
Contrary to applicant’s arguments, as seen in the teachings of Cosyns et al. cited above, the composition which meets all of the requirements of the claims are taught.
Regarding the lack of listing of the acrylic acid in Table 1, please see the actual text of the examples (N and S) for the amounts of acrylic acid cited above in Cosyns et al.
Regarding the argument that n-butyl acrylate is taught within a group of numerous potential monomers and multiple efforts of picking and choosing would be required to anticipate the claims, it is noted that in ¶ 38, n-butyl acrylate is taught within a small group, which is sufficient to anticipate the use of n-butyl acrylate in the present invention. Further, the examples cited above explicitly require n-butyl acrylate in the claimed range, along with t-butyl acrylate.
Conclusion
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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