DETAILED ACTION
An Office Action was mailed on 05/21/2025. Applicant filed a Response on 09/22/2025. Claims 2-14 have been amended.
Claims 1-20 are pending.
Applicant’s affirmation of elected claims 1-14, Group I, is acknowledged. Claims 15-20 are withdrawn from consideration.
Claims 1-14 are rejected.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-9, 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Miyagawa et al, JP 2004-218386A (Miyagawa).
The machine translation provided with the IDS filed 08/25/22 (Miyagawa), the original foreign document (Miya-FOR), and the translation of para [0113] and Tables 6-11 (Miya-Tables), are referred to in the below rejection.
Regarding claims 1, 3-4 and 7-8 Miyagawa teaches a floor structure comprising a base coat film and a top coat film (Miyagawa; page 4, lines 128-135). The top coat film (i.e., floor finishing composition) comprises an alkali soluble resin, wherein the alkali soluble resin includes a polymer of ethylenic unsaturated monomers as claimed, e.g., styrene-methacrylic acid ester-acrylic acid copolymer, styrene-methacrylic acid ester-methacrylic acid copolymer, styrene-α-methylstyrene-methacrylic acid ester-acrylic acid copolymer, and styrene-α-methylstyrene-methacrylic acid ester-methacrylic acid copolymer (Miyagawa; page 4, line 158-page 5, line 167). These copolymers comprise methyl (meth)acrylate (i.e., methacrylic acid ester), an α,ß-unsaturated carboxylic acid (i.e., the methacrylic acid of claim 4 or acrylic acid), and an aromatic vinyl monomer (i.e., styrene or α-methylstyrene of claim 7) as claimed. Examiner notes that Applicant’s specification at paragraph [0027] states that the term “ (meth)acrylic acid” means methacrylic acid, acrylic acid, or a mixture thereof.
The alkali soluble resin has a glass transition temperature (Tg) of 50-140oC, preferably 70-140oC (Miyagawa; page 5, lines 174-179). When the Tg is less than 50oC the topcoat may be soft and sticky, resulting in poor durability. When Tg exceeds 140oC the powder resistance is poor (Miyagawa; page 7, lines 252-255 and 259-263). This Tg range overlaps with the claimed range of 105-150oC.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Although there is no disclosure that the test method is conformity with ASTM Method D3418-15, given that the Miyagawa discloses glass transition temperatures as the presently claimed and absent evidence criticality how the glass transition temperature is measured, it is an examiner's position that the glass transition temperature disclosed by Miyagawa meets the claim limitation.
The compositions are aqueous, and may additionally contain a film forming aid (i.e., a coalescing solvent) and a polyvalent metal compound for forming a metal bridge (i.e., a crosslinking agent) as claimed (Miyagawa; page 11, lines 431-434; page 11, lines 451-455; page 12, lines 479-496). Miyagawa’s exemplified topcoat compositions contain film-forming agents and the polyvalent metal zinc oxide ammonium complex (Miya-Tables; paragraph 13 and Table 9, Examples 17-18).
In Tables 1-2, Miyagawa exemplifies resins wherein the monomers comprise less than 25% by weight of α,ß-unsaturated carboxylic ester of C2-10 alcohol based on total weight of the monomers as claimed (claims 1 and 3) (Miya-FOR; pages 18-19, Tables 1-2). See, for example, resin R10 of Table 2 (Miya-FOR; Table 2 on page 19). This resin comprises 10% nBA, 20% MAA, 35% MMA and 35% ST.
nBA is n-butyl acrylate (i.e., α,β-unsaturated carboxylic ester of C4 alcohol), MAA is methacrylic acid, MMA is methyl methacrylate, ST is styrene (Miyagawa; page 15, lines 601-606). Therefore, this polymer contains 10% (i.e., no more than 25% by weight) of the α,ß-unsaturated carboxylic ester of C4 alcohol N-butyl (meth)acrylate as claimed (claim 8). Examiner notes the specification at paragraph [0036] states that “the term ‘(meth)acrylate’ used herein refers to methacrylate, acrylate or mixtures thereof,” when defining the α,ß-unsaturated carboxylic ester of C2-10 alcohol.
Regarding claim 2, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. In Tables 1-2, Miyagawa exemplifies resins wherein the α,ß-unsaturated carboxylic acid comprises about 14% to about 18% by weight based on total weight of the monomers (Miya-FOR; pages 18-19, Tables 1-2). See, for example, R9 in Table 2 wherein the resin comprises 10% nBA, 15% AA, 25% MMA and 50% ST (Miya-FOR; Table 2 on page 19).
nBA is n-butyl acrylate, AA is acrylic acid, MMA is methyl methacrylate, ST is styrene (Miyagawa; page 15, lines 601-606). This composition, therefore, contains 15% acrylic acid, which falls within the claimed range of 14-18% by weight. As noted above, Applicant’s specification at paragraph [0027] states that the term “(meth)acrylic acid” means methacrylic acid, acrylic acid, or a mixture thereof.
Regarding claims 5 and 6, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. In Tables 1-2, Miyagawa exemplifies resins which comprise methyl (meth)acrylate and styrene and/or α-methyl styrene in the claimed amounts (Miya-FOR; pages 18-19, Tables 1-2 and Miyagawa; page 15, lines 601-606). See, for example, R9 in Table 2 wherein the resin comprises 25% MMA (within the claimed range of about 15-55% by weight of claim 5) and 50% ST (within the claimed range of about 30-50% by weight of claim 6); and resin R10 of Table 2 which comprises 35% MMA (i.e., 15-55% by weight) and 35% ST (i.e., 30-50% by weight) (Miya-FOR; Table 2 on page 19).
Regarding claim 9, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. In Tables 1-2, Miyagawa exemplifies resins comprising monomers in the claimed amounts (Miya-FOR; pages 18-19, Tables 1-2). See, for example, R9 in Table 2 wherein the resin comprises 15% AA (i.e., 14-16% by weight of the α,ß-unsaturated carboxylic acid acrylic acid), 25% MMA (i.e., 15-55% by weight methyl methacrylate) and 50% ST (i.e., 30-50% by weight of the aromatic vinyl monomer styrene) (Miya-FOR; Table 2 on page 19).
Regarding claim 11, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. The film forming aids (i.e., coalescing solvents) include, for example, alcohols, polyhydric alcohols and glycol ethers such as diethylene glycol monoethyl ether (claim 11) (page 11, lines 451-455).
Regarding claim 13, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. Miyagawa teaches that the topcoat compositions may comprise a polyvalent metal compound, including those capable of forming a metal bridge (Miyagawa; page 12, lines 479-488).
Miyagawa does not explicitly teach wherein the polyvalent metal compound is present in the range of from about 10% to about 100% theoretical mole stoichiometry based on the α,ß-unsaturated carboxylic acid monomer unit on the polymer as claimed.
While Miyagawa does not explicitly disclose a polyvalent metal range expressed as presently claimed (i.e., from about 10% to about 100% theoretical mole stoichiometry based on the α,ß-unsaturated carboxylic acid monomer unit on the polymer), it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
Given Miyagawa teaches polyvalent metal compounds for metal-bridging, it is clear that the polyvalent metal compound is to provide a crosslinking site in the composition. Therefore, it would have been obvious to one ordinary skill in the art to vary the amount of the polyvalent metal compound, including over the presently claimed, to provide sufficient metal-bridging and the desired degree of crosslinking in the top coat composition, depending on its end use, and thereby arrive at the claimed invention.
Regarding claim 14, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. The topcoat compositions may have a pH of 7-10, which falls completely with the claimed range of about 6 to 10 (Miyagawa; page 5, lines 197-198). The topcoat compositions have a solid content of the dry film after coating of 3 to 35% by mass, which overlaps with the claimed range of about 10 to 30% by weight solids content (Miyagawa; page 12, lines 491-494). In addition to the water-soluble resin discussed above, the compositions may also contain a plasticizer, a wax, a wetting agent, and a slip aid (Miyagawa; page 11, lines 431-434; page 12, lines 494-496). Miyagawa’s exemplified compositions further comprise a defoamer, a preservative and a surfactant (Miya-Tables; para [0113] and Tables 6-11).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Miyagawa as applied to claim 1 above, and further in view of Gray et al, US 2002/0183455A1 (Gray).
Regarding claim 10, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. The film forming aids (i.e., coalescing solvents) include, for example, alcohols, polyhydric alcohols and glycol ethers such as diethylene glycol monoethyl ether (page 11, lines 451-455). Miyagawa further exemplifies a top coat composition comprising 11% by weight film-forming agent (Miya-Tables; para [0113] and Table 6, Example 5).
Miyagawa does not explicitly teach wherein the coalescing solvent is present in an amount of at least 6% by weight and less than 11% by weight, based on total weight of the floor finishing composition.
With respect to the difference, Gray teaches aqueous coating compositions especially useful as floor polish compositions (Gray; Abstract).
The aqueous coatings comprise a two component polymer comprising: (1) a first polymer comprising, as polymerized monomer units: (a) 5-50% of a mono-ethylenically unsaturated monomer containing an acidic functional group such as carboxylic acid; (b) 0-60% of a (meth)acrylic monomer; (c) 0-70% of a vinyl aromatic monomer; (d) 15-90% of (C1-20)alkyl(meth)acrylate ester monomers; and (e) 0-10% of one or more co-polymerizable monomers; (2) a polyfunctional crosslinking agent; (3) 0.1-15% of a coalescing agent; (4) 0-10% additives, and (5) 50-99% water (Gray; [0008]).
When formulated as a floor polish, the composition comprises: (a) the two-component water-insoluble polymer; (b) wax; (c) alkali soluble resin; (d) surfactant, defoamer, leveling agent, plasticizer and coalescing agent; and (e) water (Gary; [0041-0046]).
When component (d) is a coalescing agent, the amount is typically from 0.1-15%, preferably 2-10% by weight, based on the combined weight of (a)-(e). Coalescing agents typically aid in the film formation of floor polishes, and include, for example, ethylene glycol and propylene glycol ethers such as diethylene glycol ethyl ether (Gray; [0049]).
Gray is analogous art as it teaches floor finishing compositions comprising water, a polymer of ethylenically unsaturated monomers, and a coalescing agent.
In light of the motivation provided by Gray to add a coalescing agent in an amount suitable to form a film in floor coating compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the film-forming agent (i.e., coalescing agent) to the compositions of Miyagawa in the preferred amount of 2 to 10% by weight, in order to obtain a floor polish with good film formation. The preferred range of 2-10% by weight overlaps with the claimed range of at least 6% and less than 11% by weight.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Miyagawa as applied to claim 1 above, and further in view of Kibuse et al, JP 2000-034444A (Kibuse).
The attached machine translation of Kibuse is referred to in the below rejection.
Regarding claim 12, Miyagawa is relied upon as teaching the limitations of claim 1 as discussed above. Miyagawa teaches that the topcoat compositions may comprise a polyvalent metal compound, wherein polyvalent metals include, e.g., magnesium, calcium, strontium, iron, cobalt, nickel, zinc, etc., and polyvalent metal compounds for forming a metal bridge such as zinc ammonium acrylate and zinc ammonium malate (Miyagawa; page 12, lines 479-488).
Miyagawa does not teach wherein the claimed polyvalent metal crosslinking agent comprises zinc ammonium carbonate.
With respect to the difference, Kibuse teaches floor polish compositions capable of forming a coating film comprising an acrylic/styrene resin emulsion with a styrene/butadiene copolymer emulsion (Kibuse; Abstract). The floor polish contains a crosslinking agent to improve the durability of the resulting coating film. Examples of crosslinking agents include polyvalent metal salts or complexes capable of metal crosslinking (i.e., forming metal bridges). The polyvalent metals include, for example, magnesium, calcium, strontium, iron, cobalt, nickel, zinc, etc., and polyvalent metal compounds include zinc ammonium carbonate, zinc ammonium acrylate, and zinc ammonium malate (Kibuse; [0008]).
The compositions are aqueous and may additionally comprise a film-forming auxiliary (i.e., coalescing solvent) (Kibuse; page 1, lines 44-45 and page 3, lines 33-37).
Kibuse is analogous art as it teaches an aqueous floor finishing composition comprising an acrylic/styrene resin, a polyvalent metal crosslinking agent, and a coalescing solvent.
In light of the disclosure of Kibuse of the equivalence and interchangeability of using a polyvalent metal salt capable of metal crosslinking/forming a bridge such as zinc ammonium acrylate and zinc ammonium malate as disclosed in Miyagawa (page 12, lines 482-484), with zinc ammonium carbonate as presently claimed, it would therefore have been obvious to one of ordinary skill in the art to use zinc ammonium carbonate as the polyvalent metal compound in Miyagawa in order to improve the durability of the resulting topcoat film, and thereby arrive claimed invention.
Response to Arguments
The amendments filed 09/22/2025 have overcome the objection to the specification and the claim objections previously of record. The amendments have also overcome the 35 U.S.C. 112(b) rejection of claim 8, previously of record.
Regarding the 35 U.S.C. 103 rejection over Miyagawa et al, JP 2004-218386A (Miyagawa), Applicant's arguments filed 09/22/2025 have been fully considered, but they are not persuasive for the following reasons.
Applicant primarily argues:
“Applicants respectfully traverse the obviousness rejection of claim 1 over Miyagawa on the basis that Miyagawa fails to sufficiently teach a polymer with the claimed combination of monomers and with a high glass transition temperature ("Tg") within the claimed range, and that the Tg range is critical based on the experimental data provided in the application.”
Remarks, page 9.
Applicant further explains:
“Table 3 of the present application shows, in relevant part, 3 compositions with a polymer formed from MMA, MAA, and ST. Floor Finishing Composition #1 (in accordance with claim 1) contains a polymer with Tg of 126°C; Floor Finishing Composition Comparative A (not in accordance with claim 1) contains a polymer with a Tg of 75°C; and Floor Finishing Composition Comparative B (not in accordance with claim 1) contains a polymer with a Tg of 82°C. Notably, Floor Finishing Composition #1 showed no development of gray color after 103 days of foot traffic, whereas comparative formulations A and B showed substantially higher development of great after 10 days of foot traffic.”
Remarks, page 10
Regarding the results presented in Table 3 (specification, page 18), Floor Finishing Composition #1 (in accordance with claim 1) only shows using the specific High Tg Polymer #1 which comprises 40% styrene, 30% MMA, 14% IBMA and 16% MAA (specification, [0079], [0083-0088]), while the present claims broadly encompass a polymer of ethylenic unsaturated monomers, wherein the ethylenic unsaturated monomers comprise any proportion of methyl (meth)acrylate, any proportion of any α,β - unsaturated carboxylic acid, any proportion of any aromatic vinyl monomer, and no more than 25% by weight of any α,β - unsaturated carboxylic ester of C2-10 alcohol.
Further, Floor Finishing Composition #1 comprises the specific mixture of coalescing solvents comprising 4.00% by weight diethylene glycol n-propyl ether, 3.00% by weight diethylene glycol ethyl ether and 1.00% by weight ethylene glycol 2-ethylhexyl ether, wherein the claims recite the use of any coalescing solvent in any amount. Floor Finishing Composition #1 contains 2.35% of the crosslinking agent zinc ammonium carbonate solution, while the present claims broadly encompass any polyvalent metal crosslinking agent in any proportion. See specification at [0084-0088].
For these reasons, the single tested Floor Finishing Composition #1 of the claimed invention is not commensurate in scope with the claimed invention.
Further, Polymer #1 in Floor Finishing Composition #1 has a Tg of 126oC as shown in Table 1 (specification, [0083]), while the claims recite polymers having a glass transition temperature of at least 105oC and no more than 150oC. Examiner respectfully disagrees that this single example proves criticality of the claimed glass transition temperature range.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The data also does not show using the polymers having the upper and lower ends of the claimed range of glass transition temperatures. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
2) Applicant further argues:
“To explain Applicants' position that the claimed Tg is critical as compared to the values for polymers described in Miyagawa, claim 1 recites a combination of three main monomers to form a high Tg polymer of a methyl (meth)acrylate monomer ("MMA"), an α,β-carboxylic acid monomer such as (meth)acrylic acid ("MAA"), and an aromatic vinyl polymer such as styrene ("ST"). Relevant actual examples in Miyagawa that include a comparable polymer to that of claim 1 include Examples R9 and R10 in Table 2 of Miyagawa, which have a Tg of 77°C and 95°C, respectively (emphasis added). While Miyagawa teaches a range of Tg for the polymers described therein that may be up to 140°C, Applicants respectfully submit that Miyagawa teaches a host of alternative polymers that are not relevant to the present claims and that Miyagawa only reasonably teaches Tg of up to 95°C for polymers that are comparable to those claimed…
Applicants respectfully submit that clear inferior durability performance of the comparative formulations A and B, which include polymer that is very similar to the relevant polymers of Miyagawa (emphasis added), effectively prove that the range of Tg for the claimed polymer, as set forth in instant claim 1, is critical as compared to the broader range of disclosed Tg values taught by Miyagawa.”
Remarks, page 10.
Examiner respectfully disagrees that Comparative Floor Finishing Compositions A and B are comparative to Miyagawa to prove unexpected results over the teachings of Miyagawa. Showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential). MPEP 716.02(e).
Specifically, Comparative Example A of Table 3 contains Polymer A which comprises a polymer of ethylenic unsaturated monomers having a Tg of 75°C, wherein the ethylenic unsaturated monomers comprise: (a) methyl (meth)acrylate, (b) α,β-unsaturated carboxylic acid, (c) aromatic vinyl monomer, and (d) 27% by weight of α,β-unsaturated carboxylic ester of C2-10 alcohol (specification, [0089]). The specific monomers (b)-(d) are not disclosed, nor are the amounts of the monomer (a)-(c). Further, 27% by weight of α,β-unsaturated carboxylic ester of C2-10 alcohol falls outside the claimed range of “no more than 25% by weight.” Examiner notes that the polymers R9 and R10 of Miyagawa contain all the claimed monomers and include monomer (d) in the claimed amounts, differing only in the Tg. Therefore, Polymer A is not representative of Miyagawa’s closest teaching to the claimed invention.
Comparative Example B of Table 3 contains Polymer B which is DURAPLUS™ 3, an emulsion commercially available from Dow Chemical Company, which was a modified acrylic polymer having a Tg of 82° C (specification, [0090]). The specific monomers of this polymer are not disclosed, and therefore cannot be considered representative of Miyagawa.
Comparative A and B in Table 3 use polymers having a Tg of 75oC and 82oC respectively (specification, page 18). Polymer R10 of Miyagawa is comprised of the claimed monomers in the claimed amounts, differing only in that it has a Tg of 95oC, instead of at least 105oC as claimed. R10 represents closest prior art to the claimed polymers. Further, Polymer R10 of Miyagawa is closer to the claimed invention than Comparatives A and B. Therefore, the data provided by Applicant does not have a proper side-by-side comparison, differing only in the Tg of the polymer, when comparing the Comparative examples to the Examples of the claimed invention. The examples provided in Table 3 also do not compare the closest prior art of record.
For these reasons, the evidence of record is not sufficient to overcome the 35 U.S..C 103 rejection over Miyagawa.
3) Regarding claim 10, Applicant argues:
“… Applicants respectfully submit that amended claim 10 is independently patentable over Miyagawa because the claimed range of coalescing solvent. Applicants note that the Examiner has relied upon example P12 of Miyagawa as the sole teaching of "coalescing solvents" within Miyagawa.”
Remarks, page 11.
Examiner respectfully disagrees because, firstly, example P12 of Miyagawa is not used in the above rejection over Miyagawa in view of Gray. See above Office Action, pages 9-11.
Secondly, Applicant primarily argues that Miyagawa does not expressly teach the claimed coalescing solvent in the claimed range. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
4) Applicant further argues:
“The Examiner has recognized that Example P12 of Miyagawa has a total amount of 11 weight % of ethanol and diethylene glycol monoethyl ether. Applicants' amended claimed range of coalescing solvent in claim 10 is at least 6% by weight and less than 11% by weight, which range does not overlap with the disclosed amount of coalescing solvent of Miyagawa. In the Examples, Applicants demonstrated reliable results with a coalescing solvent value under the 11% found in Miyagawa. Similarly, applicants demonstrated that coalescing solvent values under 6% by weight did not produce reliable results. As such, Applicants respectfully submit that the range of coalescing solvent claimed in amended claim 10 is shown to be critical and, therefore, independent patentable over the teachings of Miyagawa.”
Remarks, page 11.
Examiner respectfully disagrees because Example 5 and the data presented in Tables 5-7 (specification, [00104-00116]), are not deemed persuasive to show criticality of the coalescing solvent amounts of claim 10 for the following reasons.
The data shows using the specific mixture of coalescing solvents diethylene glycol n-propyl ether, diethylene glycol ethyl ether and weight ethylene glycol 2-ethylhexyl ether (specification, [0085], Table 2 and [0097]), wherein claim 10 recites using any coalescing solvent. Example #4F is the only comparison which uses a polymer of the claimed Tg (specification, [0083] and Table 1). As shown in Tables 5-7, Example #4F only shows PASS results for at an amount of 7% by weight (Table 5) and 8% by weight (Tables 6 and 7) (specification, Example 5, [00104-00116]).
Miyagawa exemplifies a top coat composition comprising 11% by weight film-forming agent (Miya-Tables; para [0113] and Table 6, Example 5). The claimed upper limit of “less than 11% by weight” (e.g., 10%) is not compared, nor is Miyagawa’s closest teaching of 11% by weight.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of at least 6% by weight and less than 11% by weight of any coalescing solvent.
Further, the results presented in the specification compare the film formation over varying amounts coalescing agent (specification, [00107]). However, as taught by Gray, the use of coalescing agents or “film-forming” solvents is known in art in order to sufficiently form a film in floor finishing compositions, including over the claimed amounts (Gray; [0049]).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA1980) (see MPEP § 2144.05, II.).
For all these reasons, Applicant’s remarks have been fully considered, but are not deemed persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732