DETAILED ACTION
This Office Action is in response to the Amendment filed on 5/1/2026.
Claim(s) 5-6 were cancelled.
Claim(s) 17-19 have been added.
Claim(s) 1-4 and 7-19, are now pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant sets forth the specified amount of methyl methacrylate, 2-ethylhexyl acrylate, n-butyl methacrylate, and cyclohexyl methacrylate in claim 17 that is corresponding to the total amount of these monomers in the aqueous resin emulsion. There is no support for these limitations in the specification. Examiner is under the assumption this is a text error with the intention to be corresponding to (a) the polymerizable unsaturated monomer (as in instant example 2). Applicant is notified that this rejection could be overcome by inserting “wherein (a) the polymerizable unsaturated monomer comprises” directly after “the aqueous resin emulsion of claim 1,” in line 1 of claim 17.
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.
Claims 1-4 and 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over JP2013256607 to Naruse et al. (as found on the IDS dated 6/8/2022).
Regarding Claim 1, Naruse teaches a resin containing emulsion [0001] in water [0065] i.e., aqueous resin emulsion, comprising a first stage polymerization comprising an unsaturated monomer mixture [0065] (corresponding to (a)), a second stage polymerization comprising an unsaturated monomer mixture [0066] (corresponding to (b)), and the surfactant KH-1025 [0065] that is the same commercially available emulsifier as in instant application [instant application, 0028] thereby reading on surfactant comprising a sulfate ester salt having an allyl group and a polyoxyethylene group.
Naruse teaches in Example 1 [0065] the first step of polymerization (Monomer mixture (a)) comprises 375 parts unsaturated monomer mixture comprising methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate [0065].
Naruse teaches the second step of Example 1 (Monomer mixture (b)) also comprises 375 parts unsaturated monomer mixture and 2.7 parts methacryloxypropltrimethoxysilane [0066] therefore calculated to be 0.72% and reading on a copolymer comprising polymerizable unsaturated monomer such as (meth)acrylic acid.
In this embodiment, Naruse does not particularly teach the emulsifier is present in an amount of 1.25-1.8 parts by mass.
However, Naruse teaches the reactive emulsifiers [0032] (i.e., a3) [0015] wherein the reactive emulsifiers (a3) are in an amount of preferably 0-5 mass percent [0016]. It would have been obvious to one of ordinary skill in the art to use reactive emulsifiers [0032] at 0-5 mass % as taught by Naruse [0016]. The motivation would have been that this range provides excellent protection, including stain resistance and weather resistance [0016].
In this embodiment, Naruse does not particularly teach that (a) the polymerizable unsaturated monomer comprises 2-ethylhexyl acrylate.
However, in the broader disclosure, Naruse teaches 2-ethylhexyl acrylate may be used in combination with other unsaturated carboxylic acid esters such as methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate [0013].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include 2-ethylhexyl acrylate in the monomer mixture of methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate [0013] to prepare the copolymer of (a) the polymerizable unsaturated monomer in Example 1 of Naruse.
The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining 2-ethylhexyl acrylate, methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate would have been obvious given their known and shared intended use as ethylene-unsaturated carboxylic acid esters (a2) in the aqueous resin emulsion of Naruse.
In this embodiment, Naruse does not particularly teach the claimed range of from 0.1 to 0.4 parts of (b2), a monomer having an alkoxysilyl group and an ethylenic double bond.
However, Naruse does teach the organic silane compound is used in 0.1 part by mass or more with respect to 100 parts by mass of the polymer [0023] thereby reading on the range of 0.1 – 0.4 parts of (b2). Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to use the organic silane compound (b1) range taught in Naruse’s disclosure. The motivation would have been that decreasing the amount of (b1) will reduce production cost [0023].
Naruse does not particularly teach the copolymer of the polymerizable unsaturated monomer (a) having a glass transition temperature lower than that of the copolymer of the polymerizable unsaturated monomer (b).
However, the glass transition temperature is a function of the monomer. Naruse teaches the monomer (a) comprising a higher portion of butyl acrylate [0065, 0067] (Tg of -45°C) and a lower portion of methyl methacrylate [0065,0067] (Tg of 105 °C) than monomer (b). Therefore, the glass transition temperature of copolymer (a) will inherently be lower than the glass transition temperature of copolymer (b) as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). 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." If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Though the prior art organic silane compound (b1) range and surfactant range is not identical to the (b1) claimed range (0.1-0.4 parts by mass) and surfactant range (1.25-1.8 parts by mass), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 2, Naruse teaches the aqueous resin emulsion according to claim 1, wherein comonomer mixture (a) comprises methacrylic acid [0065] i.e., a monomer having a carboxyl group.
Regarding Claim 3, Naruse discloses the aqueous resin emulsion according to claim 1 i.e., aqueous resin composition.
Regarding Claim 4, Naruse discloses the aqueous resin emulsion according to claim 3, wherein the composition is capable of forming a coated film [abstract] that can be applied on exterior building materials [0002] i.e., a substrate coated with aqueous resin composition.
Regarding Claim 7, Naruse discloses the aqueous resin emulsion according to claim 1, wherein the ethylenically unsaturated carboxylic acid ester such as methyl acrylate [0013] is 85-99.5% by weight based on the monomer mixture [0007] reading on 90-98 parts (b1).
Regarding Claim 8, Naruse discloses the aqueous resin emulsion according to claim 1, having a pH of 5 to 10 [0051] (i.e., 8 – 10).
Though the prior art pH range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 9, Naruse discloses the aqueous resin emulsion according to claim 1, wherein the Tg of the polymer has an upper limit of 50°C and a lower limit of 0°C [0053] reading on copolymer (a) having a Tg of -10 to 15°C.
Though the prior art Tg range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 10, Naruse discloses the aqueous resin emulsion according to claim 9, wherein the Tg of the polymer has an upper limit of 50°C and a lower limit of 0°C [0053] reading on copolymer (b) having a Tg of 30 to 50°C.
Though the prior art Tg range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claims 11 and 12, Naruse discloses the aqueous resin emulsion according to claim 1, comprising reactive surfactants [0015, 0032] in an amount of 0-5 mass% [0016] thereby reasonably reading on the surfactant ranging from 0.1-0.13 parts per mass.
Furthermore, the recitation "monomer is polymerized with an amount of the surfactant" is a product by process claim limitation. The claim itself is drawn to the aqueous resin emulsion. Case law has held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding Claim 13, Naruse discloses the aqueous resin emulsion according to claim 1, comprising reactive emulsifiers (i.e., surfactants) such as Aqualon KH-10 [0032] that is the same polyoxyethylene-1-(allyloxymethyl)alkyl ether sulfate ester ammonium sault in instant specification [instant specification, 0028].
Regarding Claim 14, Naruse discloses the aqueous resin emulsion according to claim 1, comprising reactive emulsifiers (i.e., surfactants) such as ammonium salts of α - [1-[(allyloxy) methyl] -2- (nonylphenoxy) ethyl] - w -polyoxy Ethylene sulfate ester salt [0032] thereby reading on the limitation of claim 14.
Regarding Claim 15, Naruse discloses the aqueous resin emulsion according to claim 1, comprising 375 parts (a) [0065] and 375 parts (b) [0066] therefore reading on the mass ratio (b)/(a) of 30/70 to 70/30.
Regarding Claim 16, Naruse discloses the aqueous resin emulsion according to claim 1, comprising ammonium persulfate [0065] therefore reading on the catalyst of claim 16.
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 18, JP2013256607 to Naruse et al. corresponds to the closest prior art. Naruse teaches Example 1 comprising 198.4 parts of methyl methacrylate, 37.5 parts of cyclohexyl methacrylate, 37.5 parts of butyl methacrylate [0066] corresponding to (b) the polymerizable unsaturated monomer.
Naruse does not teach or fairly suggest that the polymerizable unsaturated monomer (b) comprises 2-ethylhexyl acrylate, and does not teach or fairly suggest that the specific amount of methyl methacrylate is present in 22 parts, the 2-ethylhexyl acrylate is present in 12.2 parts, the n-butyl methacrylate is present in 10 parts, and the cyclohexyl methacrylate is present in 5 parts. Moreover, Naruse does not teach, fairly suggest, or provide motivation to select these monomers in the specific amounts as set forth in claim 18.
Claim 19 is allowed.
The following is a statement of reasons for allowance:
Regarding Claim 19, JP2013256607 to Naruse et al. corresponds to the closest prior art. Naruse teaches a resin containing emulsion [0001] in water [0065] comprising a first stage polymerization comprising an unsaturated monomer mixture [0065] (corresponding to (a)), a second stage polymerization comprising an unsaturated monomer mixture [0066] (corresponding to (b)), and a surfactant [0065].
Naruse teaches in Example 1 [0065] the first step of polymerization (Monomer mixture (a)) comprises 375 parts unsaturated monomer mixture comprising methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate [0065].
Naruse teaches the second step of Example 1 (Monomer mixture (b)) also comprises 375 parts unsaturated monomer mixture and 2.7 parts methacryloxypropltrimethoxysilane [0066] therefore calculated to be 0.72% and reading on a copolymer comprising polymerizable unsaturated monomer such as (meth)acrylic acid.
However, Naruse does not particularly teach the emulsifier is present in an amount of 1.25-1.8 parts by mass in this embodiment, (a) the polymerizable unsaturated monomer comprises 2-ethylhexyl acrylate, the claimed range of from 0.1 to 0.4 parts of (b2), a monomer having an alkoxysilyl group and an ethylenic double bond, and the copolymer of the polymerizable unsaturated monomer (a) having a glass transition temperature lower than that of the copolymer of the polymerizable unsaturated monomer (b).
Furthermore, Naruse does not teach or fairly suggest the polymerizable unsaturated monomer (a) comprises that the specific amount of the methyl methacrylate is present in 18 parts, the 2-ethylhexyl acrylate is present in 20 parts, the n-butyl methacrylate is present in 5 parts, and the cyclohexyl methacrylate is present in 5 parts. Moreover, the prior art does not teach, fairly suggest, or provide motivation to select these monomers in the specific amounts as set forth in claim 19.
Moreover, Naruse does not teach or fairly suggest that the polymerizable unsaturated monomer (b) comprises 2-ethylhexyl acrylate, and does not teach or fairly suggest that the specific amount of methyl methacrylate is present in 22 parts, the 2-ethylhexyl acrylate is present in 12.2 parts, the n-butyl methacrylate is present in 10 parts, and the cyclohexyl methacrylate is present in 5 parts. Moreover, Naruse does not teach, fairly suggest, or provide motivation to select these monomers in the specific amounts as set forth in claim 19.
Response to Arguments
Applicant’s arguments filed 5/1/2026 have been fully considered. The Office responds as follows:
Applicant states that Naruse does not disclose or suggest an unsaturated monomer specifically comprising methyl methacrylate, 2-ethylhexyl acrylate, n-butyl methacrylate, and cyclohexyl methacrylate, and specifically states that none of the examples listed in Naruse comprise 2-ethylhexyl acrylate and that the broader disclosure has a laundry list of numerous monomers that can be formed in hundreds of combinations.
In response, attention is drawn to the updated rejection of claim 1, wherein it would have been obvious to a person of ordinary skill in the art to include 2-ethylhexyl acrylate in the monomer mixture of methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate [0013] to prepare the copolymer of (a) the polymerizable unsaturated monomer in Example 1 of Naruse. The motivation would have been that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) In light of In re Kerkhoven, combining 2-ethylhexyl acrylate, methyl methacrylate, butyl methacrylate, and cyclohexyl methacrylate would have been obvious given their known and shared intended use as ethylene-unsaturated carboxylic acid esters (a2) in the aqueous resin emulsion of Naruse.
In response to applicant’s argument that none of the examples in Naruse comprise 2-ethylhexyl acrylate, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123)
Applicant states that new claims 17-19 recite additional features that are not taught by Naruse, such as the amount each polymerizable unsaturated monomer and the inclusion of 2-ethylhexyl acrylate and therefore these claims are allowable.
In response, the office agrees that the inclusion of specific amounts of 2-ethylhexyl acrylate and other unsaturated monomers of claims 17-19 are not taught by Naruse. Claim 18 is now indicated to be allowable and objected to as being dependent on rejected base claim. Claim 19 is allowed. However, Claim 17 is not presently in condition for allowance in light of the new grounds of rejection under 35 U.S.C. 112(a) above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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