DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Claim(s) 11-16 have been added.
Claim(s) 1-16, are now pending in the application.
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 1-16 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 and 2.7 parts methacryloxypropltrimethoxysilane [0065] therefore calculated to be 0.72% and reading on a copolymer comprising polymerizable unsaturated monomer such as (meth)acrylic acid ester [0013] and reading on the claimed range of (a2) from 0.05 to 1.0 parts of a monomer having an alkoxysilyl group and an ethylenic double bond.
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 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 5, Naruse discloses the aqueous resin emulsion according to claim 1 as set forth above and incorporated herein by reference.
In this embodiment, Naruse does not particularly teach the claimed range of from 0.1 to 0.4 parts of (a2), 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 0.05 – 0.5 parts of (a2). 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].
Though the prior art organic silane compound (a1) 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 6, 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 (a1).
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.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicant states Naruse teaches the surfactant in an amount of 0.24 parts by mass per 100 parts of aqueous resin emulsion, and therefore does not disclose or make obvious this amount of surfactant.
Attention is drawn to the updated rejection of claim 1 as set forth above, wherein Naruse teaches the reactive emulsifiers [0032] (i.e., a3) [0015] in an amount of preferably 0-5 mass percent [0016] and that this range would have been obvious to one of ordinary skill in the art to use in order to provide excellent protection, including stain resistance and weather resistance [0016].
Furthermore, it is noted that the roughly translated table 2 of Naruse as incorporated herewith includes the initial charge of KH-1025 (i.e., surfactant) in an amount of 0.24 parts, an addition of 0.5 parts in the first stage, and an addition of 0.5 parts in the second stage. As such, it is reasonably calculated that Naruse’s aqueous resin emulsion comprises 1.24 parts of surfactant that would reasonably read on “about 1.25 parts by mass” as set forth in instant claim 1.
Applicant states that example E, Comparitive example 1, and comparative example 2 show when the surfactant is present in 0.2- 0.4 parts by mass, the resistance of the adhesion decreases.
In response, it is noted that 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)
Examiner notes that the instant claims state multiple citations such as "obtained by a multistage emulsion polymerization" (claim 1), “being polymerized in a stage other than the final stage”, “polymerized in the final stage in the presence of a surfactant” that are 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.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764