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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 26th, 2026 has been entered.
Response to Amendment
The affidavit under 37 CFR 1.132 filed May 26th, 2026 is insufficient to overcome the rejection of claim 1, 3, 5, 13, 15-17, 22, and 28 based upon U.S.C. 103 as set forth in the last Office action because the showing is not commensurate in scope with the claims. The affidavit states that the claims include at least 7% water. However, the evidence presented includes 15% water.
The Amendment filed on May 26th, 2026 has been entered. Claims 1, 3, 5-6, 8, 13, 15-20, 22, and 27-29 are pending in the application. Claims 2, 4, 7, 9-12, 14, 21, and 23-26 have been cancelled.
The rejection of claims 1, 3, 5, 13, 15-17, 22, and 28 under 35 U.S.C. 103 as obvious over Hawes (US 20180362781 A1) and Manley (US 9868867 B1) is maintained.
The rejection of claim 6 and claim 8 under 35 U.S.C. 103 as obvious over Hawes (US 20180362781 A1), Manley (US 9868867 B1), and Machac, Jr. (US 6608012 B2) is maintained.
The rejection of claim 18 under 35 U.S.C. 103 as obvious over Hawes (US 20180362781 A1), Manley (US 9868867 B1), and Charnock (EP 0867482 B1), and as evidenced by Safety Data Sheet DDP Specialty Products Germany (“Methocel 311”) is maintained.
The rejection of claim 19 and claim 20 under 35 U.S.C. 103 as obvious over Hawes (US 20180362781 A1), Manley (US 9868867 B1), and Machac, Jr. (US 6608012 B2) is maintained.
The rejection of claim 27 under 35 U.S.C. 103 as obvious over Hawes (US 20180362781 A1), Manley (US 9868867 B1), and Power (US 20080139437 A1) is maintained.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 5, 13, 15-17, 22, and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Hawes (US 20180362781 A1) in view of Manley (US 9868867 B1).
With regard to claims 1, 3, 5, 13, and 28-29, Hawes discloses a composition for paint removal (see Abstract). Hawes further discloses the composition as comprising 4-90wt% of THF (see [0017]), 0-25wt% of ammonia (see [0018]-[0019]), and 10wt% of methanol (see Table 1).
However, Hawes fails to disclose the composition as comprising water.
Manley discloses a composition comprising cleaning solvents for removing coatings, an analogous art (see Abstract). Manley further discloses the composition may comprise ammonia (see Col 9 line 61-65) and methanol (see Col 12 line 24). Manley further discloses low VOC solvents as desirable due to increased regulations regarding VOC compounds (see Col 2 line 53-55). Manley further discloses water as a low VOC solvent (see Col 2 line 56). Manley further teaches an extender at 10-80wt% and water as a suitable extender (see Col 13 line 16-20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the water of Manley in the composition of Hawes as Manley discloses low VOC solvents as desirable due to increased regulations regarding VOC compounds and Manley discloses water as a low VOC solvent.
With regard to claim 15 and claim 16, Hawes discloses paraffin wax at 0-25wt% (see [0018]-[0019]).
With regard to claim 17, Hawes discloses a thickener (see [0018]) and further discloses a cellulose ether thickener at 0.5-2wt% (see [0022]).
Claim 6 and claim 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hawes (US 20180362781 A1) in view of Manley (US 9868867 B1), as applied to claims 1, 3, 5, 13, 15-17, 22, and 28-29 above, and in further view of Machac, Jr. (US 6608012 B2).
With regard to claim 6 and claim 8, Hawes and Manley disclose all of the limitations of claims 1, 3, 5, 13, 15-17, 22, and 28-29.
Machac Jr. discloses compositions for the removal of coatings, such as paint, from surfaces, an analogous art (see Abstract). Machac Jr. further discloses 5-15wt% of glycol ethers (see Col 3 line 49-52). Machac Jr. further teaches glycol ether may be used as a co-solvent in an amount effective to solubilize the components of the mixture (see Col 5 line 3-5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the glycol ethers of Machac Jr. in the composition of Hawes and Manley for the purpose of solubilizing the components of the mixture, as disclosed by Machac Jr.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable Hawes (US 20180362781 A1) in view of Manley (US 9868867 B1), as applied to claims 1, 3, 5, 13, 15-17, 22, and 28-29 above, and in further view of Charnock (EP 0867482 B1), and as evidenced by Safety Data Sheet DDP Specialty Products Germany (“Methocel 311”).
With regard to claim 18, Hawes and Manley disclose all of the limitations of claims 1, 3, 5, 13, 15-17, 22, and 28-29.
However, Hawes and Manley are silent as to a hydroxypropyl methyl cellulose, hydroxypropyl cellulose, or a combination thereof as cellulosic thickeners.
Charnock, an analogous art teaching a paint removing composition see Title), teaches Methocel 311 as a thickening agent (see Example 2).
Safety Data Sheet DDP Specialty Products Germany teaches Methocel 311 is hydroxypropyl methylcellulose (which is a cellulose ether).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to use Methocel 311, which is hydroxypropyl methylcellulose, as evidenced by the Safety Data Sheet reference, as the specific cellulose ether thickener as Hawes specifically discloses a cellulose ether thickener and Charnock provides said specific cellulose thickener.
Claim 19 and claim 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hawes (US 20180362781 A1) in view of Manley (US 9868867 B1), as applied to claims 1, 3, 5, 13, 15-17, 22, and 28-29 above, and further in view of Vangrasstek (CA 2654120 A1).
With regard to claim 19 and claim 20, Hawes and Manley disclose all of the limitations of claims 1, 3, 5, 13, 15-17, 22, and 28-29.
However, Hawes and Manley are silent as to a corrosion inhibitor.
Vangrasstek discloses a cleaning composition for removing contaminants, especially paint and overspray (see Abstract). Vangrasstek further discloses the composition may comprise a corrosion inhibitor for the purpose of preventing metal corrosion on metal surfaces that have been cleaned with the aqueous cleaning composition (see page 12 line 1-5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the phosphate esters of Vangrasstek in the composition of Hawes and Manley for the purpose of preventing metal corrosion on metal surfaces that have been cleaned with the aqueous cleaning composition, as disclosed by Vangrasstek.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Hawes (US 20180362781 A1) in view of Manley (US 9868867 B1), as applied to claims 1, 3, 5, 13, 15-17, 22, and 28-29 above, and further in view of Power (US 20080139437 A1).
With regard to claim 27, Hawes and Manley disclose all of the limitations of claims 1, 3, 5, 13, 15-17, 22, and 28-29.
However, Hawes and Manley are silent as to and evaporation retarder.
Power discloses a composition for removing paint (see Abstract). Power further discloses a solvent to hold the ether-containing compound in contact with the substrate (see [0031]). THF is an ether containing compound. Power further discloses suitable solvents as aliphatic and aromatic hydrocarbon solvents (see [0031]). Power further discloses from about 1.0-50.0wt% of solvent (see [0027]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the solvent of Power in the composition of Hawes and Manley for the purpose of holding the ether-containing compound in contact with the substrate, as disclosed by Power.
Response to Arguments
Applicant's arguments filed May 26th, 2026 have been fully considered but they are not persuasive.
Applicant argues that neither Hawes nor Manley disclose a combination comprising at least 7wt% of water. As stated above, Manley discloses a composition comprising cleaning solvents for removing coatings, an analogous art (see Abstract). Manley further discloses the composition may comprise ammonia (see Col 9 line 61-65) and methanol (see Col 12 line 24). Manley further discloses low VOC solvents as desirable due to increased regulations regarding VOC compounds (see Col 2 line 53-55). Manley further discloses water as a low VOC solvent (see Col 2 line 56). Manley further teaches an extender at 10-80wt% and water as a suitable extender (see Col 13 line 16-20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the water of Manley in the composition of Hawes as discloses low VOC solvents as desirable due to increased regulations regarding VOC compounds and Manley discloses water as a low VOC solvent.
Applicant further argues that a person of ordinary skill in the art would have no motivation to select 70% or greater TH F from the broad teachings of Hawes. Applicant argues that the examples of Hawes never exceed 49.5 wt% THF. The entire reference must be considered. While the examples of Hawes never exceed 49.5 wt% THF, these compositions are merely exemplary.
Applicant further argues that a person of ordinary skill in the art would have no motivation to select methanol in combination with an increased concentration of THF from the teachings of Hawes. Applicant further argues the only teaching of methanol in Hawes is in a composition that has only 29.5 wt% THF. As stated above, the entire reference must be considered. Whether or not methanol is only used in one example, Hawes discloses methanol in the composition.
Applicant further argues there is no motivation to combine Hawes and Manley. Manley discloses a composition comprising cleaning solvents for removing coatings, an analogous art (see Abstract). Manley further discloses the composition may comprise ammonia (see Col 9 line 61-65) and methanol (see Col 12 line 24). Manley further discloses low VOC solvents as desirable due to increased regulations regarding VOC compounds (see Col 2 line 53-55). Manley further discloses water as a low VOC solvent (see Col 2 line 56). Manley further teaches an extender at 10-80wt% and water as a suitable extender (see Col 13 line 16-20).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the water of Manley in the composition of Hawes as Manley discloses low VOC solvents as desirable due to increased regulations regarding VOE compounds and further discloses water as a low VOE solvent.
Applicant further argues that the addition of water would render Hawes unsatisfactory for its purpose. Applicant further points to experimentation showing a cloudy solution when 15wt% of water is added. While the discoloration may be seen, this only accounts for one proposed composition. As stated above, Manley teaches 10-80wt% of water. The instant claims disclose at least 7wt% of water.
Conclusion
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/B.S.H./ Examiner, Art Unit 1761
/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
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