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 .
Election/Restriction
Applicant’s affirmation of the election without traverse of Group I, species A)b and B)a, Claims 1-4, 7, 11-15, 18-24, 29 and 30, in the reply filed on 10/13/2025 is acknowledged.
Claims 5, 6, 8-10, 16, 17 and 25-28 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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) 1-4, 7, 11, 12, 14, 15, 18, 19, 21, 22, 29 and 30 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Caselli et al. (USPN 5,158,992).
In col. 1, line 54 to col. 2, line 21, Caselli et al. teach a composition comprising a polymeric binder and a stabilizer composition comprising 0.025% to 0.2% of a UV absorber and/or 0.1% to 1.0% of a hindered amine light stabilizer (HALS) (See col. 6, line 63 to col. 7, line 65) which would be more resistant to discoloration when exposed to UV light compared to a composition absent of the stabilizer composition, including pigment and organic diluents.
Regarding the claim recitations of intended use in various coating applications, these recitations of the intended use of the claimed invention do not result in a structural difference between the claimed invention and the prior art, thus does not patentably distinguish the claimed invention from the prior art. The prior art structure is still capable of performing the recited intended use.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Claim(s) 1-4, 7, 11, 12, 14, 15, 18, 19, 21-23, 29 and 30 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ishizuka et al. (JP 2000136270).
In the abstract, Ishizuka et al. teach a composition comprising a polymeric binder, such as ethylene-ethyl acrylate copolymer, and a stabilizer composition comprising 0.02% to 0.7% of a UV absorber and/or 0.02% to 0.5% of a hindered amine light stabilizer (HALS) which would be more resistant to discoloration when exposed to UV light compared to a composition absent of the stabilizer composition, including pigment and a liquid medium.
Regarding the claim recitations of intended use in various coating applications, it is noted that applicant is not requiring any component that is not taught by the prior art. These recitations of the intended use of the claimed invention do not result in a structural difference between the claimed invention and the prior art, thus does not patentably distinguish the claimed invention from the prior art. The prior art structure is still capable of performing the recited intended use.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1)/(a)(2) are met.
Claim Rejections - 35 USC § 103
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.
Claim 31 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, 35 U.S.C. 103 as being unpatentable over Caselli et al. or Ishizuka et al.
While Caselli et al. or Ishizuka et al. do not expressly teach the disclosed properties of the claimed composition, it is reasonable that the compositions of Caselli et al. or Ishizuka et al. would possess the presently claimed properties since the compositions of Caselli et al. or Ishizuka et al. are essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caselli et al. or Ishizuka et al. as applied above, and further in view of Yokoyama et al. (US 2015/0037504).
Caselli et al. or Ishizuka et al. may not name pigments such as titanium dioxide and barium sulfate, however Yokoyama et al. teach titanium dioxide or barium sulfate as pigments in coating compositions comprising such polymeric binders and stabilizers.
In ¶’s 42, 62 and 67, Yokoyama et al. teach a CASE (Coatings, Adhesives, Sealants, and Elastomers) composition comprising a polymer binder, a stabilizer and pigments such as titanium dioxide and barium sulfate.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use titanium dioxide or barium sulfate as the pigment in the composition of Caselli et al. or Ishizuka et al. for finished products because it is recognized in the art that a composition comprising titanium dioxide or barium sulfate, the polymeric binder and stabilizers is suitable for such finished products.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the prior art do not recite various intended uses, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claims.
In view of applicant’s amendments and arguments, the previous rejection based on Boldrin of record are hereby withdrawn.
THIS ACTION IS MADE FINAL. 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.
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