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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 3/2/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 3/2/2026. In particular, claim 1 has been amended to have the product in a package and to include “an additional rheology modifier.” Thus, the following action is properly made final.
Claim Objections
Claim 9 is objected to because of the following informalities: the term “the rheology modifier” is inconsistent with previous recitation “an additional rheology modifier.” It is suggested that “the rheology modifier” be replaced with “the additional rheology modifier.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 1, it is unclear whether the “water-soluble concentrated surface treatment product” is the composition that is powder, solid, gel, or liquid or whether the claim requires that the “product” is in a package. Confusion arises from the abstract which states that “[t]he product can be easily stored, transported, and packaged,” suggesting that the product is separate from the package. Furthermore, it is unclear what “package” is intended to encompass. In the interest of compact prosecution and in view of broadest reasonable interpretation, the examiner reads “package” as any container as evidenced by Figure 3A.
With respect to claims 2-15, they are rejected for failing to cure the deficiency of claim 1.
Claim Rejections - 35 USC § 103
Claims 1-5, 7-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chamberlain (US 2020/0291249) in view of evidence provided by Ribi (US 9,528,004).
With respect to claims 1, 4, and 12, Chamberlain discloses an aqueous coating composition comprising xanthan gum and a secondary rheology agent (i.e., rheology modifier) such as a clay, HASE, HEUR, and HMEA (abstract), a binder such as (meth)acrylic latex that can be modified with polar or acid groups inter alia (paragraph 0045-0048), defoamer such a mineral-oil based defoamer (paragraph 0070), preservatives and biocides (paragraph 0058), a wax such as MICHEMTM 21030 and 32535 emulsions (paragraph 0062), and coalescents (paragraph 0057). Sample 1 in Table 1 comprises attapulgite clay, acrylic latex, a defoamer, a biocide preservative, xanthan gum, a HEUR rheology agent, and water. Because additional water is added to the other ingredients, those other ingredients read on claimed “concentrated surface treatment product” in liquid form. Because Chamberlain teaches that additional water is added, it would have been obvious to one of ordinary skill in the art to combine the other ingredients (excluding additional water) in a container (which is necessary to hold the liquid) and subsequently add the addition water “prior to use” and thereby obtain a water-soluble concentrated surface treatment in a “package.” Case law holds that the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Suitable wax emulsions taught by Chamberlain are MICHEM 21030 which is an anionic polyethylene wax emulsion as evidenced by Ribi (col. 39, 57-58) and MICHEM 32535 which is a nonionic polyethylene wax emulsion as evidenced by Ribi (col. 39, lines 64-65).
Chamberlain fails to exemplify or anticipate with sufficient specificity so as to anticipate a composition comprising modified acrylic, coalescent, and polyethylene wax in addition to the ingredients in Sample 1.
Even so, it would have been obvious to one of ordinary skill in the art to utilize the combination of claimed ingredients for their known purpose given they are taught by Chamberlain as suitable. Case law holds that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”. KSR Int'l Co v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007), citing Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976).
With respect to claims 2 and 12, Chamberlain teaches adding dyes as an optional additive (paragraph 0058).
With respect to claim 3, Chamberlain teaches that the clay includes hectorite (paragraph 0036), which is smectite clay.
With respect to claim 5, the composition includes a mineral oil defoamer and a phosphate ester (i.e., nonionic) surfactant (paragraphs 0070-0073).
With respect to claim 7, while Chamberlain does not disclose a mixture of wax emulsion, it teaches separately adding an anionic and nonionic polyethylene wax emulsions. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize a polyethylene wax comprising an aqueous anionic/non-ionic emulsion.
With respect to claim 8, the coalescent includes ester alcohol (paragraph 0057).
With respect to claim 9, Chamberlain teaches that the secondary rheology agent can be hydrophobically modified alkali-swellable emulsion (paragraphs 0035 and 0037).
With respect to claim 10, Chamberlain teaches adding glycols as an optional additive (paragraph 0058). Therefore, it would have been obvious to one of ordinary skill in the art to utilize a glycol such as a propylene glycol. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
With respect to claim 11, Chamberlain discloses adding ammonium salts as surfactants (paragraph 0053) which form ammonia in water.
With respect to claim 15, the aqueous composition of Chamberlain is dried and therefore forms a solid (paragraph 0024). The step of applying a predetermined amount of pressure to a powdered form is a process limitation in a product claim. Case law holds that “even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, Chamberlain’s dried solid coating that is not hardened is capable of being mixed with water and reads on claimed solid product.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chamberlain (US 2020/0291249) in view of evidence provided by Ribi (US 9,528,004) and further in view of Hinton (US 3,065,123).
The discussion with respect to Chamberlain and Ribi in paragraph 7 above is incorporated here by reference.
Chamberlain discloses adding a biocide preservative but fails to disclose a microbiocide that is a mixture of 5-chloro-2-methyl-4-isothiazolin-3-one and 2-methyl-4-isothiazolin-3-one.
Hinton discloses a process for control of microorganisms by adding to aqueous media 1,2-benzisothiazolone (col. 1, lines 46-61).
Given that Chamberlain teaches adding biocide preservatives to its aqueous composition and further given that Hinton teaches that 1,2-benzisothiazolone is a very effective for the control of micro-organisms, it would have been obvious to one of ordinary skill in the art to add 1,2-benzisothiazolone as Chamberlain’s biocide. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chamberlain (US 2020/0291249) in view of evidence provided by Ribi (US 9,528,004) and further in view of Schmidtke (US 2020/0207671).
The discussion with respect to Chamberlain and Ribi in paragraph 7 above is incorporated here by reference.
With respect to claim 13, Chamberlain does not explicitly disclose that its aqueous composition is made into a product that is in the form of a powder or a gel.
Schmidtke discloses an aqueous dispersion that is dried to form a redispersible dispersion powder (abstract, paragraph 0115), which is advantageous for storage stability as well as transport costs (paragraph 0003).
Given that both Chamberlain and Schmidtke are drawn to aqueous dispersions and further given that it is advantageous to reduce the amount of water in the aqueous dispersion for storage and transport reasons as taught by Schmidtke, it would have been obvious to one of ordinary skill in the art to reduce the amount of water used by Chamberlain to at form a powder that is rehydrated at the time of use.
With respect to claim 14, while Schmidtke does not teach that a gel concentrate is prepared, it is still advantageous to reduce the amount of water for transport reasons.
Therefore, it would have been obvious to one of ordinary skill in the art to form the aqueous composition of Chamberlain into a gel concentrate that is hydrated at the time of use.
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Chamberlain fails to disclose or suggest a packaged water-soluble concentrated form.
First, it is unclear whether the “water-soluble concentrated surface treatment product” is the composition that is powder, solid, gel, or liquid or whether the claim requires that the “product” is in a package. Confusion arises from the abstract which states that “[t]he product can be easily stored, transported, and packaged,” suggesting that the product is separate from the package.
Second, because Chamberlain teaches that additional water is added, it would have been obvious to one of ordinary skill in the art to combine the other ingredients (excluding additional water) in a container (which is necessary to hold the liquid) and subsequently add the addition water “prior to use” and thereby obtain a water-soluble concentrated surface treatment in a “package.” Case law holds that the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Based on broadest reasonable interpretation, the claims only require that a composition is in a container and subsequently mixed with additional water “prior” to use (which can occur immediately before use or possibly years before use by an end user).
Applicant also argues that Chamberlain fails to specifically disclose a mineral-oil based defoamer.
To the contrary, Chamberlain teaches that a mineral-oil based defoamer is suitable (paragraph 0070). Absent a showing of unexpected results other secondary considerations, it would have been obvious to one of ordinary skill in the art to utilizes a mineral-oil based defoamer. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Applicant also argues that chamberlain does not disclose “an additional rheology modifier” because the hectorite taught by Chamberlain is also used to read on “clay.”
Sample 1 in Table 1 comprises attapulgite clay, acrylic latex, a defoamer, a biocide preservative, xanthan gum, a HEUR rheology agent (i.e., reads on claimed “additional rheology modifier”, and water. Also, Chamberlain also teaches that “two or more waterborne clays” can be included (paragraph 0039), i.e., the second wawterborne clay reads on “additional rheology modifier.”
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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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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