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
The amendments filed August 15, 2025 have been entered. Claims 1-14 are pending in the application.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al (CN 109321027 A, using the machine translation for the citations below).
Ma teaches a cerium-EDTA chelate (para. 0006-0007) comprising cerium (III) carbonate (para. 0031). The EDTA/ethylenediaminetetraacetic acid reads on the amine carboxylic acid capping ligand of instant claims 1 and 13. Ma further teaches an aqueous acrylic emulsion comprising the cerium-EDTA chelate (para. 0034, 0052).
Claims 1-2, and 12-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Murakami et al (US 2017/0342271 A1).
Murakami teaches a dispersion comprising a methyl methacrylate copolymer (para. 0162) that is dissolved in an organic solvent (para. 0130) and a cerium carbonate laking agent (para. 0073) with a dispersant/capping ligand comprising an amine carboxylic acid (para. 0111, amine salt of a carboxylic acid polymer).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (CN 109321027 A, using the machine translation for the citations below) in view of Stoye et al (Paints and Coatings, 2006, Ullmann's Encyclopedia of Industrial Chemistry, p.1-199).
Regarding Claims 5-6: Ma is silent to the pigment/colorant.
Stoye teaches that paints generally comprise pigments, such as titanium dioxide, which is commonly used due to its high brightening power, chemical resistance, and non-toxicity (p.103, col. 2, para. 3). Stoye and Ma are analogous art because they are directed toward the same field of endeavor, namely paint compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a titanium dioxide pigment to the paint composition taught by Ma in order to achieve a bright white and chemically inert paint.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (CN 109321027 A, using the machine translation for the citations below) in view of Stoye et al (Paints and Coatings, 2006, Ullmann's Encyclopedia of Industrial Chemistry, p.1-199), further in view of Murakami et al (US 2017/0342271 A1).
Regarding Claim 7: Ma and Stoye teach the limitations of claim 6, as set forth above. However, Ma is silent to the cerium carbonate being nano-sized.
Murakami teaches a dispersion comprising a cerium carbonate laking agent (para. 0073) that is a nano-sized particle (para. 106, 10-300 nm). Murakami and Ma are analogous art because they are directed toward the same field of endeavor, namely cerium carbonate particles for use in dispersions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the particle size of the cerium carbonate taught by Ma to be nanosized because Murakami teaches that such a particle size is advantageous for dispersibility (para. 0106).
Regarding Claim 8: Stoye teaches that anatase and rutile titanium dioxide are the two predominant forms of titanium dioxide that are produced on a commercial scale (p.103, col. 2, para. 3). Furthermore, all titanium dioxide will fall into the categories of passivated or unpassivated.
Regarding Claims 9-10: Ma teaches an acrylic polymer, as set forth above, but is silent to the monomers it comprises.
Stoye teaches that acrylic/polyacrylate resins may comprise multiple monomers (p.29, col. 2, para. 3). Stoye further teaches that methyl methacrylate units provide high weather resistance, lightfastness, hardness, and gloss, acrylic acid units improve adhesion to metal, and alkyl acrylates provide flexibility and hydrophobicity (p.30, col. 1, para. 2), with n-butyl acrylate being especially useful for adjusting the glass transition temperature of the acrylic resin (p.30, col. 1, para. 4).
It would have been obvious to one of ordinary skill in the art to use an acrylic resin comprising methyl methacrylate, n-butyl acrylate, and acrylic acid structural units to impart the paint with weather resistance, lightfastness, hardness, gloss, metal adhesion, flexibility, and a desirable Tg.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (CN 109321027 A, using the machine translation for the citations below) in view of Stoye et al (Paints and Coatings, 2006, Ullmann's Encyclopedia of Industrial Chemistry, p.1-199) and Murakami et al (US 2017/0342271 A1), further in view of Coatings World (Evonik Supplies Methacrylate Phosphate as Anti-Corrosion Agent, Flame retardant, 2018).
Ma, Stoye, and Murakami teach the limitations of claim 10, as set forth above. However, they are silent to the polymer comprising phosphoethyl methacrylate.
Coatings World teaches that phosphoethyl methacrylate/2-hydroxyethyl methacrylate phosphate may be copolymerized into an acrylic resin to improve adhesion and provide flame retardant properties (para. 2). Coatings World and Ma are analogous art because they are directed toward the same field of endeavor, namely coating compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include phosphoethyl methacrylate structural units in the polymer taught by Ma and Stoye in order to obtain a paint with high adhesion and flame retardant properties.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (CN 109321027 A, using the machine translation for the citations below) in view of Westerback et al (Ethylene-diamine-tetra(methylene-phosphonic) Acid, 11 Aug 1956, Nature, 178, p. 321-322).
Ma teaches the limitations of Claim 1, as set forth above. However, Ma is silent to the amine phosphonic acid capping ligand.
Westerback establishes equivalency of an amine carboxylic acid and an amine phosphonic acid as chelating agents/capping ligands (p. 321, col. 1, EDTA and EPDA). As the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute the amine carboxylic acid capping ligand (EDTA) for an amine phosphonic acid capping ligand (EPDA) since such modification would have involved a mere substitution of known equivalent structures. A substitution of known equivalent structures is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.06.
Response to Arguments
The arguments filed August 15, 2025 are directed toward the new limitations of independent Claim 1 and are overcome by the grounds of rejection as set forth above.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kataoka (US 2013/0196167 A) is directed toward a dispersion comprising cerium (III) carbonate.
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 CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767