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 .
Claim Rejections - 35 U.S.C. 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
The claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a use is not a process, machine, manufacture, or composition of matter.
Claim 19 is a "use" claim that does not purport to claim a process, machine, manufacture, or composition of matter. Therefore, Claim 19 fails to comply with 35 U.S.C. 101.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 19 is also rejected under 35 U.S.C. 112(b) because it attempts to claim a use without any active, positive steps delimiting how the use is actually practiced. See MPEP 2173.05(q).
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-5, 6-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ang (US 2018/0265470 A1) in view of Elektrochem (CA 658392 A).
Regarding claims 1-4, 6-14, and 16-19, Ang teaches paint formulations having at least one autoxidizable binder, specifically, 10-98% by weight alkyd resin binder, and a drier composition (p. 3, [0032]; claim 8; p. 22, [0324]). Ang teaches driers having haloalkyl substituents, including fluoromethyl groups (p. 5, [0072]). The amount of water in the coating may be less than 25% by weight, and the coating may be free of water (p. 24, [0361], [0366]). Ang teaches use of the ligand of formula I, which is identical to the claimed formula of claims 9-10 (p. 9, [0094]). Ang teaches use of 1,4,7-trimethyl-1,4,7-triazacyclononane (p. 9, [0105]). This reads on the structure of claim 11. Ang teaches an iron complex of formula IV, which is identical to the claimed structure of claim 12 (p. 11, [0118], and p. 15, [0194]-[0197]). Ang's coating composition may include 0-300% by weight of a pigment (p. 24, [0368-0369]). Ang's coating further includes a C5-C22 carboxylic acid (claim 5, line 4). This prior art range of 5-22 carbons overlaps the claimed range of 1-18 carbons. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. Ang further teaches that the coating may be solvent-borne (p. 12, [0139]).
However, Ang is silent as to use of a vanadium sulfonate drier of the claimed structure. In the same field of endeavor, Elektrochem teaches use of vanadyl-p-toluene sulfonate used in organic solution (including alcohol solvent) in amounts ranging from 0.1-0.6% of the coating composition (p. 4, line 10; p. 5, Table I). This prior art range overlaps the ranges of claims 3 and 4. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the coating of Ang with the drier of Elektrochem to arrive at the claimed invention, and to reduce discoloration during the curing step, as taught by Elektrochem (p. 4, lines 3-5).
Regarding claim 5, Ang’s combination of a), b), and c) is employed as a drier composition (Abstract). Elektrochem’s vanadium sulfate complex is also used as a drier in coating compositions, in amounts ranging from 0.0001%-2% by weight (considering only the weight of the metal in b); which has a 1:1 correlation to the total compound’s wt% because there is only one vanadium atom per molecule (p. 15, [0199]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the drier of Ang and the vanadium sulfate drier of Elektrochem to arrive at the claimed invention, and because of their art-recognized equivalence. See MPEP 2144.06. Elektrochem further teaches that a drier may be included in coating compositions in amounts of 0.1-0.6 wt% (p. 5, Table I). It would have been obvious to include the driers of both Ang and Elektrochem in amounts of greater than 0 and less than 0.6 wt% such that the combined total falls within the range suggested by Ang. This results in a range overlapping that of claim 5.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ang in view of Elektrochem, and further in view of Vargiu (US 3859235).
Regarding claim 15, Ang in view of Elektrochem remains as applied to claim 1 above. However, these references are silent as to use of oxalic acid as an additional additive in the coating. In the same field of endeavor, Vargiu teaches use of oxalic acid in paint compositions having an alkyd resin and a drier (col. 2, lines 3-4, 10-13). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the paint of Ang in view of Elektrochem with the oxalic acid additive of Vargiu to arrive at the claimed invention, and to reduced undesired color phenomena on drying, as taught by Vargiu (col. 2, lines 9-13).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob 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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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762