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 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, 3-5, 6-14, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ang (US 2018/0265470 A1) in view of Elektrochem (CA 658392 A). All references have been cited in a prior Office action.
Regarding claims 1, 3-4, 6-14, and 16-18, 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]). Additional driers, including vanadium driers, may be added (p. 2, [0023]). This is an explicit teaching to combine an autoxidizable alkyd resin with a vanadium drier. 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 in view of Elektrochem remains as applied to claims 1, 3, and 4 above. Ang’s combination of a), b), and c) is employed as a drier composition (Abstract), and further vanadium driers may be added (p. 2, [0023]). 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).
Response to Arguments
In light of the cancellation of claim 19, the rejection of claim 19 under 35 U.S.C. 101/112 is withdrawn.
Applicant's arguments filed 23 March 2026 have been fully considered but they are not persuasive.
First, Applicant argues that one of ordinary skill in the art would have no reasonable expectation of success in combining the composition of Ang and the vanadium sulfonate drier of Elektrochem. Applicant is respectfully directed to the rejection of claim 1 above, which explains that Ang explicitly teaches the combination of an autoxidizable alkyd resin with additional driers. This creates a reasonable expectation of success when including an additional drier with Ang’s resin.
Applicant correctly notes that Elektrochem does not use an alkyd resin. Elektrochem is not relied on for the alkyd resin limitation, only for a known metal drier, which it teaches. No peroxide component is required by the teachings of Ang in view of Elektrochem. Further, Ang explicitly teaches combining the alkyd resin with a vanadium drier (p. 2, [0023]), giving one of ordinary skill in the art a reasonable expectation of success in selecting the vanadium drier of Elektrochem for use in the composition of Ang. The rejection is maintained, and has been updated above for clarity.
All of Applicant’s arguments are believed to have been addressed in full above.
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.
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
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