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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/23/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 02/23/2026.
Claims 1-3, 6, 13, 18, 20, 48-50 and 54-56 are presently pending and under examination; claims 4-5, 7-12, 14-17, 19, 21-47 and 51-53 are canceled; claims 1-3, 48 and 54 are amended.
The objections to claims 3 and 4 are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejections of claims 1-2, 6, 13, 20, 48-50, 54 and 56 over LEE in view of ROHRBAUGH and of claims 18 and 55 over LEE in view of ROHRBAUGH and YANG are maintained; the 35 U.S.C. 103 rejection of claim 3 over LEE in view of ROHRBAUGH is withdrawn in light of the amendments to the claims; the rejection of claim 11 is moot as this claim has been canceled.
New grounds of rejection are present herein.
Claim Interpretation
For purposes of claim interpretation, “EO/PO alcohol” as recited in claims 13 and 54 (see claim 13 at line 2 and claim 54 at line 8) is interpreted as meaning ethoxylated-propoxylated alcohols, i.e., surfactants/copolymers formed by adding ethylene oxide and propylene oxide to alcohol, as this would be the typical definition as understood by one of ordinary skill in the art and as this would appear most in keeping with Applicant’s intent based on examples of EO/PO alcohols discussed in the Specification at paragraph [0037].
For purposes of claim interpretation, the term “about” as recited in claims 1, 6, 13, 18, 20, 48 and 54-56 is interpreted as meaning +/- 5%, as discussed in Applicant’s specification at paragraph [0022].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1, from which claim 6 depends, recites the limitations “potassium silicate present in an amount from about 72 to about 80 wet wt. %; hectorite clay present in an amount from about 0.2 to about 0.5 wet wt. %” (see claim 1 at lines 4-6); this is a maximum wet weight ratio of the silicate to the hectorite clay of 0.8:0.002, i.e., 400:1. Claim 6 recites the further limitation “wherein a wet weight ratio of the silicate to the hectorite clay is from about 217:1 to about 567:1” (see claim 6 at lines 1-2); the upper limit of this range exceeds the upper limit of the range required by claim 1, which requires a maximum ratio of 400:1. Claim 6 is therefore of improper dependent form for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements
Claim Rejections - 35 USC § 103
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 1-2, 6, 13, 20, 48-50, 54 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Lee, et al. (WO-2008/066319-A1) (hereinafter, “LEE”) in view of Rohrbaugh, et al. (U.S. Pub. No. 2004/0170822-A1) (hereinafter, “ROHRBAUGH”), with evidence from Ataman Chemicals, “Polyacrylate”, as to the rejection of claim 20 (hereinafter, “ATAMAN”) and with evidence from National Center for Biotechnology Information, PubChem Compound Summary for Polyoxyethylene Sorbitan Monolaurate (hereinafter, “PUBCHEM”) as to the rejection of claim 54.
Regarding claim 1, LEE teaches a substrate comprising a coating (see LEE at paragraphs 1, 153 and 155, teaching a coated substrate which can have a metal or non-metal surface) comprising:
potassium silicate present in an amount overlapping with and thereby rendering obvious the claimed range of from about 72 to about 80 wet wt. % (see LEE at paragraphs 13 and 16, teaching that the coating composition comprises 10 to 70% by weight of an inorganic filler comprising potassium silicate; as discussed above, “about” 72% is interpreted as meaning 72% +/- 5%, i.e., 68.4% to 75.6%);
clay (see LEE at paragraph 16, teaching that the filler can further comprise a clay);
silica present in an amount overlapping with and thereby rendering obvious the claimed range of from about 1 to about 3 wet wt. % (see LEE at paragraphs 31-32, teaching that the coating composition can comprise 0.1 to 2% by weight of silica as an additive);
aluminum hydroxide present in an amount overlapping with and thereby rendering obvious the claimed range of from about 1.0 to about 2.5 wet wt.% (see LEE at paragraphs 18, 22-23 and 87, teaching aluminum hydroxide; LEE teaches including the oxide containing material in an amount of 5 to 40% by weight in the coating composition, and discloses an example wherein the oxide containing material comprises 17 g of aluminum hydroxide and 203 g of total material, i.e., 8% by weight aluminum oxide; i.e., LEE teaches that aluminum hydroxide may be used in the total coating composition in an amount of 8% of 5 to 50% by weight, which is equal to 0.4% to 3.2% by weight);
and polysorbate present in an amount overlapping with and thereby rendering obvious the claimed range of from about 0.5 to about 10 wet wt. % (see LEE at paragraph 27, teaching that the coating composition comprises 0.1 to 3% by weight of polysorbate).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
However, LEE fails to explicitly teach (i) that the coated substrate is a building panel comprising a first major surface opposite a second major surface and a side surface extending there-between wherein the coating is applied as a continuous coating surrounding the first major surface and the side surface of the building panel, and (ii) that the clay is hectorite clay present in an amount from about 0.2 to about 0.5 wet wt.%.
ROHRBAUGH teaches a coated hard surface substrate which can be metal or non-metal, e.g., a wood wall (a wall is a building panel comprising a first major surface opposite a second major surface and a side surface extending there-between) wherein 100% of the substrate surface may be covered in a continuous coating (see ROHRBAUGH at paragraphs [0010], [0018], [0086], [0124] and [0249]), wherein the coating can comprise silica, silicates (see ROHRBAUGH at paragraphs [0019], [0052], [0054]-[0055], [0058] and [0067]) and 0.2% by weight of hectorite clay nanoparticles (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11). ROHRBAUGH teaches that such nanoparticles can be economically produced, and that using hectorite clay nanoparticles in this amount can form a coating composition which is uniform and durable and can modify a hard surface to bring about desired multi-use benefits (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[00690]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coated substrate of LEE by simply substituting the unspecified substrate with a building panel, e.g., a wood wall, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0010], [0018] and [0249]), and by substituting the unspecified clay with 0.2% by weight of hectorite clay nanoparticles as taught by ROHRBAUGH (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11). One of ordinary skill in the art could have used a building panel such as a wood wall as the substrate with a reasonable expectation of success, yielding the predictable result of providing a coated hard surface (see LEE at paragraph 1; see ROHRBAUGH at paragraph [0024]), and would have been motivated to do so for the benefit of forming a protected wall having improved properties such as high hardness, antibacterial activity, water resistance, chemical resistance and non-flammability (see LEE at Abstract; see ROHRBAUGH at paragraphs [0024] and [0249]). One of ordinary skill in the art also could have substituted the unspecified clay with 0.2% of hectorite clay with a reasonable expectation of success, yielding the predictable result of forming a coating composition comprising clay particles (see LEE at paragraphs 12 and 16; see ROHRBAUGH at paragraphs [0049]-[0053]), and would have been motivated to do so for the benefit of forming a uniform and durable coating which can modify a hard surface to bring about desired multi-use benefits, using clay particles which can be economically produced, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[0060]). It would also be obvious to one of ordinary skill in the art to form a continuous coating of the entire surface of the wall as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0086], [0124] and [0249]), including the first major surface and the side surface. Further, even without the disclosure of ROHRBAUGH, it would be obvious to one of ordinary skill that both the first major surface and the side surface may be completely coated in order to provide the benefits of the coating to these surfaces.
Regarding claim 2, as applied to claim 1 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 1, wherein the building panel comprises a cellulose-based substrate (see ROHRBAUGH at paragraphs [0078] and [0249], teaching wood walls; wood comprises cellulose).
Regarding claim 6, as applied to claim 1 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 1, wherein a wet weight ratio of the silicate to the hectorite clay overlaps with the claimed range of from about 217:1 to about 567:1 (see LEE at paragraphs 13 and 16, teaching 10 to 70% by weight of sodium silicate and/or potassium silicate inorganic filler; see ROHRBAUGH at paragraph [0315] and Table 1, Example #11, teaching 0.2% by weight of hectorite clay; these amounts result in ratios as claimed of 0.1/0.002 to 0.7/0.002, or 50:1 to 350:1), thereby rendering the claimed range obvious. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 13, as applied to claim 1 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 1. LEE fails to explicitly teach that the coating further comprises EO/PO alcohol, wherein the EO/PO alcohol is present in an amount from about 0.1 to about 1.5 wet wt. %.
ROHRBAUGH teaches a coated building panel wherein the coating can comprise silica, silicate and hectorite (see ROHRBAUGH at paragraphs [0010], [0018]-[0019], [0052], [0054]-[0055], [0058], [0067], [0249] and [0315] and Table 1) and wherein the coating further comprises 0.01% to 3% by weight of a surfactant such as a mixture of ethylene oxide and propylene oxide with fatty alcohols, i.e., EO/PO alcohol (see ROHRBAUGH at paragraphs [0152]-[0154]). ROHRBAUGH teaches that surfactants such as EO/PO alcohol surfactants used in this amount are especially useful in coating compositions as wetting agents to facilitate the dispersion of nanoparticles onto a hard surface (see ROHRBAUGH at paragraph [0152]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the coated building panel of LEE in view of ROHRBAUGH by including 0.01% to 3% by weight of an EO/PO alcohol surfactant as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0152]-[0154]), which overlaps with and thereby renders obvious the claimed range of 0.1 to about 1.5 wet wt. %. One of ordinary skill in the art would have been motivated to make such a modification for the benefit of providing the coating composition with a surfactant wetting agent which will facilitate the dispersion of nanoparticles onto hard surfaces (see ROHRBAUGH at paragraph [0152]).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 20, as applied to claim 1 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 1. LEE fails to explicitly teach that the coating further comprises a sodium polyacrylate ionic surfactant, wherein the sodium polyacrylate ionic surfactant is present in an amount from about 0.005 to about 0.075 wet wt. %.
ROHRBAUGH teaches a coated building panel wherein the coating can comprise silica, silicate and hectorite (see ROHRBAUGH at paragraphs [0010], [0018]-[0019], [0052], [0054]-[0055], [0058], [0067], [0249] and [0315] and Table 1) and wherein the coating further comprises 0.02% by weight of a dispersant such as Polyacrylate 4500 MW (i.e., sodium polyacrylate, as evidenced by ATAMAN; see ATAMAN at pg. 1 and 7) (see ROHRBAUGH at Table 2), which is an ionic surfactant. ROHRBAUGH teaches that using such a dispersant facilitates dispersion of particles and allows the coating composition to be prepared using tap water so that the use of deionized water is not necessary (see ROHRBAUGH at paragraphs [0091]-[0092], [0100] and [0316]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the coated building panel of LEE in view of ROHRBAUGH by including 0.02% by weight of sodium polyacrylate dispersant (i.e., ionic surfactant) as taught by ROHRBAUGH (see ROHRBAUGH at Table 2). One of ordinary skill in the art would have been motivated to make such a modification the benefit of facilitating the dispersion of particles in the coating composition and forming a coating composition which does not require the use of deionized water (see ROHRBAUGH at paragraphs [0091]-[0092], [0100] and [0316]).
Regarding claim 48, LEE teaches a method for protecting a substrate, comprising coating the substrate (see LEE at paragraphs 1, 37 and 128) with a coating composition comprising:
potassium silicate present in an amount overlapping with and thereby rendering obvious the claimed range of from about 72 to about 80 wet wt. % (see LEE at paragraphs 13 and 16, teaching that the coating composition comprises 10 to 70% by weight of an inorganic filler comprising potassium silicate; as discussed above, “about” 72% is interpreted as meaning 72% +/- 5%, i.e., 68.4% to 75.6%);
clay (see LEE at paragraph 16, teaching that the filler can further comprise a clay);
silica present in an amount overlapping with and thereby rendering obvious the claimed range of from about 1 to about 3 wet wt. % (see LEE at paragraphs 31-32, teaching that the coating composition can comprise 0.1 to 2% by weight of silica as an additive);
and polysorbate present in an amount overlapping with and thereby rendering obvious the claimed range of from about 0.5 to about 10 wet wt. % (see LEE at paragraph 27, teaching that the coating composition comprises 0.1 to 3% by weight of polysorbate).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
However, LEE fails to explicitly teach (i) that the coated substrate is a building panel and (ii) that the clay is hectorite clay present in an amount from about 0.2 to about 0.5 wet wt.%.
ROHRBAUGH teaches a coated hard surface substrate which can be metal or non-metal, e.g., a wood wall (a wall is a building panel comprising a first major surface opposite a second major surface and a side surface extending there-between) (see ROHRBAUGH at paragraphs [0010], [0018] and [0249]), wherein the coating can comprise silica, silicates (see ROHRBAUGH at paragraphs [0019], [0052], [0054]-[0055], [0058] and [0067]) and 0.2% by weight of hectorite clay nanoparticles (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11). ROHRBAUGH teaches that such nanoparticles can be economically produced, and that using hectorite clay nanoparticles in this amount can form a coating composition which is uniform and durable and can modify a hard surface to bring about desired multi-use benefits (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[00690]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of LEE by simply substituting the unspecified substrate with a building panel, e.g., a wood wall, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0010], [0018] and [0249]), and by substituting the unspecified clay with 0.2% by weight of hectorite clay nanoparticles as taught by ROHRBAUGH (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11). One of ordinary skill in the art could have used a building panel such as a wood wall as the substrate with a reasonable expectation of success, yielding the predictable result of providing a coated hard surface (see LEE at paragraph 1; see ROHRBAUGH at paragraph [0024]), and would have been motivated to do so for the benefit of forming a protected wall having improved properties such as high hardness, antibacterial activity, water resistance, chemical resistance and non-flammability (see LEE at Abstract; see ROHRBAUGH at paragraphs [0024] and [0249]). One of ordinary skill in the art also could have substituted the unspecified clay with 0.2% of hectorite clay with a reasonable expectation of success, yielding the predictable result of forming a coating composition comprising clay particles (see LEE at paragraphs 12 and 16; see ROHRBAUGH at paragraphs [0049]-[0053]), and would have been motivated to do so for the benefit of forming a uniform and durable coating which can modify a hard surface to bring about desired multi-use benefits, using clay particles which can be economically produced, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[0060]).
Regarding claim 49, as applied to claim 48 above, LEE in view of ROHRBAUGH teaches a method according to claim 48, wherein the building panel is a wall or ceiling panel (see ROHRBAUGH at paragraph [0249], teaching walls).
Regarding claim 50, as applied to claim 48 above, LEE in view of ROHRBAUGH teaches a method according to claim 48, wherein the building panel comprises cellulose (see ROHRBAUGH at paragraphs [0078] and [0249], teaching wood walls; wood comprises cellulose).
Regarding claim 54, LEE teaches a substrate comprising a coating (see LEE at paragraphs 1, 153 and 155, teaching a coated substrate which can have a metal or non-metal surface) comprising:
potassium silicate present in an amount overlapping with and thereby rendering obvious the claimed range of from about 72 to about 80 wet wt. % (see LEE at paragraphs 13 and 16, teaching that the coating composition comprises 10 to 70% by weight of an inorganic filler comprising potassium silicate; as discussed above, “about” 72% is interpreted as meaning 72% +/- 5%, i.e., 68.4% to 75.6%);
clay (see LEE at paragraph 16, teaching that the filler can further comprise a clay);
silica present in an amount overlapping with and thereby rendering obvious the claimed range of from about 1 to about 3 wet wt. % (see LEE at paragraphs 31-32, teaching that the coating composition can comprise 0.1 to 2% by weight of silica as an additive);
polysorbate 20 present in an amount overlapping with and thereby rendering obvious the claimed range of from about 0.5 to about 10 wet wt. % (see LEE at paragraphs 27 and 66, teaching that the coating composition comprises 0.1 to 3% by weight of polysorbate such as polyoxyethylene sorbitan monolaurate, i.e., polysorbate 20, as evidenced by PUBCHEM; see PUBCHEM at pg. 2, “Synonyms”); and
Al(OH)3 (see LEE at paragraphs 18, 22-23 and 87, teaching aluminum hydroxide, i.e., Al(OH)3), wherein the Al(OH)3 is present in an amount overlapping with and thereby rendering obvious the claimed range of from about 0.5 to about 3.5 wet wt. % (see LEE at paragraphs 22-23 and 87; LEE teaches including the oxide containing material in an amount of 5 to 40% by weight in the coating composition, and discloses an example wherein the oxide containing material comprises 17 g of aluminum hydroxide and 203 g of total material, i.e., 8% by weight aluminum oxide; i.e., LEE teaches that aluminum hydroxide may be used in the total coating composition in an amount of 8% of 5 to 50% by weight, which is equal to 0.4% to 3.2% by weight).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
However, LEE fails to explicitly teach (i) that the coated substrate is a building panel comprising a first major surface opposite a second major surface and a side surface extending there-between, (ii) that the clay is hectorite clay present in an amount from about 0.2 to about 0.5 wet wt.%, and (iii) EO/PO alcohol present in an amount from about 0.1 to about 1.5 wet wt.%.
ROHRBAUGH teaches a coated hard surface substrate which can be metal or non-metal, e.g., a wood wall (a wall is a building panel comprising a first major surface opposite a second major surface and a side surface extending there-between) (see ROHRBAUGH at paragraphs [0010], [0018] and [0249]), wherein the coating can comprise silica, silicates (see ROHRBAUGH at paragraphs [0019], [0052], [0054]-[0055], [0058] and [0067]) and 0.2% by weight of hectorite clay nanoparticles (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11). ROHRBAUGH teaches that such nanoparticles can be economically produced, and that using hectorite clay nanoparticles in this amount can form a coating composition which is uniform and durable and can modify a hard surface to bring about desired multi-use benefits (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[00690]). ROHRBAUGH further teaches that the coating further comprises 0.01% to 3% by weight of a surfactant such as a mixture of ethylene oxide and propylene oxide with fatty alcohols, i.e., EO/PO alcohol (see ROHRBAUGH at paragraphs [0152]-[0154]). ROHRBAUGH teaches that surfactants such as EO/PO alcohol surfactants used in this amount are especially useful in coating compositions as wetting agents to facilitate the dispersion of nanoparticles onto a hard surface (see ROHRBAUGH at paragraph [0152]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the coated substrate of LEE by simply substituting the unspecified substrate with a building panel, e.g., a wood wall, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0010], [0018] and [0249]); by substituting the unspecified clay with 0.2% by weight of hectorite clay nanoparticles as taught by ROHRBAUGH (see ROHRBAUGH at paragraph [0315] and Table 1, Example #11); and by including 0.01% to 3% by weight of an EO/PO alcohol surfactant as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0152]-[0154]), which overlaps with and thereby renders obvious the claimed range of 0.1 to about 1.5 wet wt. %. One of ordinary skill in the art could have used a building panel such as a wood wall as the substrate with a reasonable expectation of success, yielding the predictable result of providing a coated hard surface (see LEE at paragraph 1; see ROHRBAUGH at paragraph [0024]), and would have been motivated to do so for the benefit of forming a protected wall having improved properties such as high hardness, antibacterial activity, water resistance, chemical resistance and non-flammability (see LEE at Abstract; see ROHRBAUGH at paragraphs [0024] and [0249]). One of ordinary skill in the art also could have substituted the unspecified clay with 0.2% of hectorite clay with a reasonable expectation of success, yielding the predictable result of forming a coating composition comprising clay particles (see LEE at paragraphs 12 and 16; see ROHRBAUGH at paragraphs [0049]-[0053]), and would have been motivated to do so for the benefit of forming a uniform and durable coating which can modify a hard surface to bring about desired multi-use benefits, using clay particles which can be economically produced, as taught by ROHRBAUGH (see ROHRBAUGH at paragraphs [0049]-[0053] and [0059]-[0060]). One of ordinary skill in the art would also have been motivated to include 0.01% to 3% by weight of an EO/PO alcohol surfactant for the benefit of providing the coating composition with a surfactant wetting agent which will facilitate the dispersion of nanoparticles onto hard surfaces (see ROHRBAUGH at paragraph [0152]).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 56, as applied to claim 54 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 54. LEE fails to explicitly teach that the coating further comprises a sodium polyacrylate ionic surfactant, wherein the sodium polyacrylate ionic surfactant is present in an amount from about 0.005 to about 0.075 wet wt. %.
ROHRBAUGH teaches a coated building panel wherein the coating can comprise silica, silicate and hectorite (see ROHRBAUGH at paragraphs [0010], [0018]-[0019], [0052], [0054]-[0055], [0058], [0067], [0249] and [0315] and Table 1) and wherein the coating further comprises 0.02% by weight of a dispersant such as Polyacrylate 4500 MW (i.e., sodium polyacrylate, as evidenced by ATAMAN; see ATAMAN at pg. 1 and 7) (see ROHRBAUGH at Table 2), which is an ionic surfactant. ROHRBAUGH teaches that using such a dispersant facilitates dispersion of particles and allows the coating composition to be prepared using tap water so that the use of deionized water is not necessary (see ROHRBAUGH at paragraphs [0091]-[0092], [0100] and [0316]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the coated building panel of LEE in view of ROHRBAUGH by including 0.02% by weight of sodium polyacrylate dispersant (i.e., ionic surfactant) as taught by ROHRBAUGH (see ROHRBAUGH at Table 2). One of ordinary skill in the art would have been motivated to make such a modification the benefit of facilitating the dispersion of particles in the coating composition and forming a coating composition which does not require the use of deionized water (see ROHRBAUGH at paragraphs [0091]-[0092], [0100] and [0316]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable LEE in view of ROHRBAUGH as applied to claim 1 above, and further in view of Xunyu Chemical, "Paints and Coatings", available online 16 June 2019 (hereinafter, “XUNYU”).
Regarding claim 3, as applied to claim 1 above, LEE in view of ROHRBAUGH teaches a building panel according to claim 1. LEE teaches using silica as an additive to improve the performance of the coating film (see LEE at paragraphs 31-32 and 70), but fails to explicitly mention that the silica is fumed silica.
However, fumed silica is a known performance-enhancing silica additive for coating compositions. For example, XUNYU teaches that addition of fumed silica improves thixotropic and rheological properties, enhances hardening and adhesion, and reduces deterioration rate of coatings (see XUNYU at pg. 1).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to selected fumed silica as the silica additive in the coating of LEE in view of ROHRBAUGH, in view of the disclosure of XUNYU that fumed silica is a known type of silica additive for coatings which improves thixotropic and rheological properties, enhances hardening and adhesion, and reduces deterioration rate of coatings (see XUNYU at pg. 1); MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claims 18 and 55 are rejected under 35 U.S.C. 103 as being unpatentable LEE in view of ROHRBAUGH as applied to claims 1 and 54 above, and further in view of Yang, et al. (U.S. Pub. No. 2017/0321059-A1) (hereinafter, “YANG”).
Regarding claims 18 and 55, as applied to claims 1 and 54 above, LEE in view of ROHRBAUGH teaches a building panel according to claims 1 and 54. LEE and ROHRBAUGH fail to explicitly teach that the coating further comprises a polyether-siloxane copolymer emulsion, wherein the polyether-siloxane copolymer emulsion is present in an amount from about 0.01 to about 0.1 wet wt. %.
YANG teaches a coated wood panel (see YANG at paragraphs [0060], [0082] and [0111]) wherein the coating composition comprises silica, silicates and clay (see YANG at paragraphs [0071]-[0074]) and further comprises 0.01% to 1% by weight of polyether siloxane copolymer emulsion as a defoamer (see YANG at paragraph [0073]). YANG teaches that using this kind of defoamer in this amount reduces and hinders the formation of foam in the coating composition (see YANG at paragraph [0073]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the coated building panel of LEE in view of ROHRBAUGH by including 0.01% to 1% by weight of polyether siloxane copolymer emulsion defoamer as taught by YANG (see YANG at paragraph [0073]). One of ordinary skill in the art would have been motivated to make such a modification the benefit of reducing and hindering the formation of foam in the coating composition as taught by YANG (see YANG at paragraph [0073]).
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Lee does not disclose or suggest a coating composition in which potassium silicate is used as the silicate species in an amount from about 72 to about 78 wet wt.% as now required by the pending claims. Indeed, the upper limit of Lee's disclosed range is capped at 70 wt.%” (see Remarks at pg. 6).
“Lee also fails to disclose or suggest… polysorbate 20 specifically” (see Remarks at pg. 6).
“Lee also fails to disclose or suggest… aluminum hydroxide in the narrow wet-weight relationships now claimed. Aluminum hydroxide in Lee is treated as one of many optional oxide-containing materials and is not disclosed as being required, nor as being present in the specific amount now recited” (see Remarks at pg. 6).
“The isolated disclosure of 0.2 wt.% hectorite clay in Rohrbaugh is not a teaching of an operative range… The present claims now require a narrowly defined hectorite clay range of 0.25 to 0.35 wet wt.%” (see Remarks at pg. 6).
“As explained by the Federal Circuit in In re Peterson, overlapping- range analysis applies only where the claimed invention differs from the prior art solely by a numerical range. That is not the case here, as the amended claims differ in both composition and structure from the cited references” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that LEE does not disclose or suggest a range of about 72 to about 78 wet wt.% (or, 80 wet wt.%, as recited in the amended claims) because the disclosed range is capped at 70 wt.%, the Examiner respectfully disagrees. As set forth in the rejection above, LEE teaches a range overlapping with and thereby rendering the claimed range obvious; as set forth in Applicant’s specification, “about” is interpreted as meaning +/- 5%. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
In response to Applicant’s argument that LEE does not disclose or suggest polysorbate 20, the Examiner respectfully disagrees; as set forth in the rejection above, LEE explicitly discloses polysorbate 20, i.e., polyoxyethylene sorbitan monolaurate.
In response to Applicant’s argument that LEE does not disclose or suggest aluminum hydroxide in the amended claimed range, the Examiner respectfully disagrees. As set forth above, LEE teaches aluminum hydroxide in an amount overlapping with and thereby rendering obvious the claimed range. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
In response to Applicant’s argument that the present invention is nonobvious because aluminum hydroxide is an option in LEE, the Examiner respectfully disagrees. The inclusion of other options does not negate the explicit teaching of aluminum hydroxide. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As set forth in MPEP § 2131.02, a reference that clearly names the claimed species anticipates the claim no matter how many other species are named.
In response to Applicant’s argument that the present invention is nonobvious because ROHRBAUGH does not teach the narrowly defined hectorite clay range of 0.25 to 0.35 wet wt.% now required because it teaches an amount of 0.2 wt.%, the Examiner respectfully disagrees, as 0.25 to 0.35 wet wt.% is not the claimed range. The claimed range is about 0.2 to about 0.5 wet wt.%, and 0.2% falls within a range of 0.2% to 0.5%.
In response to Applicant’s argument that overlapping-range analysis does not apply because the amended claims differ in both composition and structure from the cited references, the Examiner respectfully disagrees. As set forth in the rejections above, all of the claimed limitations are explicitly taught or rendered obvious by the combination of references. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Applicant argues:
“Lee is silent as to coating architecture and does not disclose or suggest applying a continuous coating that surrounds both the major surface and the side surfaces of a building panel” (see Remarks at pg. 6).
“Rohrbaugh does not disclose potassium silicate at any concentration, does not disclose a silicate-dominant coating system, and does not disclose fumed silica, polysorbate 20, or aluminum hydroxide.” (see Remarks at pg. 6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As set forth in the rejections above, ROHRBAUGH teaches a continuous coating of a building panel, LEE teaches the claimed amount of potassium silicate, polysorbate 20, and aluminum hydroxide, XUNYU teaches fumed silica, and it is the combination of the references which renders the claimed invention obvious.
Applicant argues:
“the proposed combination of Lee and Rohrbaugh remains improper even after amendment. Lee is directed to inorganic coatings emphasizing antibacterial activity, hardness, and chemical resistance. Rohrbaugh is directed to nanoparticle dispersion techniques. Neither reference recognizes the problem addressed by Applicant. Specifically, neither addresses the tendency of high-silicate coatings to crack when applied to cellulose-based building panels, nor do they suggest Applicant's solution” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that LEE and ROHRBAUGH are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both references and the present invention are in the field of surface coating compositions applied on substrates to improve surface properties. The references do not also need to specifically address the problem with which the inventor was concerned in order to be considered analogous art.
Applicant argues:
“The combination analysis relies on impermissible hindsight reconstruction, selectively extracting individual features from unrelated references only after Applicant's disclosure has revealed the claimed invention. Such hindsight-driven reasoning cannot support a conclusion of obviousness where the prior art itself does not provide a reason to make the claimed selections and modifications” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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