DETAILED ACTION
This office action follows a reply filed on July 16, 2026. Claims 1, 13, 14, 16 and 20 have been amended. Claims 1, 4-8, 13-17 and 20 are currently pending and under examination.
All previous rejections have been withdrawn, as applicants have excluded mica as a suitable matting agent; however, upon further consideration, a new ground(s) of rejection is proposed below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-8, 13-15 are 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.
In claim 1, applicants claim “A primer topcoat paint composition comprising consisting of…”.
It is unclear as to whether the composition comprises or consists of the claimed components.
For the purposes of examination, the claims will be interpreted as “consisting of “ the claimed components, as applicants disclose in the arguments that claims 1 and 16 recite compositions that “consist of” the enumerated components.
Claims 4-8 and 13-15 are rejected along with claim 1 because they incorporate all of the limitations of claim 1, including those that are indefinite.
Claim Rejections - 35 USC § 103
Claims 1, 4-8, 13-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1518904, as evidenced by Yoshimura (US 6,770,689).
EP ‘904 discloses an aqueous coating composition in the form of a water based paint consisting essentially of
(i) 1-20 wt% of a first film-forming resin;
(ii) 2-15 wt% of a second polymeric film-forming resin comprising a styrene acrylic copolymer;
(iii) 5-25 wt% of one or more pigments, preferably titanium dioxide;
(iv) 30-60 wt% of one or more extenders, specifically listed to include chalk, also known as calcium carbonate;
(v) 0.1-7 wt% of one or more thickeners, also known as rheology modifiers;
(vi) 0-6 wt% of one or more adjuvants selected from antibacterial agents, antifoaming agents, pH regulators, wetting agents and dry film protection agents;
(vii) 0-8 wt% organic solvent; and
(viii) water.
The amount of the first film-forming resin and the second comprising a styrene acrylic copolymer overlap with the claimed ranges of 10-50 wt% and 1-10 wt% in claim 1 and the ranges of 10-50 wt% and 6.05-10 wt% in claim 16, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Choosing a combination of 20 wt% of the first film forming resin and 2 wt% of a second, styrene acrylic copolymer is within the teachings of EP ‘904 and suggests the first film forming resin in an amount of 10 times greater than the second, styrene acrylic copolymer.
Therefore, it can be seen that the ratio of first to second film forming resins overlaps with the claimed ratio of at least 5 times greater in claims 1, 14, 16 and 20.
EP ‘904 is prima facie obvious over instant claims 1 and 16.
As to claims 2 and 17, EP ‘904 teaches the first polymeric film-forming resin to include Mowilith DM772 (p. 6, [0056]), which as evidenced by Yoshimura, has a MFT of about 12-14°C (col. 9, ll. 11-15).
As to claims 5-6, EP ‘904 teaches the first polymeric film-forming resin composition comprises a homopolymer or copolymer acrylic resin formed by the polymerization of a monomer mixture comprising acrylic monomers (p. 6, [0054]), preferably include alkyl (meth)acrylates, which include methyl methacrylate, ethyl acrylate, butyl acrylate, butyl methacrylate and ethylhexyl acrylate (p. 4, [0022]) and can include hydroxyethyl acrylate (p. 6, [0054]).
As to claims 7-8, EP ‘904 teaches the styrene acrylic copolymer as comprising unsubstituted or substituted styrene copolymerized with a mixture of butyl methacrylate and ethylhexyl acrylate.(p. 4, [0023]).
As to claim 13, EP ‘904 teaches the inclusion of
0.1-7 wt% thickeners, which meets applicants’ rheology modifiers and overlaps with the claimed range of 0.1-5 wt%;
0.1 or 0.5 wt% Dispelair CF107 anti-foaming agent, which meets applicants’ defoamer and falls within the claimed range of 0.01-5 wt%
0.5 wt% Coatex P90, which meets applicants’ dispersant and falls within the claimed range of 0.01-3 wt%;
0-8 wt% solvent, such as Texanol or Butyl Cellosolve, which are taught as aiding in coalescence of the dispersed film0forming polymer (p. 3, [0011]).
0.05, 0.06 or 0.08 of biocide, which falls within the range of 0.01-5 wt% biocide,
0.1 wt% of an ammonia solution, which meets applicants’ pH adjuster and falls within the claimed range of 0.01-3 wt%;
20, 30 or 40 wt% of calcium carbonate, which meets applicants’’ matting agent and falls within the claimed range of 0.2-40 wt%.
The paints are described as emulsions and the first film forming polymer is described as an emulsion or suspension, which inherently contains a surfactant.
EP ‘904 teaches the inclusion of up to 2 wt% of dry film protection agents (p. 7, [0068]), which are known in the art to include mildewcides.
Note that EP ‘904 exemplifies the inclusion of talc; however, this component is not required by the compositions of EP ‘904 and the claimed “consisting” language is met.
As to claim 15, the amount of pigment taught by EP ‘904 overlaps with the claimed amount of 1-40 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
