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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/26/2026 has been entered.
Claim Objections
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohling et al. (2019/0177554) in view of Bohling et al. (2015/0011695), Johnson et al. (WO 97/46377), Kojima et al. (JP 2001-149855A), Iwasaki (JP 2002-096362A), Tullos et al. (CA 2,405,522), Pankoke (2020/0016629) and Kakimoto et al. (JP 2013-208513A).
Regarding claims 1, 3, 5, 6: Bohling et al. ‘554 teach a composition comprising an aqueous dispersion of 2-phosphoethyl methacrylate [0029] functionalized acrylic polymer particles with an average particle size of from 80 to 500 nm [0007, 0024; Examples]; and polymeric organic crosslinked microspheres having a median weight average particle size in the range of 2 to 10 microns [0032; Examples]. Bohling et al. ‘554 teach that the particles are functionalized with 0.1 to 5 weight percent of structural units of a phosphorus acid monomer [0029; Examples]. Bohling et al. ‘554 teach that the amount of polymer particles is from 4 to 35 wt% [0016; Examples] and the amount of the microspheres is from 4 to 30 wt% [0018; Examples]. Bohling et al. ‘554 teach a substantial absence of inorganic extender [Examples] as the extenders have been replaced by the polymeric organic microspheres [0069], and the most preferably amount is 0 PVC [0069; Examples]. Therefore, the claimed amount of inorganic extenders to microspheres is present in Bohling et al. ‘554.
The ranges taught in Bohling et al. ‘554 provide an overlapping ratio of microspheres and inorganic extenders to polymer particles.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Bohling et al. ‘554 fail to teach the first polymer particles.
However, Bohling et al. ‘695 teach in an analogous composition that adding a group of acrylic polymer particles with an average volume particle size of 100 nm comprising a substantial absence of structural units of a phosphorus acid monomer with a weight ratio of second polymer particles to first polymer particles of 70:30 [0006; Examples] provides a higher solids content, improved KU stability, more efficient hiding, and superior film appearance [0047].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the acrylic polymer particles of Bohling et al. ‘695 to the polymer composition of Bohling et al. ‘554 as part of the polymer particles to provide a higher solids content, improved KU stability, more efficient hiding, and superior film appearance.
Bohling et al. ‘554 fail to teach a gloss rating.
However, Johnson et al. teach that a matte paint with an “extremely low 60 degree gloss level” of less than about 15 gloss units (page 2, lines 13-14). The range of less than about 15 includes the value of 15. "About" permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8% In re Ayers, 154 F2d 182, 69 U.S.P.Q. 109 (C.C.P.A. 1946). Johnson et al. teach an embodiment with a matt 60-degree gloss reading of 16.8 gloss units (page 5, lines 17-19).
Kojima et al. teach that a matte coating has a 60-degree gloss of more preferably from 5 to 20% [0040].
Iwasaki teaches that a matte surface has a 60-degree gloss of 20% [0007].
Tullos et al. teach that a “matte” finish has a 60-degree gloss of less than 20 units (page 1, lines 11-12).
Pankoke teaches that a “matte” surface has 60-degree gloss units of less than 20 gloss units [0042].
Kakimoto et al. teach that the 60-degree gloss value of matt finish is 30 or less [0002].
It light of the art cited above, and the fact that Bohling et al. ‘554 teaches a matte coating with the properties of a semi-gloss paint, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a coating in Bohling et al. ‘554 with a 60-degree gloss value of 15 or 20 gloss units to produce a matte coating.
Regarding claim 2: Bohling et al. ‘554 teach styrene-acrylic polymer particles [0024]. The remainder of the limitations are disclosed above under claim 1.
Regarding claim 4: Bohling et al. ‘554 teach vinyl acetate polymer particles [0024]. The remainder of the limitations are disclosed above under claim 1.
Regarding claim 7: Bohling et al. ‘554 teach a substantial absence of inorganic extenders [0069; Examples], the claimed microspheres [0032, 0061; Examples], and the claimed amounts as demonstrated under claim 1 above.
Regarding claim 8: Bohling et al. ‘554 teach the claimed microspheres [0033-0036, 0057-0058].
Regarding claim 10: Bohling et al. ‘554 teach a substantial absence of inorganic extender [0069; Examples], wherein the composition further comprises a rheology modifier, coalescent, surfactant, defoamer and opacifying piment (TiO2) [0010, 0072; Examples]. Bohling et al. ‘554 teach that their composition is capable of being used as a paint with the properties of a semi-gloss paint [0014].
Bohling et al. ‘554 fail to teach a gloss rating.
However, Kojima et al. teach that a matte coating has a 60-degree gloss of more preferably from 5 to 20% [0040].
Iwasaki teaches that a matte surface has a 60-degree gloss of 20% [0007].
Tullos et al. teach that a “matte” finish has a 60-degree gloss of less than 20 units (page 1, lines 11-12).
Pankoke teaches that a “matte” surface has 60-degree gloss units of less than 20 gloss units [0042].
Kakimoto et al. teach that the 60-degree gloss value of matt finish is 30 or less [0002].
It light of the art cited above, and the fact that Bohling et al. ‘554 teaches a matte coating with the properties of a semi-gloss paint, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce a coating in Bohling et al. ‘554 with a 60-degree gloss value of 20 gloss units to produce a matte coating with the properties of a semi-gloss paint.
Response to Arguments
Applicant's arguments filed 10/8/2025 have been fully considered but they are not persuasive.
The applicant has traversed the restriction requirement on the grounds that there is no undue burden. This is not persuasive because the different groups require separate searches.
The applicant has alleged that the motivation to combine, KU stability, hiding and appearance, are merely conclusory statements. This is not persuasive because KU stability, more efficient hiding and superior film appearance are particular properties and motivations to combine the references.
The applicant admits that Bohling ‘554 does not disclose a range of gloss rating, but makes the argument that the example compositions are measured using an 85° angle. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “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)). See MPEP 2123. “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). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The Applicant has made the argument that Bohling I teaches a matte coating and alleges that Bohling I would not use the ranges that Bohling I discloses. The error in the Applicant’s argument is that Benjamin Moore Sheen levels are imposed upon Bohling I, and are used to limit the disclosure of Bohling I. Bohling I is allowed to define “matte” by their disclosure, which is the ranges of the components in Bohling I. As shown above, “matte” coatings include a 60-degree gloss value of 15, or 20, or even up to 30 gloss units. Considering that Bohling I discloses a matte coating with the properties of semi-gloss, the skilled artisan would expect the gloss value to be at the high end of the range of “matte” and possible even cross into the low end of “semi-gloss”.
The Applicant has made the argument that the examples of Bohling I are outside of the claimed ranges. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “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)). See MPEP 2123. “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). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The applicant has stated that the prior art cited for gloss ratings are from various types of compositions. The is no industry standard for a matte gloss rating. The Office has demonstrated from a variety of compositions that the skilled artisan would consider a gloss rating of 15 and 20 to be “matte”.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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