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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/6/2026 has been entered.
Response to Amendment
The amendment filed 8/6/2026 is entered and fully considered. In view of the amendment the previous rejections are removed and additional prior art is applied below.
Election/Restrictions
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/4/2025.
Newly submitted claim 30 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: New claim 30 is the equivalent to claim 10 directed to the product of the coating process.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 30 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 1-6, 8, 9, 17, 19-24, and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over KENICHI (JP 2010058419; citations to machine translation) in view of TERADA et al. (JP 2017-171739; citations to machine translation) and EBARA et al. (JP 2010058419; citations to machine translation) and SATOU et al. (US 2017/0028758).
Regarding claims 1 and 2,
KENICHI teaches a coating for a wood panel (building board) abstract. The composition includes a moisture absorbing/desorbing material and a resin-based binder dispersed in water (aqueous) abstract. The moisture absorbing/releasing material can be zeolite while the resin binder can be vinyl acetate and acrylic resin page 3. The loading for the resin can be 10-40% abstract which overlaps the claimed range and is considered prima facie obvious, MPEP 2144.05.I. The loading for the zeolite (molecular sieve) can be 20-50% abstract which also overlaps the claimed range and is considered prima facie obvious, MPEP 2144.05.I. As shown in Example 1 and 2 page 6, the compositions are mixed and applied to a substrate (building board) before being dried at 105°C. The drying step is interpreted to be a curing step for an acrylic binder composition as described in applicant’s specification page 12-13 where drying at 80-300°C is a curing/drying step.
KENICHI teaches incorporating a zeolite into the coating but does not expressly teach the type of zeolite (a molecular sieve). However, one of ordinary skill would look to the art to determine what types of zeolite are suitable in coating compositions for construction materials. The TERADA reference similarly teaches using zeolite powder as a moisture absorber in a film abstract and further teaches the zeolite used can be 3A (3 angstrom) while using similar binder (ethylene-methyl methacrylate copolymer) in example 1. The angstrom size pores are considered “microporous” according to applicant’s specification page 2. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use zeolite of TERADA as a simple substitution of known zeolite structures for absorbing water in films comprising similar binder materials creating a reasonable expectation of success, MPEP 2144.06.II.
The references teach applying the moisture absorber to a wood building board but do not expressly teach applying to a cement or gysum building board. However, EBARA teaches that when applying a composition to a base material for deodorizing and humidity control, gypsum and cement boards can be used as an alternative to wood base material advantageous effects and page 4 paragraph 3. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to apply the moisture control layer of KENICHI to a cement or gypsum board as a simple substitution of known building boards that benefit from moisture and odor control.
The references still do not teach the building board as being printable with a colour imaging layer made from a water-based ink. However, SATOU teaches that when making a decorative board, a base board such as cement [0022] can be coated with primer and ink receiving layers [0041]. At the time of filing the invention it would have been prima facie obvious to add a decorative layer to the building board of KENICHI using the method of SATOU to obtain a desired aesthetic.
Regarding claims 3 and 17,
The zeolite in TERADA is 3A (angstroms) as described above. The zeolite type 3A corresponds to pore diameters of 0.3nm (for 100% of pores).
Regarding claim 4,
KENICHI generally teaches using acrylic resins and in Example 1 the resin used is vinyl acetate (ethylenically unsaturated) page 6. The reference does not teach using polymers of the claimed monomers as the acrylic resin. However, TERADA teaches that the organic binder for a moisture absorbing film can be methyl methacrylate (alkyl methacrylate) Example 1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to substitute one acrylic binder for another when making a moisture/odor absorbing coating using zeolite adsorber MPEP 2144.06.II.
Regarding claim 5,
As noted above, the references teach that when using acrylic binders for coating construction materials both alkyl methacrylates and vinyl acetates are known acrylic binders. TERADA uses copolymer of ethylene and methyl methacrylate in Example 1. Using both binders together is considered prima facie obvious the combination of art recognized equivalent acrylic binders for moisture/odor absorbing coatings incorporating zeolite, MPEP 2144.06.I. TERADA shows an example of the ethylenically unsaturated monomers can be used with the acrylic resin.
TERADA also teaches that when using a copolymer of an ethylene (unsaturated comonomer) with methyl methacrylate the ratio is 12.5:50 in example 1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use at least 50% acrylic monomer (such as methyl methacrylate) and less than 50% ethylenically unsaturated comonomers as a known workable ratio for the copolymer. The examiner notes that generally changes in concentration do not support patentability without unexpected results MPEP 2144.05.II.
Regarding claim 6,
KENICHI teaches using a balance of water (10-70%) abstract. The claimed range overlaps the prior art range and is prima facie obvious, MPEP 2144.05.I. The reference also shows in example 1 the water used is 45% which falls within the claimed range.
Regarding claim 8,
KENICHI teaches adding polyvinyl alcohol to the composition to increase strength of the coating page 4-5. The reference does not expressly teach the loading of polyvinyl alcohol. However, the range is greater than 0% which overlaps the range of less than 50% and is considered prima facie obvious, MPEP 2144.05.I.
Regarding claim 9,
KENICHI teaches further including fungicide (biocide), antifoamer (defoamer), dispersing agent, thickener page 4.
Regarding claims 19 and 20,
KENICHI teaches a coating for a wood panel (building board) abstract. The composition includes a moisture absorbing/desorbing material and a resin-based binder dispersed in water (aqueous) abstract. The moisture absorbing/releasing material can be zeolite while the resin binder can be vinyl acetate and acrylic resin page 3. The loading for the resin can be 10-40% abstract which overlaps the claimed range and is considered prima facie obvious, MPEP 2144.05.I. The loading for the zeolite (molecular sieve) can be 20-50% abstract which also overlaps the claimed range and is considered prima facie obvious, MPEP 2144.05.I. As shown in Example 1 and 2 page 6, the compositions are mixed and applied to a substrate (building board) before being dried at 105°C. The drying step is interpreted to be a curing step for an acrylic binder composition as described in applicant’s specification page 12-13 where drying at 80-300°C is a curing/drying step.
KENICHI teaches incorporating a zeolite into the coating but does not expressly teach the type of zeolite (a molecular sieve). However, one of ordinary skill would look to the art to determine what types of zeolite are suitable in coating compositions for construction materials. The TERADA reference similarly teaches using zeolite powder as a moisture absorber in a film abstract and further teaches the zeolite used can be 3A (3 angstrom) while using similar binder (ethylene-methyl methacrylate copolymer) in example 1. The angstrom size pores are considered “microporous” according to applicant’s specification page 2. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use zeolite of TERADA as a simple substitution of known zeolite structures for absorbing water in films comprising similar binder materials creating a reasonable expectation of success, MPEP 2144.06.II.
The references teach applying the moisture absorber to a wood building board but do not expressly teach applying to a cement or gysum building board. However, EBARA teaches that when applying a composition to a base material for deodorizing and humidity control, gypsum and cement boards can be used as an alternative to wood base material advantageous effects and page 4 paragraph 3. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to apply the moisture control layer of KENICHI to a cement or gypsum board as a simple substitution of known building boards that benefit from moisture and odor control.
The references still do not teach the building board as being printable with a colour imaging layer made from a water-based ink. However, SATOU teaches that when making a decorative board, a base board such as cement that can be reinforced with synthetic (polymer) fibers [0022] can be coated with primer and ink receiving layers [0041]. At the time of filing the invention it would have been prima facie obvious to include reinforcing fibers to the cement building board to reinforce the building board. In addition, at the time of filing the invention it would have been prima facie obvious to add a decorative layer to the building board of KENICHI using the method of SATOU to obtain a desired aesthetic.
Regarding claims 21 and 28,
The zeolite in TERADA is 3A (angstroms) as described above. The zeolite type 3A corresponds to pore diameters of 0.3nm (for 100% of pores).
Regarding claim 22,
KENICHI generally teaches using acrylic resins and in Example 1 the resin used is vinyl acetate (ethylenically unsaturated) page 6. The reference does not teach using polymers of the claimed monomers as the acrylic resin. However, TERADA teaches that the organic binder for a moisture absorbing film can be methyl methacrylate (alkyl methacrylate) Example 1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to substitute one acrylic binder for another when making a moisture/odor absorbing coating using zeolite adsorber MPEP 2144.06.II.
Regarding claim 23,
As noted above, the references teach that when using acrylic binders for coating construction materials both alkyl methacrylates and vinyl acetates are known acrylic binders. TERADA uses copolymer of ethylene and methyl methacrylate in Example 1. Using both binders together is considered prima facie obvious the combination of art recognized equivalent acrylic binders for moisture/odor absorbing coatings incorporating zeolite, MPEP 2144.06.I. TERADA shows an example of the ethylenically unsaturated monomers can be used with the acrylic resin.
TERADA also teaches that when using a copolymer of an ethylene (unsaturated comonomer) with methyl methacrylate the ratio is 12.5:50 in example 1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use at least 50% acrylic monomer (such as methyl methacrylate) and less than 50% ethylenically unsaturated comonomers as a known workable ratio for the copolymer. The examiner notes that generally changes in concentration do not support patentability without unexpected results MPEP 2144.05.II.
Regarding claim 24,
KENICHI teaches using a balance of water (10-70%) abstract. The claimed range overlaps the prior art range and is prima facie obvious, MPEP 2144.05.I. The reference also shows in example 1 the water used is 45% which falls within the claimed range.
Regarding claim 26,
KENICHI teaches adding polyvinyl alcohol to the composition to increase strength of the coating page 4-5. The reference does not expressly teach the loading of polyvinyl alcohol. However, the range is greater than 0% which overlaps the range of less than 50% and is considered prima facie obvious, MPEP 2144.05.I.
Regarding claim 27,
KENICHI teaches further including fungicide (biocide), antifoamer (defoamer), dispersing agent, thickener page 4.
Claim(s) 7 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over KENICHI (JP 2010058419; citations to machine translation) in view of TERADA et al. (JP 2017-171739; citations to machine translation) and EBARA et al. (JP 2010058419; citations to machine translation) and SATOU et al. (US 2017/0028758) further in view of RAHIMI et al. (US 2019/0300729).
Regarding claims 7 and 25,
KENICHI teaches an aqueous composition but does not teach including a film former that is a glycol ether or ester. However, RAHIMI teaches that when making aqueous inks and paints glycol ether can be used as co-solvents abstract. The glycol ether allows for penetration into more hydrophobic surfaces [0026] and can also be used to adjust viscosity of the composition [0025]. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to add glycol ether to the composition of KENICHI to adjust the viscosity and improve penetration onto hydrophobic surfaces.
Allowable Subject Matter
Claims 18 and 29 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The examiner was unable to find prior art teaching the building board with the required acrylic polymer emulsion, molecular sieve and pigment. While the examiner could envision adding pigment to a layer to alter its color, it is not clear how the pigments would interact with the moisture absorbing and deodorizing function of the zeolite. Furthermore, as noted in the rejection above, a pigmented/decorative paint could just as easily be added in a separate layer instead of mixing the layers together.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN MURATA/Primary Examiner, Art Unit 1712
Prosecution Insights