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 .
Election/Restrictions
Claims 10-16 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim.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.
Response to Amendment
The amendment filed 3/6/2026 is entered and fully considered.
In view of the amendment the 112 rejection is removed.
Response to Arguments
Applicant argues the prior art does not claim the amended “method for preparation of a color imaging layer printable with a water-based ink on a coated building board”. The amendment makes clear that the claim is directed to a “method for preparation” of the color imaging layer by way of coating an aqueous layer and curing to form “the coating composition” which must be referring to the coated building board. Accordingly, “method for preparation” for applying a colour imaging layer onto a “coated building board” is interpreted to be an image receiving layer, and the claim does not positively require an imaging layer to be applied as long as the building board is coated to be “prepared” for a printable imaging layer. The same composition applied and cured is expected to “prepare” the building board for a color imaging layer. Therefore, the rejection is maintained.
Applicant argues that the prior art references solve different problems and therefore are should not be combined together. The examiner is not persuaded that references directed to different problems cannot be combined, because solving different problems does not necessarily make references non-analogous art. The MPEP expressly states that references in the same field of endeavor are analogous even if they are addressing different problems MPEP 2141.01(a)I.
The examiner further notes that the claim does not particularly limit the colour imaging layer. The examiner previously noted that pertinent art KIM (KR102158443) shows how a paint can be a color imparting layer and have the moisture absorbing function. Accordingly, a moisture absorbing coating and a color/image imparting coating are considered to be related. Similarly, the combination of references was done to teach different zeolite structures for absorbing moisture. The examiner maintains that the KENICHI reference is silent to the type of zeolite used and that one of ordinary skill in the art would naturally look to other moisture absorbing zeolite for a workable zeolite used in KENICHI.
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 and 17 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).
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.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over KENICHI (JP 2010-58419; citations to machine translation) in view of TERADA et al. (JP 2017-171739; citations to machine translation) further in view of RAHIMI et al. (US 2019/0300729).
Regarding claim 7,
KENICHI teaches an aqueous composition but doe s 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.
Conclusion
THIS ACTION IS MADE FINAL. 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 AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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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.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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