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 .
Status of Application
Claims 1-12, 14-16 and 19-23 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive. Applicant argues that CoatOSil 1770 is not an oligomer and one would not be motivated to adjust the amount of an oligomer based on the amount of a compound that is not an oligomer. However, the Examiner disagrees and argues that Ellington is not directed at only monomeric epoxy silanes. Rather, Ellington states that a generic epoxy silane, comparable to the oligomer of Perdigon, can be added in an effective amount as a gloss reducing agent (0010). Additionally, Ellington states that while CoatOSil 1770 is an exemplary compound, other multifunctional agents involving an epoxy and a silane can be used (0053). Therefore, the Examiner contends that Ellington is not excluding oligomers from acting as a gloss reducing agent and one of ordinary skill would also expect that Perdigon’s epoxy silane can be adjusted to be an effective gloss reducing agent to optimize gloss levels.
Applicant further argues that the range is critical. However, Applicant’s evidence is not commensurate in scope with the broadly claimed waterborne wood coating composition. Therefore, Applicant’s arguments with respect to criticality are moot. Applicant argues that Ellington actually teaches that only small amounts of CoatOSil are effective in reducing gloss. However, that is in respect to the coatings disclosed in Ellington. It would be obvious to one of ordinary skill in the art that the amount of epoxy silane to effectively control gloss would need to be optimized based on the particular coating composition it is applied in and that where one composition may only need a small amount another composition based on a different dispersion of polymer particles may need a larger amount to affect a gloss reduction.
Applicant argues that Ellington is directed to thermoplastic compositions while Perdigon is directed towards aqueous coating composition and one would not expect an additive in a thermoplastic composition to have the same effect as an additive in a coating composition. However, the Examiner disagrees and notes that many additives have the same effect when incorporated into either a thermoplastic composition to be molded or a coating composition to be applied to a substrate.
Therefore, for the reasons above, the rejections of claims 1-12, 14-16 and 19-22 are maintained.
Applicant’s arguments with respect to claim(s) 23 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1. Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 23 newly recites that the one or more functional groups that are hydrolysable to release small molecules are selected from the group consisting of: hydroxyl groups, amino groups, and isocyanate groups. However, this new limitation is not supported by the original disclosure. Rather, the original disclosure recites that the functional groups that are hydrolysable are hydroxyl, alkoxy, alkenyloxy, aryloxy, alkanoyloxy, aroyloxy, alkane oxime and aryl ketoximine (0032). Additionally, the original disclosure only recites that hydroxyl, amino and isocyanate groups are active-hydrogen reactive functional groups present on the siloxane and are not part of the groups that are functional groups that are hydrolysable (0361). Therefore, the original disclosure fails to support the new limitation added to claim 23. Thus, claim 23 fails to comply with the written description requirement.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
2. Claim(s) 1-12, 14-16 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perdigon et al. (WO 2015/041942) in view of Ellington et al. (U.S. PGPUB No. 2006/0264579).
I. Regarding claims 1-10, 12, 16 and 19-21, Perdigon teaches a waterborne (abstract) wood (page 7, line 1) coating composition comprising: a waterborne paint comprising an aqueous dispersion of acrylic polymer particles having a size of 40 nm-300 nm (page 6, lines 17-18, and note that overlapping ranges are prima facie evidence of obviousness) comprising carboxylic acid functional groups (Example 27, page 22 and page 8, lines 5-11); and 1 wt% CoatOSil MP 200 (Example 27, page 22 and page 16, lines 9-10), which is an oligosiloxane which can release methanol, is insoluble in water, and has the structure
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(which corresponds with a m value of 3), thereby meeting the limitations of claims 1, 3, 8-10, 12, 17 and 19. Perdigon teaches the composition forming a coating having a 60 degree gloss of 38 (Example 27, page 22). Perdigon also teaches the composition not including any additional matting powder (Example 27, page 22). Perdigon fails to explicitly teach the CoatOSil MP200 in an amount of 3-10 wt%, 4-8 wt% or 3.8-8 wt% and the gloss of not higher than 40, 30 or 25.
However, Ellington makes clear that epoxysilane compounds, such as CoatOSil 1770, can act as gloss reducing agents and can be included in amounts up to 5 wt% for providing gloss reduction (abstract, 0039, 0041). Ellington further makes clear that the amount of the epoxysilane compound is significant and can affect gloss (0041). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Perdigon’s composition by increasing the amount of CoatOSil MP200 to up to 5 wt % to optimize to a gloss level of less than 25. One would have been motivated to make this modification to achieve the lowest gloss possible by optimizing the quantity of CoatOSil MP200 which is acting as a gloss reducing agent.
II. Regarding claim 11, Perdigon in view of Ellington makes obvious all the limitations of claim 10, including the oligosiloxane being CoatOSil MP 200 having the structure
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(where m is 3), but fails to explicitly teach the use of an oligosiloxane as claimed in claim 11. However, the structure of claim 11 only differs from CoatOSil MP 200 by replacement of the OH groups with methoxy groups. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Perdigon in view of Ellington’s composition by substituting methoxy groups for OH groups in CoatOSil MP200. One would have been motivated to make this modification as one could have substituted methoxy group for the OH groups in CoatOSil MP 200 with a reasonable expectation of success (note that this substitution would yield a compound with a near identical structure, with an expectation of the same properties, and able to similarly release methanol instead of both methanol and water), and the predictable result of providing a matte coating composition for application to wood.
III. Regarding claims 14 and 15, Perdigon in view of Ellington make obvious the composition, and Perdigon also teaches a substrate coated with the coating composition (page 6, line 33) and the substrate can be fiberboard, which is a wood composite substrate (page 7, lines 1-2). Therefore, Perdigon in view of Ellington also makes obvious claims 14 and 15.
IV. Regarding claim 22, Perdigon in view of Ellington make obvious the composition of claim 1 (see above). Additionally, Perdigon teaches the paint comprising: 6.2% of a cosolvent additive (coalescent of Formulation 1, page 14); and an aqueous dispersion of polymer particles at 66 % and water at 29 % (note that the combination of the aqueous polymer 1 and water can be interpreted as meeting the 66% aqueous dispersion of polymer particles and 29% water, see Formulation 1, page 14). Therefore, Perdigon in view of Ellington also make obvious claim 22.
Conclusion
Claims 1-12, 14-16 and 19-23 are pending.
Claims 1-12, 14-16 and 19-23 are rejected.
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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
June 5, 2026Primary Examiner, Art Unit 1717
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