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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2026 has been entered.
Response to Amendment
The declaration under 37 CFR 1.132 filed 9/15/2026 is insufficient to overcome the rejection of claims 1-12, 14-16 and 19-23 based upon Perdigon in view of Ellington as set forth in the last Office action because: The evidence of criticality of the range is not commensurate in scope with the claims as it is not clear that the same range would provide comparable gloss across the broad range of waterborne paints encompassed by claim 1. The examples in the declaration are for a single paint composition with different oligosiloxanes (additionally it is noted that the oligosiloxanes are not identified). Further, generally the error in gloss measurements are 3-5 gloss units, such that the compositions A and F could potentially have a gloss of less than 30 when the error rate of the measurement is considered. Additionally, further examples significantly lower and significantly higher should be presented to make clear that the claimed range is truly critical. Therefore, Applicant’s evidence does not support criticality of the claimed range commensurate in scope with the claims.
Response to Arguments
Applicant’s amendment has overcome the 35 U.S.C. 112(a) rejection.
Applicant's arguments filed 9/15/2026, with respect to the prior art rejections, have been fully considered but they are not persuasive. Applicant argues that the claimed range is critical and not taught by the prior art. However, as noted above, the Examiner argues that the Applicant has not provided sufficient evidence to support that the range is critical and the evidence proffered is not commensurate in scope with the broad claims. Therefore, the Examiner maintains that the claims are obvious over the prior art for the reasons previously set forth.
Applicant argues that the composition of Perdigon does not appreciate the properties achieved by the claimed composition. However, this argument is moot as the rejection is based on the combination of references which make obvious the CoatOSil MP-200 present in an amount of 5% rather than 1% and this composition has not been tested for comparison against Applicant’s exemplary compositions.
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. Amended claim 23 is also rejected over the prior art of record as outlined below.
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.
1. Claim(s) 1-12, 14-16 and 19-23 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, 19-21 and 23, 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 and includes alkoxy groups and hydroxyl groups), thereby meeting the limitations of claims 1, 3, 8-10, 12, 17, 19 and 23. 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.
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/
September 16, 2026Primary Examiner, Art Unit 1717
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