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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 18, the recitation of the phrase “based at least in part” renders the claimed indefinite because it is unclear how much of Compound I must be added as a result of the claimed determination. One having ordinary skill in the art would therefore be unable to determine the full metes and bounds of the claimed process.
Regarding claim 23, the claim describes the adjusting of the claimed variables m and n, but does not describe what these variables are being adjusted with respect to (i.e., there is no point of reference for adjusting the variables m and n). One having ordinary skill in the art would therefore be unable to determine what ranges of m and n are appropriate, and therefore the full metes and bounds of the claimed process cannot be determined.
Claims 18 and 23 will not be examined because too much speculation would be required to form a proper prior art rejection. See MPEP 2173.06(II): Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Zong (US Patent No. 8,304,479) in view of MacFayden (US Patent No. 4,028,378).
Regarding claims 1 and 15, Zong teaches coating compositions having an improved open time profile (Abstract), comprising water (Abstract) and at least one latex polymer (Abstract). Zong further teaches the optional incorporation of additional additives including plasticizers, surfactants, and dispersants, in amounts ranging from about 0 to about 15% by weight (col. 30, lines 23-38).
Zong differs from claim 1 because it is silent with regard to the incorporation of the claimed “open time additive.”
In the same field of endeavor, MacFayden teaches esters of 1,3-dihydroxyethyl group-containing-hydantoins (Abstract), having the following structural formula:
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Structural formula of MacFayden (US Patent No. 4,028,378)
wherein R1 and R2 may each be hydrogen or fatty acid acyl groups including oleoyl groups (Abstract), R3 and R4 are each separately hydrogen, lower alkyl, cycloalkyl, or alkoxy groups collectively having at most seven carbons (Abstract), and x and y are at least 1 and add up to an average of 2 to 100 (Abstract). MacFayden specifies that these materials are useful as plasticizers, dispersing agents, and emulsifying agents (col. 3, line 61 – col. 4, line 5). It is prima facie obvious to select a known material based on its suitability for its intended use (see MPEP 2144.07). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the 1,3-dihydroxyethyl group-containing-hydantoins of MacFayden into the formulation of Zong, as MacFayden recognizes them as suitable plasticizers, dispersing agents, and emulsifying agents.
The 1,3-dihydroxyethyl group-containing-hydantoins of MacFayden, described above, read on the claimed “open time additive” because they are identical to the structure of the claimed “Compound I” when, in said “Compound I:”
m and n range from 1 to about 100
R3 and R4 are hydrogen atoms or fatty acid esters
R1 and R2 are each carbon chains having between about 1 and about six carbons, and wherein each of R1 and R2 are substituted with, inter alia, hydrogen atoms.
Finally, Zong teaches the formation of a paint using the inventive formulation (col. 29, lines 7-9), which reads on the method of claim 15.
Regarding claim 2, as described above, MacFayden specifically teaches the incorporation of oleate groups (Abstract), which read on the claimed “oleate group.”
Regarding claim 3, Zong teaches that the latex polymer can be acrylic, a styrene acrylic, a vinyl acrylic, or an acrylated ethylene-vinyl acetate copolymer (col. 31, lines 13-16), which reads on the claimed “acrylate.”
Regarding claim 4, as described above, Zong teaches the incorporation of water (Abstract).
Regarding claim 5, as described above, Zong teaches the incorporation of plasticizers, surfactants, and dispersants, in amounts ranging from about 0 to about 15% by weight (col. 30, lines 23-38), which encompasses the claimed range of “no less than about a tenth of a percent and no greater than about five percent,” establishing a prima facie case of obviousness.
Regarding claims 6 and 19, as described above, MacFayden teaches that the x and y values (Which correspond to the claimed m and n values, plus one) may range from at least 1 and add up to an average of 2 to 100 (Abstract). These values encompass the claimed range of “no less than five and no greater than one hundred,” establishing a prima facie case of obviousness.
Regarding claims 7 and 20, as described above, MacFayden teaches that the x and y values (Which correspond to the claimed m and n values, plus one) may range from at least 1 and add up to an average of 2 to 100 (Abstract). When x and y are equal to one, the structure of MacFayden corresponds to the claimed structure wherein m and n are zero. Therefore, MacFayden teaches compositions wherein the 1,3-dihydroxyethyl group-containing-hydantoins contain an n group of zero, as claimed.
Regarding claims 8 and 21, as described above, MacFayden teaches that the x and y values (Which correspond to the claimed m and n values, plus one) may range from at least 1 and add up to an average of 2 to 100 (Abstract). These values encompass the claimed ranges of “no greater than ten,” establishing prima facie cases of obviousness.
Regarding claims 9 and 22, as described above, MacFayden teaches the incorporation of oleate groups (Abstract). MacFayden further teaches that one or both of said groups may be an oleyl group (Abstract), which reads on the claimed “wherein R3, R4, or both is the oleate group.”
Regarding claim 10, Zong teaches that the inventive composition contains between 15 and 90 wt% of solids (col. 30, lines 62-64), which overlaps the claimed range of “no less than about ten percent and no greater than about seventy percent,” establishing a prima facie case of obviousness.
Regarding claim 11, Zong teaches that the latex polymer is present in amounts ranging from about 5% to about 75% by weight of the composition (col. 14, lines 14-18) and, as described above, teaches the incorporation of additives in amounts ranging from about 0% to about 15% (col. 30, lines 23-38). The ratio of these components may therefore include ranges up to about 750:250, which overlaps the claimed range of “1:999 to about 100:900,” establishing a prima facie case of obviousness.
Regarding claim 12, as described above, MacFayden teaches 1,3-dihydroxyethyl group-containing-hydantoins having R3 and R4 groups (which correspond to the claimed “R1” and “R2” groups) which may be separately hydrogen, lower alkyl, cycloalkyl, or alkoxy groups collectively having at most seven carbons (Abstract), which may include methyl groups. Furthermore, MacFayden specifically contemplates hydantoins having both methyl groups in these positions (e.g., 5,5-dimethylhydanoins discussed in Example 1, col. 7, lines 1-30).
Regarding claims 13 and 14, Zong as modified by MacFayden is silent with regard to the claimed open time improvement characteristic. Nevertheless, Zong as modified by MacFayden as applied above results in a composition which meets all of the compositional limitations of the claimed composition, containing all of the same components in all of the claimed amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed open time improvement characteristic will therefore necessarily be present in Zong as modified by MacFayden and as applied above.
Alternatively regarding claim 14, Zong teaches that the inventive composition is a low-VOC content composition (Abstract), and teaches that the inventive composition has a VOC level of less than 50 g/L (col. 30, lines 49-51). Furthermore, Zong as modified by MacFayden as applied above results in a composition which meets all of the compositional limitations of the claimed composition, containing all of the same components in all of the claimed amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed VOC content will therefore necessarily be present in Zong as modified by MacFayden, and as applied above.
Regarding claim 24, Zong teaches the formation of a paint using the inventive formulation (col. 29, lines 7-9), which reads on the claimed “aqueous latex paint.”
Regarding claim 16, as described above, MacFayden specifically teaches the incorporation of oleate groups (Abstract), which read on the claimed “oleate group.”
Regarding claim 17, Zong as modified by MacFayden specifically teaches mixing the composition’s components together, including additives (col. 31, lines 17-27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762