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 .
Response to Arguments
In response to the non-final Office Action (dated 15 December 2025) the Applicant submits the following:
-- Claims 1, 3, 5 & 6 have been amended.
-- New claim 11 has been added.
-- No new matter has been added.
The arguments provided by the Applicant have been fully considered but are ultimately found unpersuasive in view of the amended claims.
Applicant states Marstokk does not anticipate the invention of the instant application as the organic filler particles taught by Marstokk are single stage polymers with high glass transition temperatures with no discussion of crosslinking (Remarks, p. 5, bottom paragraph).
Examiner points to Marstokk (p. 3, [0017] & [0018]) where Marstokk details ‘solid organic filler particles’ as non-hollow, spherical particles comprising organic material, and also defines ‘inorganic extender’ as multistage (core/shell) particles wherein the core is inorganic and the shell is organic. Marstokk states the solid organic filler particles are preferably spherical as this advantageously allows for more efficient packing of said particles. The solid organic filler particles are crosslinked (p. 6, [0057] & [0059]).
The Applicant argues Marstokk cannot anticipate the invention of the instant application as Marstokk teaches zinc or zirconium in amounts of 0.05-0.5 wt.%, and that Bohling fails to remedy this deficiency in Marstokk (Remarks, p. 6).
Examiner notes the above but said argument is drawn to the unamended claims. The apparent deficiency of the prior art is addressed in the rejection herein.
This rejection is FINAL.
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.
Claims 1-6 & 8-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Marstokk et al. (EP 3,623,429 A1) in view of Bohling et al. (US 11,312,868 B2).
Regarding claim 1, Marstokk teaches coating compositions comprising an aqueous dispersion of poly(meth)acrylate, organic filler particles, pigment, inorganic extender & water; said coatings may be matte (Abstract, p. 1, [0001]). Said poly(meth)acrylate is in the form of particles with a z-average diameter of 50-400 nm (p. 3, [0029], p. 5, [0049]). The pigment may be iron oxides, zinc oxide, carbon black, phthalocyanine green (p. 7, [0067]) and is present in amounts of 2-30 wt.% (p. 7, [0065], [0069]). A preferred embodiment of the coating composition comprises poly(meth)acrylate particles in the aqueous dispersion in amounts of 5-60 wt.% (p. 13 & 14, [0132]). The composition also comprises a drier (such as salts of zinc or zirconium) present in amounts of 0.05-0.5 wt.% (p. 11, [0113]-[0115]).
Marstokk discloses the organic filler particles are present in amounts of 0.1-30 wt.% (p. 7, [0062]). Said organic filler particles are solid (non-hollow), crosslinked and substantially spherical with an average diameter of 1-50 μm. Marstokk teaches benefits of spherical shaped particles as this advantageously allows for more efficient packing of said particles. The ‘inorganic extender’ is defined as multistage (core/shell) particles wherein the core is inorganic and the shell is organic (p. 6, [0056]-[0060]).
Marstokk, however, does not teach the organic filler particles as required by the claims.
In the same field of endeavor, Bohling teaches coating compositions comprising an aqueous dispersion of polymer particles, polymeric organic microspheres and a rheology modifier (Abstract). The organic microspheres are multistage resulting from their core/shell structure. The core/shell morphology, as disclosed by Bohling, results from the preferred method of producing said particles (col. 7, lines 9-35 & 64-66). Inorganic extenders (common in matte coatings/paints) may be replaced by the polymeric organic microspheres, thereby improving scrub resistance and stain removal properties (col. 11, lines 4-7).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the inorganic extenders in Marstokk with the multistage polymeric organic microspheres taught by Bohling, as Bohling expressly discloses the suitability for this substitution in substantially similar compositions for the same end uses. It would have been further obvious to select zinc oxide as the pigment based on art-recognized suitability for the intended purpose. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Marstokk in view of Bohling in this way results in a (aqueous dispersion) coating composition with improved scrub resistance and stain removal comprising poly(meth)acrylate particles with a z-average diameter of 50-400 nm, in amounts of 5-60 wt.%, polymeric crosslinked multistage organic microspheres with an average diameter of 1-50 μm, in amounts of 0.1-30 wt.%, and zinc oxide (colorant/pigment) in amounts of 2-30 wt.%. This modification reads on all limitations established by the independent base claim 1.
Regarding claim 2, maintaining the modification of Marstokk in view of Bohling previously detailed, Marstokk teaches the preferred embodiment comprises less than 8 wt.% of an inorganic extender (p. 13 & 14, [0132]). The same embodiment details poly(meth)acrylate particles and organic particles present in amounts of 5-60 wt.% and 0.1-30 wt.%, respectively. These respective ranges read on the whole claimed range of 80:20 to 40:60. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 3, maintaining the modification of Marstokk in view of Bohling previously detailed, a further preferred embodiment of the coating composition comprises poly(meth)acrylate particles in the aqueous dispersion in amounts of 15-40 wt.%, organic particles in amounts of 0.5-25 wt.%, and inorganic extender in amounts of less than 5 wt.% (p. 14, [0133]). However, Marstokk expressly states it is particularly more preferable that the composition comprises substantially no (i.e., 0%) inorganic extenders, detailing the more preferable range of 0 wt.% - 2 wt.% (p. 4, [0030]). These two disclosures thus teach it is most preferable that there are 0 wt.% inorganic extenders present in Marstokk’s inventive composition. This abides by the PVC equation (Specification, p. 5, lines 6-12) and also reads on the PVC range as required by the instant claim 3. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 4, maintaining the modification of Marstokk in view of Bohling previously detailed, Marstokk is silent on the presence of dihydrazides, polyamines and adducts thereof, suggesting the composition comprises 0% thereof. The embodiment (p. 13 & 14, [0132]) details poly(meth)acrylate particles and organic particles present in amounts of 5-60 wt.% and 0.1-30 wt.%, respectively. These respective ranges read on the claimed range of 70:30 to 50:50 entirely. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 5 & 6, maintaining the modification of Marstokk in view of Bohling previously detailed, as shown above the colorant and ZnO are present in amounts of 2-30 wt.% and 10 wt.% or less, respectively. The pigment may be iron oxides, carbon black, phthalocyanine green, quinacridone pigments, benzimidazolone pigments (p. 7, [0067]) said pigments are present in amounts of 2-30 wt.% (p. 7, [0069]). Marstokk is silent on the presence of dihydrazides, polyamines and adducts thereof, suggesting the composition comprises 0% thereof. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 8, maintaining the modification of Marstokk in view of Bohling previously detailed, Marstokk states it is particularly preferrable that the composition comprises less than 1 wt.% inorganic extender, ideally 0 wt.% (p. 4, [0030]). Marstokk is silent on the presence of dihydrazides, polyamines and adducts thereof, suggesting the composition comprises 0% thereof. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claims 9 & 10, maintaining the modification of Marstokk in view of Bohling previously detailed, the composition may further comprise rheology modifiers (p. 8, [0074]), dispersants, defoamers (p. 5, [0050]), and surfactants (p. 7, [0073]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Marstokk et al. (EP 3,623,429 A1) in view of Bohling et al. (US 11,312,868 B2; hereinafter Bohling’868) in further view of Bohling et al. (US 2019/0185687 A1; hereinafter Bohling’687)
Regarding claim 7, maintaining the modification of Marstokk in view of Bohling’868 previously detailed, Marstokk teaches the coating composition may further comprise waxes (p. 13, [0128]) but neither Marstokk nor Bohling’868 teach the wax & it’s limitations as required by the claim.
In the same field of endeavor, Bohling’687 teaches a coating composition comprising an aqueous dispersion of polymer particles having an average particle size in the range of from 80 nm to 500 nm, polymeric organic crosslinked microspheres having a particle size in the range of from 1 μm to 20 μm, polyethylene wax, and a rheology modifier (Abstract). Polyethylene wax refers to the formula: -(CH2CH2)n- , where n is from 72 to 360 (p. 5, [0045]). The polyethylene wax may be LDPE, LLDP or HDPE and is present in amounts of 0.1 – 3 wt.% (p. 6, [0046]).
It would have been obvious to substitute Marstokk’s wax with the LDPE, LLDPE or HDPE wax taught by Bohling’A1, as Bohling’A1 expressly states aqueous dispersions of polymer particles, microspheres & polyethylene wax are useful in preparing pigmented and/or non-pigmented coating compositions with improved burnish resistance (p.1, [0003]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Marstokk et al. (EP 3,623,429 A1) in view of Bohling et al. (US 11,312,868 B2; hereinafter Bohling’868) in further view of Bohling et al. (US 11,981,830 B2; hereinafter Bohling’830)
Regarding claim 11, maintaining the modification of Marstokk in view of Bohling’868 previously detailed, Bohling’868 discusses the varying glass transition temperatures between the core & shell of the multistage particles (col. 7, lines 9-35), however, neither Marstokk nor Bohling’868 teach the limitations as required by the claim.
In the same field of endeavor, Bohling’830 teaches a coating composition comprising an aqueous dispersion of polymer particles having an average particle size in the range of from 80 nm to 500 nm, polymeric organic crosslinked microspheres having a particle size in the range of from 1 μm to 20 μm, polyethylene wax, and a rheology modifier (Abstract). Bohling’830 teaches an embodiment of the invention wherein the first stage of the organic multistage crosslinked microspheres has a Tg of 20°C or less and the second stage has a Tg of 30°C or greater (col. 17, Claim 3).
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the glass transition temperatures of the first and second stage (core & shell) crosslinked microspheres, taught by Bohling’830, as a guide when making the multistage organic crosslinked microspheres (previously detailed), as Bohling’830 demonstrates this to be an appropriate glass transition temperature difference between the two stages of the crosslinked multistage microspheres for similar coating compositions with similar end uses. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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