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Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 24, 2026.
Applicant's election with traverse of claims 1-8 in the reply filed on March 24, 2026 is acknowledged. The traversal is on the ground(s) that the claims share the same special technical features directed to preparing first and second paints that differ by at least 5 PVC units attributable to organic polymer microspheres and/or by nature of the colorant, using waterborne systems that include a rheology modifier, polymer particles having a z-average particle size in the range of 50 nm to 600 nm, and organic polymeric microspheres having a median weight average (D50) particle size in the range of 0.7 to 30 µm. Applicant argues that the difference between Group I and Group II concerns only the manner in which the same components are combined at point-of-sale and does not render the claimed subject matter independent or distinct inventions. However, it is the position of the Office that the groups are distinct as Group I is directed towards a pre-paint mixing process in which containers are partially filled with waterborne pre-paint mixtures comprising rheology modifiers, polymer particles, and polymer particles, to which opacifying pigment, colorant, or inorganic extender is added, while Group II is directed towards a different point-of-sale dispensing process which requires structurally separate vessels of rheology modifier, colorant, polymer particles which are dispensed from said separate vessels into another vessel. Accordingly, the claims do not share the same or corresponding technical feature.
It is also noted that the inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, the technical feature (as defined by Applicant in the arguments filed March 24, 2026) does not make a contribution over the prior art (see rejection below).
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 3, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Friel et al. (US20020013401, hereinafter referred to as “Friel”) in view of Bohling et al. (US20190177554, hereinafter referred to as “Bohling”).
As to Claim 1: Friel teaches a method for forming multiple paint sets sufficient to formulate at least two paint lines ([0025]) (i.e., corresponding to the claimed first and second paint) comprising the steps of providing a set of at least one opacifying prepaint comprising at least one opacifying pigment, at least one extender pigment prepaint comprising at least one extender pigment, and at least one binder prepaint comprising at least one latex polymeric binder ([0026]) and dispensing each prepaint into containers ([0027]). Friel teaches that the paint may comprise a colorant ([0108]). Friel further teaches that the prepaints may be mixed while they are dispensed into the container ([0034]). Friel further teaches that the viscosity of the prepaints may be adjusted via the addition of a thickener while they are dispensed into the container using a thickener/water mixture ([0034]) (i.e., corresponding to the waterborne pre-paint mixture of a rheology modifier or an aqueous solution of a rheology modifier). Friel further teaches that the latex particles may have a diameter of about 100 nm to about 2500 nm ([0078]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists . It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Friel suggests, that the overlapping portion is a useable range for the particle size of a latex polymer particle having optical properties suitable for preparing paints.
Friel is silent towards the addition of organic polymeric microspheres and the D50 particle size thereof.
Bohling discloses a pigmented matte coating composition comprising an aqueous dispersion of phosphorus acid-functionalized polymer particles, and polymeric organic microspheres ([0005]). Bohling further teaches that the polymeric organic microspheres may have a particle size in the range of 1 to 20 µm, which is within the claimed range. Friel and Bohling are considered analogous art because they are directed towards the same field of endeavor, namely, pigmented coating/paint compositions and methods of preparing the same. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include organic polymeric microspheres having the claimed D50 particle size and the motivation would have been that Bohling teaches that organic polymeric microspheres having such a D50 particle size are recognized within the art as suitable for addition to paint compositions as an alternative replacement for inorganic extenders ([0069]), such as that taught by Friel, known to improve the scrub resistance and stain removal properties of paints comprising the same ([0069]).
As Friel is silent towards the inclusion of organic microspheres, Friel does not disclose a PVC attributable to said organic microspheres for a first and second paint. However, Friel does disclose exemplary paints having PVC values that differ by more than 5 PVC units, e.g., Example 35 ([0191]), Paint no. 35-3 (PVC 39.94%) and Paint no. 35-11 (PVC 70.00%). As Bohling discloses that organic polymeric microspheres are recognized within the art as suitable alternatives to inorganic extenders, it would have been obvious to a person having ordinary skill in the art to include the organic microspheres (as above) and furthermore to maintain the same difference in PVC as taught by Friel for paints comprising traditional inorganic extenders.
With regard to the limitation of adding an opacifying pigment, a colorant, or an inorganic extender to a first container partially filled with a first waterborne pre-paint mixture of a rheology modifier, polymer particles having the claimed particle size, and organic polymeric microspheres having the claimed particle size, Friel as Bohling renders obvious the claimed components and required particle sizes. Even if the references do not explicitly disclose the claimed order of mixing, selection of any order of mixing ingredients is prima facie obvious (see MPEP 2144.04 IV. C.).
As to Claim 2: Friel and Bohling teach the method of claim 1 (supra).
Friel further teaches adding colorants to the paints ([0108]). Friel teaches various exemplary paints formed by mixing pigment prepaints with binder prepaints, adding thickeners, water, and colorants prior to mixing ([0191]) (i.e., adding sufficient rheology modifier…to produce a KU viscosity in the final paint) including a first and second paint having a KU viscosity in the claimed range, e.g., Example 35 ([0191]), Paint no. 35-3 (110 KU) and Paint no. 35-11 (108 KU).
As to Claim 3: Friel and Bohling teach the method of claim 2 (supra).
Example 35 ([0191]), Paint no. 35-3 (110 KU) includes 162 lbs of colorant wherein the total weight of the paint mixture is 1208.13 lbs, which is equal to 13.4 wt% of the paint.
Paint no. 35-11 (108 KU) each include 162 lbs of colorant wherein the total weight of the paint mixture is 1239.56 lbs, which is equal to 13.1 wt%.
As to Claim 4: Friel and Bohling teach the method of claim 2 (supra).
Example 35 ([0191]), Paint no. 35-3 and Paint no. 35-11 of Friel do not require a white opacifying pigment but do comprise extender pigments. However, the modification of Friel with Bohling is based on the finding that Bohling teaches that organic polymeric microspheres are recognized within the art as suitable for addition to paint compositions as an alternative replacement for inorganic extenders ([0069]), such as that taught by Friel, known to improve the scrub resistance and stain removal properties of paints comprising the same ([0069]). The modification of the exemplary paints of Friel to replace the inorganic extenders with organic polymeric microspheres would therefore not include inorganic extenders in the paint, yielding a PVC less than 5.
As to Claim 5: Friel and Bohling teach the method of claim 2 (supra).
As Friel is silent towards the inclusion of organic microspheres, Friel does not disclose a PVC attributable to said organic microspheres for a first and second paint. However, Friel does disclose exemplary paints having PVC values that differ by more than 5 PVC units, e.g., Example 35 ([0191]), Paint no. 35-3 (PVC 39.94%) and Paint no. 35-11 (PVC 70.00%). As Bohling discloses that organic polymeric microspheres are recognized within the art as suitable alternatives to inorganic extenders, it would have been obvious to a person having ordinary skill in the art to include the organic microspheres (as above) and furthermore to maintain the same difference in PVC as taught by Friel for paints comprising traditional inorganic extenders.
As to Claim 6: Friel and Bohling teach the method of claim 2 (supra).
Friel further teaches wherein two paints may be made having different tints ([0051]) and that colorants may be added to the dispensed prepaints ([0034]).
As to Claim 7-8: Friel and Bohling teach the method of claim 2 (supra).
Friel further teaches adding colorants to the paints ([0108]). Friel teaches various exemplary paints formed by mixing pigment prepaints with binder prepaints, adding thickeners, water, and colorants prior to mixing ([0191]) (i.e., adding sufficient rheology modifier…to produce a KU viscosity in the final paint) including a first and second paint having a KU viscosity in the claimed range, e.g., Example 35 ([0191]), Paint no. 35-3 (110 KU) and Paint no. 35-11 (108 KU), a difference of 2 KU.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Sheerin et al (US20170088723, hereinafter referred to as “Sheerin”). Sheerin teaches a method for adjusting paints at point-of-sale by adding to a partially filled prepaint mixture (Figure 1) at least one colorant ([0019]) wherein the base paint may be an aqueous latex paint ([0047]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/Andrew J. Oyer/ Primary Examiner, Art Unit 1767
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