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 § 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.
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, 3-4, 9-10, 12-13, 15, 17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2018/162997 A1) in view of Overbeek (US 6610784 B1), Ravisanko (CN 107129730 A) and Jakubek (US 10,273,75 B2). Sabaa (Bull. Mater. Sci. (2020) 43:126, attached) is further cited as an evidentiary reference. All references have been cited in a prior Office action.
Regarding claims 1-4, 9-10, 12, 17, and 19-20, Kim teaches a composition of an anionically-stabilized latex, at least one volatile base compound, and one or more water-soluble polymeric adduct formed from at least one multifunctional amine compound reacted with one or more epoxy compounds (Abstract). That latex includes aqueous medium, up to 10 wt% of anionic surfactant, and acrylic copolymer particles (p. 2, [0010]). The acrylic copolymer may be present in amounts up to 10 wt% (0-10 wt%) (p. 2, [0010]). The adduct may be present in amounts ranging from 0.1-15.0 wt% (p. 4, [0027]). These ranges correspond to weight ratios (dry residue ratios) of acrylic polymer to adduct ranging from 0:15 to 10:0.1. The composition may further contain diethylene glycol monobutyl ether (DB) and ammonia, as well as optional additives including pigment or filler (p. 7, [0048]; p. 9, [0065]; claim 25). The latex composition is stable at basic pH, including pH values ranging from 7-10 (p. 8, [0055]). This prior art range overlaps all claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
However, Kim is silent as to use of the term, "self-crosslinking functionalities." The instant specification defines "self-crosslinking functionalities" as the reactive functionalities of a polymer necessary for its curing/crosslinking process (polymerization/polycondensation), without the need for further reagent additions (p. 8). Kim teaches that the polymeric adduct may be formed as an addition product of one or more multifunctional amine compounds with one or more multi- and/or monofunctional epoxy compounds (p. 4, [0026]). Kim does not require a curing agent. Therefore, Kim's composition reads on the claimed (b).
Kim is further silent as to ketone moieties that self-crosslink with an external amine moiety. In the same field of endeavor, Overbeek teaches that crosslinkability may be imparted by combining carbonyl functional groups and carbonyl-reactive amine groups (col. 2, lines 1-3, 20-22, 45-48). Specifically, diacetone acrylamide and adipic acid dihydrazide may be used as the auto-crosslinking groups (col. 7, lines 11-2; col. 8, lines 41-42). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim and the crosslinking moieties of Overbeek to arrive at the claimed invention, and to reduce the cure time, as taught by Overbeek (col. 1, line 50).
Kim further teaches use of bisphenol A diglycidyl ether (p. 6, [0038]) with ethylene diamine (p. 6, [0040]). However, Kim is silent as to use of oxyalkylene segments and a chain terminator. In a similar field of endeavor, Ravisanko teaches oxyethylene and oxypropylene segments in epoxy-polyamine adducts (p. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim and the adduct structure of Ravisanko to arrive at the claimed invention, and because of the art-recognized suitability for the intended purpose. See MPEP 2144.07. Also, in a similar field of endeavor, Jakubek teaches use of amine-containing chain terminators (col. 9, line 21). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim as modified by Ravisanko with the chain terminator of Jakubek to arrive at the claimed invention, and to terminate polymerization at a desired stage, as taught by Jakubek (col. 9, lines 17-18). The composition of Kim in view of Overbeek, Ravisanko, and Jakubek teaches use of epoxy-polyamine adducts that contain epoxy groups. Sabaa explains that it is known in the art that epoxy groups have a characteristic FT-IR peak at 829 cm-1 (p. 125).
Regarding claims 13 and 21, Kim, Overbeek, Ravisanko, and Jakubek remain as applied to claim 1 above. Kim further teaches that the glycol ether co-solvent may be present in amounts ranging from 0-30 wt% (p. 3, [0022]). This prior art range overlaps all claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Regarding claim 15, Kim, Overbeek, Ravisanko, and Jakubek remain as applied to claim 1 above. Kim further teaches that the coating is applied to the substrate, then the aqueous medium and volatile base are permitted to evaporate, forming a film (p. 7, [0045]).
Regarding claim 17, Kim in view of Overbeek, Ravisanko, and Jakubek remain as applied to claim 1 above. Ravisanko further teaches that combinations of bisphenol A and bisphenol F diglycidyl ethers may be used in the epoxy-polyamine adduct (p. 5). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the diglycidyl ethers of Ravisanko for use in the composition of Kim, as modified above, to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Claims 2, 5-6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Overbeek, Ravisanko, and Jakubek as applied to claim 1 above and further in view of Hosoya (US 2014/0011942 A1).
Regarding claims 2 and 18, Kim in view of Overbeek, Ravisanko, and Jakubek remains as applied to claim 1 above. However, Kim is silent as to the minimum film forming temperature of the acrylic polymer. Nevertheless, Overbeek teaches an acrylic polymer having the same monomers as the claimed polymer. Therefore, the acrylic polymer of Kim in view of Overbeek will necessarily possess the same film forming temperature characteristic as the acrylic polymer of the claimed invention. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01.
Regarding claim 5, Kim in view of Overbeek, Ravisanko, and Jakubek remains as applied to claim 1 above. However, Kim is silent as to use of acrylic polymer having a diketone group. In the same field of endeavor, Hosoya teaches that pigment adsorption capacity is improved by adding an acrylic polymer having a diketone group to a coating (p. 5, [0062]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim and the diketone-containing acrylic polymer of Hosoya to arrive at the claimed invention, and to improve the composition’s pigment adsorption capacity, as taught by Hosoya (p. 5, [0062]).
Regarding claim 6, Kim in view of Overbeek remains as applied to claim 1 above. However, Kim is silent as to use of a polyamine acrylic polymer. In the same field of endeavor, Hosoya teaches use of a modified polyethyleneimine having acrylate moieties (p. 4, [0057]). The acrylate groups of the polyamine react with diketone groups (p. 5, [0062]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim and Overbeek with the polyamine of Hosoya to arrive at the claimed invention, and to expand the range of non-water-soluble resin that may be used, as taught by Hosoya (p. 5, [0062]).
Claims 11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Overbeek, Ravisanko, and Jakubek remain as applied to claims 1 and 10 above, and further in view of Hermes (US 2011/136936 A1).
Regarding claims 11 and 16, Kim, Overbeek, Ravisanko, and Jakubek remain as applied to claims 1 and 10 above. However, Kim is silent as to the PVC of the composition, and as to the use of the composition to make road markings. In the same field of endeavor, Hermes teaches that a traffic paint composition having PVC of 63-75 may be applied to a road and allowed to dry, forming a traffic marking (p. 1, [0007] and [0012]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Kim with the PVC and method of Hermes to arrive at the claimed invention, and to produce quick-drying and durable traffic markings, as taught by Hermes (p. 1, [0006]).
Response to Arguments
Applicant’s arguments, see page 6, filed 24 February 2026, with respect to the rejections of claims 2, 4, 7, 9, 12, 13, 15, and 16 under 35 U.S.C. 112(b) have been fully considered and are persuasive in light of the amended claim set. The rejections under 35 U.S.C. 112(b) have been withdrawn.
Applicant's arguments, see page 7, filed 24 February 2026, with respect to the rejections of claims 1, 3, 4, 8-10, 12-13, and 15 under 35 U.S.C. have been fully considered. They are persuasive in part, and not persuasive in part.
Applicant argues that claim 1 is nonobvious because it teaches a composition having unexpected results. Evidence of unexpected results must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Applicant teaches that the cited unexpected results are present in one exemplary composition using DPnB; in eight exemplary compositions in which DPnB is interchanged with other claimed high-boiling glycol-ethers; and in seven exemplary compositions employing various content ratios of acrylic polymer (E) to epoxy-amine adduct (PA) (see specification pp. 18-19, Table 1; p. 21, Table 3; pp. 22-23, Table 4). The examples demonstrate that acrylic polymer E may be used on its own or in ratios of E25/PA40, E30/PA30, E30/PA40, E30/PA46, E34/PA30, E34/PA35, E35/PA30, or E35/PA35, along with an unspecified coalescer, which is understood to be any of the high-boiling glycol-ethers taught by Applicant (pp. 22-23, table 4). The instant claims do not limit the content ratio of the polymers, and further permit any ratio of polymer content. The provided evidence is not commensurate in scope with this claim language and is therefore insufficient to establish non-obviousness.
Applicant argues that the combined prior art fails to teach the claimed composition because Kim teaches DB as a suitable coalescent, but not in an example. However, a reference may be relied upon for all that it teaches. See MPEP 2121.01. As Applicant acknowledges, Kim’s broader disclosure teaches use of DB as a coalescent in the composition.
Applicant argues that the cited references do not teach that the composition enables film formation on a road surface that is particularly resistant to foot traffic, and has mechanical resistance performance above the standard. Nevertheless, the prior art teaches a composition that has the same ingredients in the same amounts, and will necessarily possess the same features, regardless of whether the prior art recommends the composition for those particular features.
Finally, Applicant argues that the rejection is invalid because Kim does not teach the recited epoxy-polyamine adduct limitation that has been added in the most recent amendment to the claims. This argument is persuasive. Therefore, the rejection is withdrawn. However, upon further consideration, a new ground of rejection is made in view of Kim, Overbeek, Ravisanko, and Jakubek.
Conclusion
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob 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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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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