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
In their response dated 10/27/2025 the applicants argued election of species between polyvinyl alcohol and polyvinyl acetate as patentability distinct species. The applicants are argued that:
First: the use of polyvinyl acetate in the carrier and polyvinyl alcohol in the carrier are not mutually exclusive since applicant clearly teaches and claims the two substances can be used together as a mixture in the carrier.
Second: applicant’s claims are directed to a reasonable number of species which the MPEP states can be considered together in the same application. Two is reasonable number of species to have examined together in the same application.
Moreover, there is no evidence of record that the identified species require a different field of search or any serious burden.
Response:
With respect to first argument: the fact that the applicants utilizes the two species together is not a proper argument to overcome the reasons for which restriction was stated. Specifically that the two polymers are chemically and structurally distinct. Applicant’s argument have not provided any factual reasons which would show otherwise.
With respect to the second argument: when citing MPEP the examiner requests that the applicants provide citation as to which section of MPEP states that the reasonable number of species can be considered together in the same application. First, the MPEP is not directed to the number of species, but MPEP 803.02 section B states that election of species requirement may be made at examiner’s discretion, based on species being patentably distinct, which is irrelevant of the number of species listed. In the election of species the examiner clearly stated that the polyvinyl alcohol and polyvinyl alcohol are patentably distinct. Anyone skilled in the art would understand that simply by looking at their chemical structure and properties.
Polyvinyl alcohol (PVA)
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Polyvinyl acetate (PVAc)
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Soluble in water and polar organic solvents like glycerol and phenol. Insoluble in most other organic solvents.
Soluble in alcohols such as methanol or ethanol as well as organic solvents such as ethyl acetates, acetone, benzene, chloroform, toluene and the like
Other aspects that make the species distinct include melting point. PVA has higher melting point because hydroxyl groups allow for more crystalline structures and stronger intermolecular forces than ester groups of the acetate. However, all these properties can be altered by various methods.
Instant specification did not provide any further information on either polyvinyl alcohol or polyvinyl acetate other than the amounts and ratios. The examiner was looking for anything that would describe the two polymers, for example, the degree of hydrolysis, which can affect the chemical nature of both polymers rendering them more alike since PVA is formed by hydrolysis of PVAc. For example, degree of hydrolysis will affect the polymers solubility in other solvents. Lack of the definition or description of the two polymers was the key reason why election of species was requested. Applicants in their dependent claims indicate that the liquid carrier is a solution, emulsion or suspension. Most importantly, polyvinyl acetate will not form a solution in the same solvent as polyvinyl alcohol. Without better description of the instant invention, the two polymers were viewed as chemically and structurally distinct.
Having said that, the examiner, for reasons other than those of applicant’s representative came to conclusion that the election of species should be withdrawn. Specifically, upon reconsideration, the election of species is withdrawn because PVAc is precursor to PVA and commercially, the PVA products are actually a mixture of the two polymers. While both polymers have opposing solubilities PVA will form protective colloid for PVAc forming an emulsion.
Consequently, the election of species is withdrawn and since claims directed to polyvinyl alcohol have not been examined, the rejection will be a non-final rejection.
Claim Interpretation
Instant claims are directed to liquid carrier comprising polyvinyl acetate, polyvinyl alcohol or combination of the two polymers along with an additive. Commercial product, for example, Elmer’s glue will meet both since Elmer glue comprises combination of the two polymers. It is a PVAc emulsion polymerized in water, where PVA is added during the process to act as protective colloid and steric stabilizer.
Instant claim 1 is directed to a liquid additive delivery composition, wherein newly added limitation:
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is directed to the future use which is introducing the composition into curable silicone composition. The limitation that curable silicone composition is curable at room temperature is a property of the silicone composition and not the delivery composition. The above limitation do not limit the scope of the claim and carry little patentable weight.
Similarly, claim 12 is directed to a method of forming liquid additive, addition of the additive into curable silicone composition is an intended use and the limitation that is directed to silicone composition being curable at room temperature does not limit the method of forming liquid additive.
Limitation of silicone composition that is curable at room temperature does however carry patentable weight in claim 16 which is directed to method of adding at least one additive to a curable silicone composition.
With respect to curable silicone composition: instant specification defines silicone as a product that may be transparent, translucent, or opaque colorless, while or initial color [0012]. The composition may include liquid or gel silicone composition [0025]. Curing may be a result of cross-linking, chemical or catalyzed interaction or being exposed to an energy source. The actual compound was never defined, and the only requirement that the silicone compound has to be curable. This includes very extensive list of possibilities, including those that are partially cured or even compounds such as silica, which carries pendant -OH group that are reactive functional groups. As such anything goes.
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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Spooner (How to make silly putty 2 Nov, 2015).
With respect to claim 1, Spooner discloses how to make silly putty utilizing Elmer’s glue as an emulsion carrier and food coloring. In accordance with claim interpretation Elmer’s glue comprises both polyvinyl acetate and polyvinyl alcohol.
With respect to claim 5, Elmer’s glue is an aqueous carrier.
With respect to claim 6, Elmer’s glue is an aqueous emulsion of PVAc in water and PVA as protective colloid.
With respect to claims 7 and 8, food coloring is a liquid additive.
With respect to claim 9, Spooner discloses a picture where the colorant includes addition of glitter, and wherein glitter is a special effect additive.
Claim 12 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Spooner (How to make silly putty 2 Nov, 2015).
With respect to claim 12, to form liquid additive, Spooner adds food colorant and glitter into a mixture of Elmer’s glue and water.
Claims 1, 3-11 and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Davidson (US 2019/0054387).
With respect to claim 1, Davidson discloses a kit which contains composition that comprises PVAC or PVOH based glue, which is an aqueous composition and deionized water. The composition comprises additive such as pigments or colorants [0028]
With respect to claims 3 and 4, Davidson clearly states that the polymer is PVOH or PVAc which encompasses two polymers being used separately.
With respect to claim 5, the glue utilized is aqueous emulsion, additionally deionized water is also included (see examples)
With respect to claim 6, the liquid composition is an emulsion.
With respect to claims 7 and 8, the additives include pigments (powder), colorant, food coloring (liquid), chalk (solid) [0029].
With respect to claim 9, Davidson discloses that the additives may include those having ability to change color, have a specific smell, metallic finish or glow in the dark [0028]. Pearlescent pigments are listed in [0033]. Phosphorescent additives are disclosed in [0036]. See also [0052].
With respect to claim 10 and 11, the PVAc or PVA composition is utilized in amount of under 15%, specifically example 6 discloses 9.2% in presence of silica beads which crosslinks and gels the composition. Silica beads are viewed as crosslinkable because they are capable of crosslinking and forming a gel with the remaining composition without addition of boric acid (see Table 23).
With respect to claim 21, the additive is a glow in the dark pigment, or phosphorescent pigment described above, which meets the definition of photoluminescence.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Delis (CN 102099399 translation provided) in view of Davidson (US 2019/0054387).
With respect to claim 1, embodiment 6 of Delis discloses making a PVA solution in water before it is incorporated into curable silicon. While examples focus on combination of PVA and curable silicone, additives are listed in [0189-0190] which include pigments and colorants. PVA is utilized as an emulsifier in a continuous aqueous carrier [0202]. While Delis does not explicitly state that the pigment when used as component A, the additive is added to the solution of PVA, such is evident in embodiment 6. Specifically, curable silicone composition comprises components A-D, as such the additive like pigments can be added either to liquid carrier or to curable silicon composition part. Pigments can be added either to liquid carrier or curable silicone.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to add pigments and colorants into the liquid carrier comprising water and PVA. Colorants and dyes especially when they are organic contain functional groups which are crucial to their color and properties. These groups, referred to as auxochromes modify color, however, the functional groups such as hydroxyl, amino and carboxyl groups are reactive with pendant functional groups on the siloxane which per teachings of Delis silanes utilized comprise alkoxysilane groups [0115]. Additionally, when adding the pigment or colorant to liquid carrier the distribution of the additive will be uniform which is well established fact as evidenced by Davidson.
With respect to claims 3 and 4, PVA utilized in examples is a solution of PVA having degree of hydrolysis at 88%, which is also a hydrolyzed PVAc (see embodiment 6) as such the polymer solution of Delis meets both claims. The hydrolysis of PVAc is required in order for the polymer to dissolve in water.
With respect to claim 5, the solution is aqueous solution (see embodiment 6).
With respect to claim 6, the aqueous part comprising PVA is a solution.
With respect to claim 7, additives such as carbon black or silica are solids (powders) [0191]. Additives such as colorants cane be liquid, pastes or solids. Liquid colorants are added in presence of liquid carrier while pigments can be added as solid particles or as a suspension in a medium.
With respect to claims 8 and 9, Delis discloses colorants in a generic manner without providing any details. As such one of ordinary skill in the art would have to look to resources that teach colorants that can be incorporated into aqueous PVA solution and color the final composition. Davidson teaches an aqueous composition comprising PVA and PVAc polymers that are mixed with silica having pendant -OH groups and uses pigments that are suitable with the combination of PVA and PVAc polymers as they soluble in aqueous composition.
The additives Davidson include pigments (powder), colorant, food coloring (liquid), chalk (solid) [0029]. Davidson discloses that the additives may include those having ability to change color, have a specific smell, metallic finish or glow in the dark [0028]. Pearlescent pigments are listed in [0033]. Phosphorescent additives are disclosed in [0036]. See also [0052].
In the light of the above disclosure it would have been obvious to utilize the colorants of Davidson in the aqueous solution of Delis and therefore obtain the claimed invention. Such modification would provide colorants that can dissolve in water and be easily distributed throughout the composition along with PVA and/or PVAc.
With respect to claims 10 and 11, per embodiment 6 the solution of PVA is added to the curable silicon such that the content of PVA additive is 1%. Additionally, Delis in claim 2 teaches that the composition disclosed therein is curable by heat or by light. As such when cured by light, the composition is not heated.
With respect to claim 21, Delis discloses colorants in a generic manner without providing any details. As such one of ordinary skill in the art would have to look to resources that teach colorants that can be incorporated into aqueous PVA solution and color the final composition. Davidson teaches an aqueous composition comprising PVA and PVAc polymers that are mixed with silica having pendant -OH groups and uses pigments that are suitable with the combination of PVA and PVAc polymers as they soluble in aqueous composition.
The additives Davidson include pigments (powder), colorant, food coloring (liquid), chalk (solid) [0029]. Davidson discloses that the additives may include those having ability to change color, have a specific smell, metallic finish or glow in the dark [0028]. Pearlescent pigments are listed in [0033]. Phosphorescent additives are disclosed in [0036]. See also [0052].
In the light of the above disclosure it would have been obvious to utilize the colorants of Davidson in the aqueous solution of Delis and therefore obtain the claimed invention. Such modification would provide colorants that can dissolve in water and be easily distributed throughout the composition along with PVA and/or PVAc.
Claims 12, 14, 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Delis (CN 102099399 translation provided) in view of Davidson (US 2019/0054387)
With respect to claim 12, embodiment 6 of Delis discloses making a PVA solution in water before it is incorporated into curable silicon. While examples focus on combination of PVA and curable silicone, additives are listed in [0189-0190] which include pigments and colorants. PVA is utilized as an emulsifier in a continuous aqueous carrier [0202]. While Delis does not explicitly state that the pigment when used as component A, the additive is added to the solution of PVA, such is evident in embodiment 6. Specifically, curable silicone composition comprises components A-D, as such the additive like pigments can be added either to liquid carrier or to curable silicon composition part. Pigments can be added either to liquid carrier or curable silicone.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to add pigments and colorants into the liquid carrier comprising water and PVA. Colorants and dyes especially when they are organic contain functional groups which are crucial to their color and properties. These groups, referred to as auxochromes modify color, however, the functional groups such as hydroxyl, amino and carboxyl groups are reactive with pendant functional groups on the siloxane which per teachings of Delis silanes utilized comprise alkoxysilane groups [0115]. Additionally, when adding the pigment or colorant to liquid carrier the distribution of the additive will be uniform which is well established fact as evidenced by Davidson.
With respect to claims 14 and 15, PVA of Delis as utilized in examples is a solution of PVA having degree of hydrolysis at 88%, which is also a hydrolyzed PVAc (see embodiment 6) as such the polymer solution of Delis meets both claims. The hydrolysis of PVAc is required in order for the polymer to dissolve in water.
With respect to claim 22, Delis discloses colorants in a generic manner without providing any details. As such one of ordinary skill in the art would have to look to resources that teach colorants that can be incorporated into aqueous PVA solution and color the final composition. Davidson teaches an aqueous composition comprising PVA and PVAc polymers that are mixed with silica having pendant -OH groups and uses pigments that are suitable with the combination of PVA and PVAc polymers as they soluble in aqueous composition.
The additives Davidson include pigments (powder), colorant, food coloring (liquid), chalk (solid) [0029]. Davidson discloses that the additives may include those having ability to change color, have a specific smell, metallic finish or glow in the dark [0028]. Pearlescent pigments are listed in [0033]. Phosphorescent additives are disclosed in [0036]. See also [0052].
In the light of the above disclosure it would have been obvious to utilize the colorants of Davidson in the aqueous solution of Delis and therefore obtain the claimed invention. Such modification would provide colorants that can dissolve in water and be easily distributed throughout the composition along with PVA and/or PVAc.
Claims 16, 18-20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Delis (CN 102099399 translation provided) in view of Davidson (US 2019/0054387).
With respect to claims 16 and 19, embodiment 6 of Delis discloses making a PVA solution in water before it is incorporated into curable silicon. While examples focus on combination of PVA and curable silicone, additives are listed in [0189-0190] which include pigments and colorants. PVA is utilized as an emulsifier in a continuous aqueous carrier [0202]. While Delis does not explicitly state that the pigment when used as component A, the additive is added to the solution of PVA, such is evident in embodiment 6. Specifically, curable silicone composition comprises components A-D, as such the additive like pigments can be added either to liquid carrier or to curable silicon composition part. Pigments can be added either to liquid carrier or curable silicone.
As such it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to add pigments and colorants into the liquid carrier comprising water and PVA. Colorants and dyes especially when they are organic contain functional groups which are crucial to their color and properties. These groups, referred to as auxochromes modify color, however, the functional groups such as hydroxyl, amino and carboxyl groups are reactive with pendant functional groups on the siloxane which per teachings of Delis silanes utilized comprise alkoxysilane groups [0115]. Additionally, when adding the pigment or colorant to liquid carrier the distribution of the additive will be uniform which is well established fact as evidenced by Davidson.
Additionally, Delis in claim 2 teaches that the composition disclosed therein is curable by heat or by light. As such when cured by light, the composition is not heated.
With respect to claim 18, per embodiment 6 the solution of PVA is added to the curable silicon such that the content of PVA additive is 1%. Additionally, Delis in claim 2 teaches that the composition disclosed therein is curable by heat or by light.
With respect to claim 20, Delis discloses additives such as carbon black or silica are solids (powders) [0191]. Additives such as colorants cane be liquid, pastes or solids. Liquid colorants are added in presence of liquid carrier while pigments can be added as solid particles or as a suspension in a medium.
With respect to claims 23, Delis discloses colorants in a generic manner without providing any details. As such one of ordinary skill in the art would have to look to resources that teach colorants that can be incorporated into aqueous PVA solution and color the final composition. Davidson teaches an aqueous composition comprising PVA and PVAc polymers that are mixed with silica having pendant -OH groups and uses pigments that are suitable with the combination of PVA and PVAc polymers as they soluble in aqueous composition.
The additives Davidson include pigments (powder), colorant, food coloring (liquid), chalk (solid) [0029]. Davidson discloses that the additives may include those having ability to change color, have a specific smell, metallic finish or glow in the dark [0028]. Pearlescent pigments are listed in [0033]. Phosphorescent additives are disclosed in [0036]. See also [0052].
In the light of the above disclosure it would have been obvious to utilize the colorants of Davidson in the aqueous solution of Delis and therefore obtain the claimed invention. Such modification would provide colorants that can dissolve in water and be easily distributed throughout the composition along with PVA and/or PVAc.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 November 14, 2025