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.
Claims 31-45 and 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Schellekens (WO 2009/138493) in view of Zollner (US 2008/0286485 A1) and Solomon (US Patent No. 4,581,429).
Regarding claims 31 and 41, Schellekens teaches a process for preparing an aqueous coating composition comprising a block copolymer and a polymer (Abstract).The block copolymer may comprise water-dispersible functional groups and ethylenically unsaturated monomers (p. 5, lines 1-31), wherein said water-dispersible functional group may include sodium styrene sulfonate (p. 15, lines 22-24) and wherein said ethylenically unsaturated monomers may include alkyl acrylates such as butyl acrylates (p.16, lines 23-24; note that the use of the term (meth)acrylates within Schellekens is intended specifically to refer to both acrylates and methacrylates, per p. 8, lines 18-22). The block copolymer of Schellekens therefore reads on the claimed “b) block copolymer,” and meets the limitation requiring the incorporation of alkyl acrylate and ethylenically unsaturated monomer bearing sulfonic acid groups. Schellekens further teaches that the blocks of the block copolymer comprise between 0.5 and 65 wt% of the total polymer content (the block copolymer plus the other polymer referenced above) (p. 7, lines 8-11), and further teaches that the aqueous coating composition contains between 20 and 60 wt% of solids (p. 26, lines 21-22). The aqueous coating composition may therefore comprise between about 0.1 and about 39 wt% of the block copolymer by mass, which overlaps the claimed range of “0.003% to 3%,” establishing a prima facie case of obviousness.
Schellekens further teaches the polymer may be formed by a batch or semi-batch process (p. 23, lines 13-15), and specifically teaches the optional preparation of a polymer block within these polymerization methods, followed by the subsequent formation of a second block (p. 23, line 34 – p. 24, line 2). Schellekens further specifies that it is most preferable that the first monomer composition is ≥95% reacted before the second monomer composition is added during these polymerization schemes (p. 23, lines 2-6). Polymers produced in this way read as copolymers produced by processes involving first and second stages, and therefore the polymer of Schellekens read on said limitation. Furthermore, as described above, the composition may be an aqueous emulsion and the polymer may be formed by an aqueous emulsion polymerization (Abstract). Therefore, the polymer of Schellekens reads on the claimed “latex comprising a first and second stage polymer composition.” Additionally, since the coating composition of Schellekens is aqueous, the teachings of Schellekens reads on the claimed limitation requiring the incorporation of water.
Block [A] of Schellekens may have a block length of 4 to 50 (p. 6, line 31), which overlaps the claimed range of “10 to 80,” establishing a prima facie case of obviousness. Furthermore, block [A] of Schellekens may include alkyl acrylates (p. 5, lines 13-15 and p. 16, lines 23-24). The block [A] of Schellekens therefore reads on the claimed block “[A].”
Block [B] of Schellekens may have a block length of 5 to 500 (p. 6, line 23), which encompasses the claimed range of “10 to 80,” establishing a prima facie case of obviousness. Furthermore, block [B] of Schellekens may include a copolymer of multiple monomers (p. 5, lines 20-29), and may include ethylenically unsaturated monomers with sulfonic acid groups (p. 5, lines 23-24 and p. 15, lines 22-24). The block [B] of Schellekens therefore reads on the claimed block “[B].”
Schellekens teaches that the polymerization of the block copolymer is initiated by an initiator such as, inter alia, AIBN (p. 24, line 19), whose active form connects to an initial monomer species for polymerization to begin, resulting in the initiator being attached as one of the end groups of the block copolymer. However, Schellekens differs from claim 31 because it is silent with regard to the claimed polymer end groups “X” because, while AIBN initiation results in an isobutyronitrile end group, this group has been removed from the claimed category of end groups.
In the same field of endeavor, Zollner teaches a composition (Abstract), which is polymerized via a radical mechanism ([0009]), wherein the radical mechanism is initiated by a thermal initiator such as AIBN ([0030]). Among the suitable sources of free-radicals, Zollner teaches that 1,1’-azobis-(cyclohexanecarbonitrile) is an alternative to AIBN ([0030]). As described above and in the previous rejection, the radical species produced upon initiation of a polymerization initiator will become connected as an end group to the initiated polymer; in this case, 1,1’-azobis-(cyclohexanecarbonitrile) initiation results in a cyclohexanecarbonitrile end group in the same way that AIBN results in an isobutyronitrile group.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06), and Schellekens specifically states that Azo functional initiators such as AIBN are suitable for the polymerization therein (p. 24, lines 18-20). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute 1,1’-azobis-(cyclohexanecarbonitrile) in place of AIBN within the composition of Schellekens, as Zollner teaches 1,1’-azobis-(cyclohexanecarbonitrile) as a suitable alternative to AIBN as an initiator for free radical polymerization.
The cyclohexanecarbonitrile end groups present in the polymer of Schellekens as modified by Zollner reads on “-C(C5-C6-cycloalkyl)-2-CN” from the claimed group “X,” wherein the two “(C5-C6-cycloalkyl)-2” substituents are fused together to form a single ring, which falls within the broadest reasonable interpretation of “-C(C5-C6-cycloalkyl)-2-CN.”
The block copolymer of Schellekens as modified by Zollner therefore reads on the claimed end group “X.”
Schellekens teaches that nitroxide-mediated polymerization methods are useful for controlling polymer chain composition and architecture (p. 3, lines 5-9), but further differs from claim 31 because it is silent with regard to the particular usage of said methods for the production of the inventive block copolymer. Since the claimed end groups “Z” are those resulting from the incorporation of nitroxide species via a nitroxide-mediated polymerization (c.f. Instant Specification at [00052]), Schellekens is similarly silent with regard to the claimed end groups “Z.”
In the same field of endeavor, Solomon teaches processes for improving free radical polymerization (Abstract), including improvements for the formation of block copolymers (Abstract), involving the incorporation of nitroxides, which attach to the end of the produced polymer chains (Abstract). Solomon teaches that, within compounds of the inventive formula, those bearing methyl groups in the R1-2 and R5-6 positions, in addition to a cyclic piperidine structure included for groups R3-4 are suitable (co. 4, lines 39-62). This compound corresponds to TEMPO, which reads on the claimed end group “Z” when, in the claimed formula “(Z),” R1-2 together form a propanediyl structure and R3-5 are all methyl groups. This is further supported by the embodiments of the instant Specification showing the incorporation of nixtroxides having piperidinyl structures ([00046]).
Solomon teaches that the incorporation of the inventive nitroxides improves the control of the polymerization process (Abstract). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to include the nitroxides of Solomon within the polymerization process of the block copolymer of Schellekens for the purpose of controlling the polymerization process thereof. In doing so, the block copolymer of Schellekens would bear nitroxide end-groups, reading on the claimed end groups “Z.”
Regarding claims 32 and 33, Schellekens teaches that the polymer includes ethylenically unsaturated monomers including acrylates and/or styrenics (p. 5, line 32-p. 6, line 7).
Regarding claim 34, as described above, Schellekens teaches that the block copolymer may be included in amounts ranging from about 0.1 and about 39 wt% with respect to the aqueous coating composition, which overlaps the claimed range of “0.01 to 1%,” establishing a prima facie case of obviousness.
Regarding claims 35 and 36, as described above, the polymer of Schellekens may be a two-stage polymer composition, and may contain ethylenically unsaturated monomers and/or styrenics (p. 5, line 32-p. 6, line 7). Furthermore, Schellekens teaches that the polymer may also include ethylenically unsaturated monomer units bearing water-dispersing functional groups (p. 6, lines 1-2), and teaches that these monomers may preferably be (meth)acrylic acid (p. 14, line 28). Schellekens places no limitations on which stage(s) of the polymerization may include said monomers; therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate said monomers into the first stage of polymerization.
Regarding claims 37 and 38, Schellekens teaches that the polymer P may include vinyl monomers including ethylenically unsaturated monomers bearing silane functional groups (p. 18, lines 3-4 and p. 17, lines 8-20). As described above, Schellekens places no limitations on which stage(s) of the polymerization may include said monomers; therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate said monomers into the first stage of polymerization.
Regarding claim 40, Schellekens specifically teaches the incorporation of acrylonitrile as an optional monomer component (p. 17, line 11).
Regarding claims 42 and 43, Schellekens teaches that the polymerization may be conducted in a batch process, which reads on the claimed “single stage polymerization” because Schellekens teaches this batch process as involving the addition of monomer, medium, control agent, and initiator to a reactor followed by heating for a desired reaction time (p. 23, lines 13-19). Furthermore, Schellekens teaches the formation of a block during polymerization (p. 23, lines 34-35).
Regarding claims 44 and 45, Schellekens does not teach the claimed elongation characteristics. Nevertheless, Schellekens teaches an aqueous coating composition which is substantially identical to the claimed compositional limitations, containing all of the same components in all of the same 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 elongation characteristics will therefore necessarily be present in Schellekens as applied above.
Regarding claim 47, as described above, Schellekens teaches the incorporation of n-butyl acrylate and styrene sulfonic acid, both of which may be included in either block of the block copolymer.
Regarding claim 48, Schellekens teaches that the length of block [A] may range from 4 to 50 (p. 6, line 31), which encompasses the claimed range of “10 to 40,” establishing a prima facie case of obviousness.
Claims 49 is rejected under 35 U.S.C. 103 as being unpatentable over Schellekens (WO 2009/138493) in view of Zollner (US 2008/0286485 A1) and Solomon (US Patent No. 4,581,429), and further in view of Rokowski (US 2011/0159300 A1).
Regarding claim 49, Schellekens teaches all of the limitations of claim 31 as described above. Schellekens differs from claim 49 because it is silent with regard to the claimed method of applying the aqueous coating composition to a roof.
In the same field of endeavor, Rokowski teaches elastomeric roof coatings made from emulsion copolymers (Abstract), and exemplifies the application thereof to flat roofs (e.g., [0109], Example 5). It is prima facie obvious to substitute equivalents known for their art recognized suitability (see MPEP 2144.06), and Schellekens teaches that the inventive composition is an aqueous coating composition (Abstract), whose polymer P is produced from emulsion polymerization (Abstract). Therefore, it would have been obvious to one having ordinary skill in the art to apply the emulsion-polymerized aqueous coating of Schellekens on a flat roof. A flat roof reads as having an inclination of zero degrees, which falls within the claimed range of “not more than 15 degrees,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed February 17, 2026, with respect to the rejection of claims 47 and 48 under 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 47 and 48 under 35 USC 112(b) has been withdrawn.
Applicant’s arguments with respect to the rejections of claims 31-45 and 47-48 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Schellekens, Zollner, and Solomon, as described above.
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 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
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