DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/02/2026 has been entered.
Response to Amendment
In response to the amendment received on 04/02/2026:
claims 1-22 are currently pending
claim 1 is amended
new prior art grounds of rejection applying Dugan, Gerlach, Wu and Takenouchi are presented herein
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 text of those sections of Title 35 U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-4, 8-10, 14-16 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dugan et al. (US 20190144685 A1), hereinafter referred to as DUGAN, in view of Gerlach et al. (US 20160289487 A1), hereinafter referred to as GERLACH.
Regarding claim 1, DUGAN teaches an aqueous architectural composition (see DUGAN at paragraph [0008]: an architectural aqueous coating composition that forms a paint film) forming a paint film on a substrate capable of resisting stain comprising (see DUGAN at paragraph [0023]: provide hydrophobicity to the paint films to improve resistance to water softening and staining):
a film forming latex resin for forming the paint film (see DUGAN at paragraph [0025]: the hybrid latex polymer comprises one or more hydrophobic compounds and one or more matrix polymer),
an optional opacifying agent (see DUGAN at paragraph [0009]: the architectural aqueous coating composition may further comprise an opacifying pigment),
a silicone polymer (see DUGAN at paragraph [0027]: the hydrophobic compounds can be silicones),
a polyethylene wax microsphere having a mean diameter (D50) (mV) ranging from about 6 micron to 18 microns (see DUGAN at paragraph [0015]: the wax may include a HDPE oxidized powder, having an average particle sizes (mV) from about 1 microns (μm) to about 25 μm), and ranges from about 3 wt.% to about 9 wt.% of the aqueous architectural composition (see DUGAN at paragraph [0011]: the wax may preferably make up from about 3.0 wt. % to 10.0 wt. % of the architectural aqueous coating composition). DUGAN teaches ranges which overlap and render obvious the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim. See MPEP §2144.05(I), and
at least one organic extender pigment (see DUGAN at Table 1: silicone dispersion (Dow Corning® 84: micronized silicone elastomer)).
While DUGAN discloses that the disclosed composition can comprise silicones (see DUGAN at paragraphs [0027-28]), DUGAN is silent with respect to the silicones being silicone polymer comprising polydimethylsiloxane (PDMS) and ranging from about 1 wt.% to about 4 wt.% of the aqueous architectural composition.
However, GERLACH discloses a composition for coatings (see GERLACH at paragraph [0002]); and that the surface, which is coated with the composition has a reduced hydrophobicity, resulting in increased soiling resistance to lipophilic and non-polar substances (see GERLACH at paragraph [0016]). GERLACH teaches a coating composition containing a hydrophobic wax; a silicone oil, which contains mainly non-polar side chains; a hydrophilic binder; and pigments and/or fillers (see GERLACH at paragraphs [0009-13]). Similarly to DUGAN, GERLACH also teaches that a composition is more preferably a paint, and that the composition may also be in the form of an aqueous dispersion (see GERLACH at paragraphs [00084-85]). Additionally, GERLACH teaches that the silicone oil, more preferably mainly alkyl side chains, e.g., C1 to C20 alkyl side chains; the alkyl chains normally contain no more than 5 carbon atoms, and branched and linear polysiloxanes with methyl, ethyl or propyl side chains are especially preferred (see GERLACH at paragraph [0064]), e.g., dimethyl polysiloxane (see GERLACH at paragraph [0124]). Furthermore, GERLACH discloses that the silicone oil preferably has a molecular weight of 1,000 to 20,000 g/mol (see GERLACH at paragraph [0071]), and is present in the composition in an amount of 0.01 to 2% by weight (see GERLACH at paragraph [0017]).
Both DUGAN and GERLACH disclose aqueous paint compositions comprising wax, hydrophobic silicones, binder and pigments. According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the composition of DUGAN by including the silicone oil, e.g., polydimethylsiloxane, as disclosed by GERLACH based on teachings of DUGAN describing that the composition can comprise silicones (see DUGAN at paragraphs [0027-28]). Moreover, one of ordinary skill in the art would have been motivated to modify the architectural aqueous coating composition by including 0.01 to 2 wt.% of silicone oil disclosed by GERLACH since GERLACH explicitly teaches the composition having increased soiling resistance to lipophilic and non-polar substances (see GERLACH at paragraph [0016]).
It is noted, that since DUGAN as modified by GERLACH teach all structural limitations of claim 1 as set forth, one of ordinary skill in the art would have anticipated the resulting aqueous architectural composition to form a film capable of resisting hydrophobic and hydrophilic stains.
Regarding claim 2, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the silicone polymer ranges from about 1.25 wt.% to about 3.5 wt.% of the architectural composition (see rejection of claim 1 above and GERLACH at paragraphs [0017-19]: the composition preferably contains 0.01 to 2% by weight of the silicone oil). GERLACH teaches a range which overlaps with the claimed range.
Regarding claim 3, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 2, wherein the silicone polymer ranges from about 1.25 wt.% to about 3 wt.% of the architectural composition (see rejection of claim 1 above and GERLACH at paragraphs [0017-19]: the composition preferably contains 0.01 to 2% by weight of the silicone oil). GERLACH teaches a range which overlaps with the claimed range.
Regarding claim 4, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the weight average molecular weight silicone polymer is greater than about 10000 Daltons and less than about 100000 Daltons (see rejection of claim 1 and GERLACH at paragraph [0071]: the silicone oil preferably has a molecular weight of 1,000 to 20,000 g/mol). GERLACH teaches a range which overlaps with the claimed range.
Regarding claim 8, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the wax microsphere is a polyethylene wax microsphere (see DUGAN at paragraph [0059]: synthetic waxes include but are not limited to polyethylene (PE); the suitable waxes are available as solids, such as micronized powder).
Regarding claim 9, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the wax microsphere ranges from about 3.5 wt.% to about 8.5 wt.% of the aqueous architectural composition (see DUGAN at paragraph [0011]: the wax may preferably make up from about 3.0 wt. % to 10.0 wt. % of the architectural aqueous coating composition). DUGAN teaches a range which overlaps with the claimed range.
Regarding claim 10, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 9, wherein the wax microsphere ranges from about 4 wt.% to about 7.5 wt.% of the aqueous architectural composition (see DUGAN at paragraph [0011]: the wax may preferably make up from about 3.0 wt. % to 10.0 wt. % of the architectural aqueous coating composition). DUGAN teaches a range which overlaps with the claimed range.
Regarding claim 14, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the film forming latex resin is substantially free of wax seeded latex. According to MPEP § 2111, the proper claim interpretation includes giving claims their broadest reasonable interpretation in light of the specification. Therefore, for the purpose of the claim interpretation, the Examiner treats the limitation “substantially free of wax seeded latex” according to the specification, paragraph [0036], as being equivalent to “less than about 5 wt.% of the total monomer weight”. DUGAN teaches the wax seeded latex comprising a hydrophobic wax compound entrapped within a polymeric matrix and an added wax, wherein the added wax makes up from 1.04 wt. % to 4.77 wt. % (see DUGAN at paragraph [0008]). DUGAN teaches a range which is within the claimed range.
Regarding claim 15, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the film forming latex resin comprises (meth)acrylate monomers (see DUGAN at paragraph [0030]: the “matrix polymer” is known to one of ordinary skill in the art and is formed from ethylenically unsaturated monomers such as (meth)acrylates).
Regarding claim 16, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the film forming latex resin comprises vinyl and (meth)acrylate monomers (see DUGAN at paragraph [0030]: the “matrix polymer” is known to one of ordinary skill in the art and is formed from ethylenically unsaturated monomers such as (meth)acrylates, vinyl esters).
Regarding claim 21, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 4, wherein the weight average molecular weight silicone polymer is greater than about 15000 Daltons (see rejection of claim 1 and GERLACH at paragraph [0071]: the silicone oil preferably has a molecular weight of 1,000 to 20,000 g/mol). GERLACH teaches a range which overlaps with the claimed range.
Regarding claim 22, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1, wherein the at least one organic extender pigment is non-film forming in the aqueous architectural composition and comprises at least one of opaque acrylic copolymer, styrene acrylic resin, polyurethane microspheres, poly-butylacrylate microspheres and silicone microspheres (see DUGAN at Table 1: silicone dispersion (Dow Corning® 84: micronized silicone elastomer)).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over DUGAN in view of GERLACH as applied to claim 1 above, and further in view of Ueno et al. (EP 3524630 A1), hereinafter referred to as UENO, with evidence from PDMS Silicone oil retrieved from https://www.clearcoproducts.com/product/super-high-viscosity-pure-silicone-fluids/ on 05.05.2026, as to the rejection of claims 5-7.
Regarding claims 5-7, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1. While GERLACH fails to explicitly teach wherein the weight average molecular weight silicone polymer is greater than about 20000 Dalton (claim 5), greater than about 25000 Dalton (claim 6), and greater than about 30000 Dalton (claim 7), GERLACH discloses the use of the silicone oil (see GERLACH at paragraph [0071]). The use of silicone oils having high molecular weight in the coating compositions is known in the art as evidenced form the disclosure of UENO describing a coating composition capable of providing a coating film having stain resistance (see UENO at Abstract); the disclosed coating composition can be utilized in the coating on walls of buildings (see UENO at paragraph [0104]). UENO also discloses the composition comprising emulsion polymer containing acrylate and methacrylate monomers (see UENO at paragraphs [0050-52]: the acryl polyol can be produced by a well-known method such as a method involving subjecting the above monomer to solution polymerization and converting the resultant to a water layer or an emulsion polymerization). UENO teaches that the coating can comprise silicone oils; and that the aforementioned silicone oils include high-molecular weight polydimethylsiloxanes (see UENO at paragraph [0097]). Furthermore, according to the description of PDMS Silicone oil from CLEARCO, high-molecular weight PDMS is in the range from 204000 to greater than 500000 g/mol (see attached PDMS Silicone oil).
MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known” (see MPEP § 2144.05(II)(A)). Thus, one of ordinary skill in the art would have a reasonable expectation of success when modifying the composition of DUGAN in view of GERLACH by utilizing PDMS having high average molecular weight as disclosed by UENO, e.g., greater than 200000 g/mol as evidenced from PDMS Silicone oil, since UENO explicitly teaches that the examples of suitable silicone oils include high-molecular weight polydimethylsiloxanes.
Claims 11-13 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over DUGAN in view of GERLACH as applied to claim 1 above, and further in view of Wu et al. (US 11059980 B2), hereinafter referred to as WU.
Regarding claim 11, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1. While DUGAN discloses additional monomers which may be used in the matrix polymer including phosphoalkyl (meth)acrylates, such as phosphoethyl(meth)acrylate, phosphopropyl(meth)acrylate, and phosphobutyl(meth)acrylate; phosphoalkyl crotonate, phosphoalkyl maleate; phosphoalkyl fumarate; phosphodialkyl(meth)acrylate; phosphodialkyl crotonate; and allyl phosphate (see DUGAN at paragraph [0037]), DUGAN fails to explicitly teach phosphate monomer ranging from about 0.5 wt.% to about 0.9 wt.%.
However, WU discloses emulsion polymers and coating compositions made therefrom that exhibit exceptional stain resistance to both hydrophilic and hydrophobic stains (see WU at Abstract). Similarly to DUGAN, WU discloses that the ethylenically unsaturated nonionic monomer may be without limitation any (meth)acrylate, vinyl ester, styrene and substituted styrene, with butyl acrylate, methyl methacrylate, unsubstituted or substituted styrene, acrylic monomer, or a mixture thereof being preferred, while the first acid monomer is ethyl methacrylate phosphate, phosphate esters of polypropylene glycol mono(meth)acrylate, phosphate esters of polyethylene glycol mono(meth)acrylate (see WU at Col. 2, lines 29-39). WU also discloses a method of using the coating composition comprising the disclosed emulsion polymer including applying the composition to a surface of a substrate to form a film or coating layer on the surface, such that the film or coating layer is resistant to hydrophilic stains and hydrophobic stains (see WU at Col. 2, lines 52-56). WU teaches an emulsion polymer comprising, as polymerized units: a) at least one ethylenically unsaturated nonionic monomer in an amount ranging between about 85 wt. % to less than 100 wt. %, based on the overall weight of the polymer composition; b) a first acid monomer in an amount ranging from about 0.1 to 2 wt. %, the first monomer being a strong acid monomer selected as a phosphorus-based acid monomer, a sulfur-based acid monomer, or a mixture thereof; and that the polymer composition exhibits a glass transition temperature (Tg) ranging from -30°C to 30°C (see WU at Col. 2, lines 3-27).
DUGAN discloses that the “matrix polymer” is known to one of ordinary skill in the art and is formed from ethylenically unsaturated monomers such as (meth)acrylates, styrenated monomers, vinyl esters, and other ethylenically unsaturated monomers; and that additional monomers which may be used in the matrix polymer include phosphoalkyl (meth)acrylates, such as phosphoethyl(meth)acrylate, phosphopropyl(meth)acrylate, and phosphobutyl(meth)acrylate; phosphoalkyl crotonate, phosphoalkyl maleate; phosphoalkyl fumarate; phosphodialkyl(meth)acrylate; phosphodialkyl crotonate; and allyl phosphate (see DUGAN at paragraphs [0030] and [0037]). DUGAN also discloses that the polymerization process required to form the hybrid latex polymers of the invention is an emulsion polymerization (as is known in the art) of the monomers used to form the matrix polymers, and that the hybrid latex polymers are typically polymerized in a latex system comprising water, surfactant, the desired monomers for the matrix polymer (see DUGAN at paragraphs [0038-39]). Thus, DUGAN suggest that the use of various aqueous polymer emulsions would be suitable.
Both DUGAN’s and WU’s disclosures describe coating compositions addressing stain resistance. Furthermore, aforementioned coating compositions contain aqueous polymer emulsion comprising similar monomers. Thus, one of ordinary skill in the art would have recognized the potential benefit of improve the paint composition of DUGAN by utilizing emulsion polymer comprising acid monomer in an amount ranging from about 0.1 to 2 wt. %, e.g., a phosphorus-based acid monomer, as disclosed by WU since WU explicitly teaches that the coating composition comprising the disclosed emulsion polymer forms a film or coating layer resistant to hydrophilic stains and hydrophobic stains (see WU at Col. 2, lines 52-56).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the paint composition of DUGAN by utilizing emulsion polymer comprising acid monomer in an amount ranging from about 0.1 to 2 wt. %, e.g., a phosphorus-based acid monomer disclosed by WU in order to increase resistance to hydrophilic stains and hydrophobic stains.
Regarding claim 13, DUGAN as modified by GERLACH and WU teaches the aqueous architectural composition of claim 12, wherein the phosphate monomer ranges from about 0.6 wt.% to about 0.8 wt.% (see rejection of claim 12 above and WU at Col. 2, lines 11-14: a first acid monomer in an amount ranging from about 0.1 to 2 wt. %, the first monomer being a strong acid monomer selected as a phosphorus-based acid monomer). WU teaches a range which overlaps with the claimed range.
Regarding claim 17, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1. While DUGAN fails to explicitly teach wherein the Tg for the film forming latex resin ranges from 0°C to 50°C as calculated by the Flory Fox equation, the motivation and potential benefits of utilizing the emulsion polymer of WU in the paint composition of DUGAN was discussed in the rejection of claim 12 above. Thus, DUGAN as modified by GERLACH and WU teaches the Tg for the film forming latex resin ranges from 0°C to 50°C as calculated by the Flory Fox equation (see WU at Col. 2, lines 25-27: the polymer composition exhibits a glass transition temperature (Tg) ranging from -30°C to 30°C; and Col. 3, lines 58-60: the glass transition temperatures of the polymer phases can be calculated using the Fox equation). WU teaches a range which overlaps with the claimed range.
Regarding claim 18, DUGAN as modified by GERLACH and WU teaches the aqueous architectural composition of claim 17, wherein the Tg for the film forming latex resin ranges from 0°C to 30°C (see WU at Col. 2, lines 25-27: the polymer composition exhibits a glass transition temperature (Tg) ranging from -30°C to 30°C;). WU teaches a range which overlaps with the claimed range.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over DUGAN in view of GERLACH as applied to claim 1 above, and further in view of Takenouchi et al. (CN 115315494 A) with reference to the provided machine translation, hereinafter referred to as TAKENOUCHI.
Regarding claims 19-20, DUGAN as modified by GERLACH teaches the aqueous architectural composition of claim 1. While DUGAN teaches examples of surfactants useful in the polymerization process may include, but are not limited to, nonionic and/or anionic surfactants (see DUGAN at paragraph [0040]), DUGAN is silent with respect to the surfactant being a fluorosurfactant (claim 19) or a Gemini surfactant, a polyether-siloxane surfactant, and/or a neutralized alcohol phosphate-type surfactant (claim 20).
However, TAKENOUCHI teaches the coating film-forming composition that is preferably an emulsion-type resin composition using a polymer emulsion; preferably an acrylic emulsion containing acrylic resin (see TAKENOUCHI at paragraphs [89-90]). TAKENOUCHI discloses that the coating composition preferably contains a surfactant (see TAKENOUCHI at paragraph [98]). TAKENOUCHI teaches that when the coating film-forming composition according to the embodiment of the present invention contains a surfactant, the surfactant exists on the surface of the coating film formed from the coating film-forming composition, and when water, including dirt, etc. adheres to the surface of the coating film, the dirt flows away with the surfactant, thereby exhibiting an excellent antifouling effect (see TAKENOUCHI at paragraph [99]). Additionally, TAKENOUCHI teaches that surfactants can be silicone-based, fluorine-based, alkyl-based, aromatic-based (see TAKENOUCHI at paragraph [102]); and that examples of silicone-based surfactants include silicone-based surfactants in which side chains and terminals are modified with PEG (polyethylene glycol) (see TAKENOUCHI at paragraph [103]).
One of ordinary skill in the art would have recognized the potential benefit of including silicone-based, fluorine-based surfactant disclosed by TAKENOUCHI based on the teachings of DUGAN describing that examples of surfactants useful in the polymerization process may include, but are not limited to, nonionic and/or anionic surfactants (see DUGAN at paragraph [0040]). Moreover, one of ordinary skill in the art would have been motivated to include fluorine-based or silicone-based surfactants in which side chains and terminals are modified with PEG as disclosed by TAKENOUCHI since TAKENOUCHI explicitly teaches that when the coating film-forming composition contains a surfactant, the surface of the coating film exhibiting an excellent antifouling effect (see TAKENOUCHI at paragraph [99]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of DUGAN by including the fluorine-based or silicone-based surfactants disclosed by TAKENOUCHI in order to obtain the surface of the coating film exhibiting an excellent antifouling effect.
Response to Arguments
Applicant’s arguments, see Remarks filed on 04/02/2026, with respect to the rejection(s) of claim 1 under 35 U.S.C. 103 as being unpatentable over WU, CONNER and MORITA 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 DUGAN in view of GERLACH.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Andrews, Amanda. (Silicones are the Innovative Solution for Architectural Coatings, The Waterborne Symposium), 2015.
Chen, Timothy. (Additive Technology to Improve Easy Cleaning of Latex Paints and Coatings, The Waterborne Symposium), 2015.
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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