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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14, 19 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 contains several trademark/trade names. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe acrylic polymers and, accordingly, the identification/description is indefinite.
Claim 19 contains trademark/trade names. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe partially hydrolyzed polyvinyl alcohol and, accordingly, the identification/description is indefinite.
Claim 23 contains trademark/trade names. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe rheology modifiers and, accordingly, the identification/description is indefinite.
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.
Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over McDaniel (PG Pub. 2009/0238811) as evidenced by US Pat. 2,347,508 and PG Pub. 2017/0348243.
Regarding claims 1, 15-16 and 20-21, McDaniel teaches a fixing treatment [0062 and Ex. 19] composition comprising one or more acrylic binders [0028, 0654,0724, 0758-0762 and claim 57] one or more film former (such as ethylene-vinyl acetate elastomer or polyvinyl alcohol) [0032, 0868 and claim 76] and one or more diluents (such as ethylene glycol or propylene glycol) [0213, 0226 and 0754].
Regarding claims 2 and 22-23, the composition rheology modifier comprises an organic or inorganic thickener [0265, 0779 and 1227]. McDaniel teaches the organic or inorganic rheology modifier and also is considered to meet the limitations of claim 23 given the 35 USC 112(b) rejection of claim 23 above.
Regarding claims 3 and 24, the composition contains one or more stain blockers (octylphenoxypolyethoxyethanol and CMC-Na is taught in McDaniel in the composition and is stated to be a stain blocker in the instant application) [0257].
Regarding claims 4 and 25, the composition comprises nonyl phenol ethoxylate and octylphenoxy polyethoxyethanol surfactants [0813 and 1213].
Regarding claim 5, McDaniel teaches dyes [0228], but is silent regarding tinting dyes. However, it would have been obvious to one of ordinary skill in the art to use tinting dye which is well known in the art as evidenced by US Pat. 2,347,508 and also the limited number of options tinting dye versus full color dye.
Regarding claim 6, the composition comprises one or more preservatives [0248-0249].
Regarding claim 7, McDaniel teaches adjusting the amount of binder and other components in order to affect the final properties of the composition including film formation, coloring, viscosity among other properties and therefore it would have been obvious to one of ordinary skill in the art to arrive at the claimed compositional component amounts through routine experimentation [0785].
Regarding claim 8, one or more rheology modifiers are taught in the claimed amount [0247-0248].
Regarding claim 9, the stain blockers (octylphenoxypolyethoxyethanol and CMC-Na is taught in McDaniel in the composition and is stated to be a stain blocker in the instant application) are taught in the claimed amount [0247].
Regarding claim 10, the composition comprises the claimed amount of surfactants [0247-0248].
Regarding claim 11, McDaniel teaches dyes [0228], but is silent regarding tinting dyes. However, it would have been obvious to one of ordinary skill in the art to use tinting dye which is well known in the art as evidenced by US Pat. 2,347,508 and also the limited number of options tinting dye versus full color dye.
Regarding claim 12, the composition comprises one or more preservatives [0248-0249].
Regarding claims 13-14, the one or more acrylic binders are aqueous emulsion acrylic polymers [0979]. McDaniel teaches the aqueous emulsion acrylic polymers and also is considered to meet the limitations of claim 14 given the 35 USC 112(b) rejection of claim 14 above.
Regarding claims 17-19, McDaniel teaches pva, but is silent regarding the claimed hydrolyzed or partially hydrolyzed pva. However, it is known in the art to use partially hydrolyzed polyvinyl alcohol in coatings as evidenced by PG Pub. 2017/0348243 and therefore it would have been obvious to one of ordinary skill in the art to use partially hydrolyzed polyvinyl alcohol. McDaniel teaches the partially hydrolyzed polyvinyl alcohol and also is considered to meet the limitations of claim 19 given the 35 USC 112(b) rejection of claim 19 above.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over McDaniel (PG Pub. 2009/0238811) in view of Lassila (PG Pub. 2003/0158448).
Regarding claim 26, McDaniel teaches surfactants, but is silent regarding the surfactants being acetylenic diols. However, Lassila teaches acetylenic diol surfactants because they provide very low effective surface tension at lower use levels. It would have been obvious for one of ordinary skill in the art to use the acetylenic diol surfactants of Lassila in McDaniel because they provide very low effective surface tension at lower use levels and arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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