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 § 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.
Claim 1-3, 6-8 and 18 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. In this case, claim 1 recites “urethane modified (meth) acrylic resin”, “epoxy modified (meth) acrylic resin”, “phenol modified (meth) acrylic resin”, or “melamine modified (meth) acrylic resin”, one of ordinary skill in the art is uncertain what is the metes and bounds of such claimed “urethane modified (meth) acrylic resin”, “epoxy modified (meth) acrylic resin”, “phenol modified (meth) acrylic resin”, or “melamine modified (meth) acrylic resin”, such as a salt or an ester of acrylic acid being modified with functional group of urethane, epoxy, phenol or melamine, or any materials or compounds derived from a salt or an ester of acrylic acid or a polymeric material containing acrylic acid and respectively urethane, epoxy, phenol or melamine ? Therefore, such limitation renders claim indefiniteness. Next, one of ordinary skill in the art is uncertain whether the “meth” in the parenthesis group of the claimed “urethane modified (meth) acrylic resin”, “epoxy modified (meth) acrylic resin”, “phenol modified (meth) acrylic resin”, or “melamine modified (meth) acrylic resin”, being a part of in such modified acrylic resin or just a mere exemplary of such modified acrylic resin, not required in the claimed limitations. Therefore, such limitations render claim indefiniteness. All claim 1’s depending claims are rejected for similar reasons.
Claim Rejections - 35 USC § 102/103
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.
Claim 1-3, 6-8 and 18 are rejected under 35 U.S.C. 102((a) (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Takahira et al (US2020/0299526).
Takahira et al teaches a water-based paint composition comprising: a manganese oxide-based catalyst; an activated carbon; a polyacrylate-based dispersant; a water-soluble resin; and a water-based solvent (claim 1), wherein the water-soluble resin is an acrylic resin or a polypropylene resin (claim 9, para. [0090], [0126], example 2-3, table 1).
Alternatively, Takahira et al. teaches a preferred water-soluble resin is an acrylic resin or a polypropylene resin for providing advantageous dispersion, weather resistance, cost, adhesion, dispersion stability, and affinity to the catalyst and the activated carbon wherein the acrylic resin has high adhesion to metal (para. [0090]). It would have been obvious for one of ordinary skill in the art to adopt acrylic resin as water-soluble resin because by doing so can help provide an advantageous dispersion, weather resistance, cost, adhesion, dispersion stability, affinity to the catalyst and the activated carbon, and high adhesion to metal substrate as suggested by Takahira et al. (para. [0090], [0094]).
As for the claimed acrylic resin glass transition temperature, Takahira et al. expressly teaches the acrylic resin can be methacrylate resin, acrylic silicone resin, polyurethane resin, alkyd resin, urethane resin, vinyl resin (para. [0088]), preferably methyl acrylic resin which can be urethane modified (meth) acrylic resin, epoxy modified (meth) acrylic resin, phenol modified (meth) acrylic resin, or melamine modified (meth) acrylic resin (para. [0091]-[0093]), wherein such modified acrylic resin is same or substantially the same as that of instantly of claimed modified acrylic resin, therefore, same or substantially the same glass transition temperature as that of instantly claimed is envisioned or expected.
Regarding claim 2-3 and 18, Takahira et al. expressly teaches a paint composition using 3.6 grams of activated carbon and 8 grams of manganese oxide, while 8 grams of acrylic resin (table 1, example 2-3)--Takahira et al. disclosed acrylic resin (water-soluble resin) content (to the total content of the manganese oxide-based catalyst and the activated carbon, or to the mass of the manganese oxide-based catalyst) is within the claimed range. Alternatively, Takahira et al. also broadly teaches the water-soluble resin is present in a range of 5 to 100 parts by mass, preferably, 10 to 50 parts by mass to per hundred parts by mass of total solid contents of the catalyst (i.e. manganese oxide) and the activated carbon (para. [0099]); and also teaches the weight ratio of the manganese oxide-based catalyst and the activated carbon are mixed in a range of preferably 20:80 to 80:20 (para. [0023]); wherein teachings suggest the water-soluble resin content overlapping with that of instantly claimed water-soluble resin content thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 6, Takahira et al. expressly teaches a paint composition using 3.6 grams of activated carbon and 8 grams of manganese oxide, while 8 grams of acrylic resin (table 1, example 2-3)--Takahira et al. disclosed total content of the manganese oxide-based catalyst and the activated carbon to a total content of the manganese oxide-based catalyst, the activated carbon and the at least one-water soluble resin is within the claimed range. Since Takahira et al. also broadly teaches the water-soluble resin is present in a range of 5 to 100 parts by mass, preferably, 10 to 50 parts by mass to per hundred parts by mass of total solid contents of the catalyst (i.e. manganese oxide) and the activated carbon (para. [0099]), wherein such teachings suggesting total content of the manganese oxide-based catalyst and the activated carbon to a total content of the manganese oxide-based catalyst, the activated carbon and the at least one-water soluble resin overlapping with that of instantly claimed total content of the manganese oxide-based catalyst and the activated carbon thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 7, Takahira et al. expressly teaches a paint composition using 3.6 grams of activated carbon and 8 grams of manganese oxide (table 1, example 2-3) --Takahira et al. disclosed content of the manganese oxide-based catalyst is within the claimed range of 11 to 900 parts by mass per 100 parts of by mass of the activated carbon. Alternatively, Takahira et al. also broadly teaches the weight ratio of the manganese oxide-based catalyst and the activated carbon are mixed in a range of preferably 20:80 to 80:20 (para. [0023]), wherein such weight ratio of the manganese oxide-based catalyst to the activated carbon overlapping with that of instantly claimed weight ratio of the manganese oxide-based catalyst to the activated carbon thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Regarding claim 8, Takahira et al. expressly teaches a paint composition using 3.6 grams of activated carbon and 8 grams of manganese oxide, while 8 grams of acrylic resin (table 1, example 2-3) --Takahira et al. disclosed content of the manganese oxide-based catalyst is within the claimed range of 5 to 65 parts by mass per 100 parts by mass of a total content of the manganese oxide-based catalyst, the activated carbon and the at least one-water soluble resin. Since Takahira et al. also broadly teaches the water-soluble resin is present in a range of 5 to 100 parts by mass, preferably, 10 to 50 parts by mass to per hundred parts by mass of total solid contents of the catalyst (i.e. manganese oxide) and the activated carbon (para. [0099]), and also broadly teaches the weight ratio of the manganese oxide-based catalyst and the activated carbon are mixed in a range of preferably 20:80 to 80:20 (para. [0023]), wherein such teachings suggest a content of the manganese oxide-based catalyst to a total content of the manganese oxide-based catalyst, the activated carbon and the at least one-water soluble resin is overlapping with that of instantly claimed manganese oxide-based catalyst to a total content of the manganese oxide-based catalyst, the activated carbon and the at least one-water soluble resin thus renders a prima facie case of obviousness (see MPEP §2144. 05 I).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Takahira et al (US2020/0299526) as applied above, and in view of Fisher (US2007/0060472).
Takahira et al. has been described as above. Takahira et al. also teaches the coating composition is used for decompose ozone (para [0037]).
Regarding claim 21, Takahiro et al. does not expressly teach a fluorocarbon resin having a glass transition temperature from -30 to 100 °C.
Fisher teaches an ozone decompose composition comprising a catalyst comprising manganese oxide (para. [0019]) and a binder which can be polypropylene, polymethacrylate, an acrylic, a vinyl acrylic, an ethylene vinyl acetate copolymer, a styrene acrylic, a poly vinyl alcohol, a fluorinated polymer, a poly(tetrafluoroethylene), polyvinylidene fluoride, poly(vinylfluoride) (para. [0036], claim 36). Fisher disclosed polyvinylidene fluoride (PVDF), poly(vinylfluoride) (PVF) are well-known fluorocarbon resins and such PVDF having glass transition temperature of -35 °C (see https://www.alfa-chemistry.com/plastics/resources/comprehensive-guide-to-polyvinylidene-fluoride-pvdf.html), while PVF having glass transition temperature range of -15 to 50 °C (see https://www.dupont.com/content/dam/dupont/amer/us/en/tedlar-pvf-films/public/documents/EI00241-Dupont_TedlarGeneralProperty-Digital.pdf).
It would have been obvious for one of ordinary skill in the art “obvious to try” to try PVDF and/or PVF as shown by Fisher to modify the ozone decompose coating composition of Takahiro et al. because PVDF and/or PVF choosing from a finite number of identified, predictable polymeric binder material for help forming a desired ozone decompose composition would have a reasonable expectation of success (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt PVDF and/or PVF as functional equivalent binder to substitute polypropylene (resin) or polyacrylate or acrylic copolymers (i.e. acrylic resins) of Takahiro et al. because substituting known equivalents for same purpose (for binding/adhering the material) is prima facie case of obviousness (see MPEP 2144. 06 I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-3, 6-8 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of U.S. Patent No. 11613660 (noted US’660 is patented application of US20200299526) in light of its specification because US’660 teaches a same water-based paint composition as that of instantly claimed . As for claim 2-4, 6-8 and 18 claimed component mass contents, acrylic resin glass transition temperature, which are all shown in US’660 specification (i.e. detailed teachings shown Takahira et al (US2020/0299526) as discussed above). Therefore, US’660 in view of its specification teaches all such claimed components mass contents, acrylic resin glass transition temperature.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-9 of U.S. Patent No. 11613660 (noted US’660 is patented application of US20200299526) in light of its specification and in view of Fisher (US2007/0060472). US’660 teaches a substantially the same coating composition except the fluorocarbon resin which has been taught by Fisher as discussed above. It would have been obvious for one of ordinary skill in the art “obvious to try” to try PVDF and/or PVF as shown by Fisher to modify the ozone decompose coating composition of US’660 because PVDF and/or PVF choosing from a finite number of identified, predictable polymeric binder material for help forming a desired ozone decompose composition would have a reasonable expectation of success (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to adopt PVDF and/or PVF as functional equivalent binder to substitute polypropylene (resin) or polyacrylate or acrylic copolymers (i.e. acrylic resins) of US’660 because substituting known equivalents for same purpose (for binding/adhering the material) is prima facie case of obviousness (see MPEP 2144. 06 I).
Response to Arguments
Applicant's amendments filed on 12/04/2025 have been acknowledged and previous 112 rejections have been withdrawn.
Applicant's arguments filed on 12/04/2025 have been fully considered but are moot in view of current rejections. In response to applicant’s arguments about Takahira et al. not teaching the claimed glass transition temperature, the examiner has clearly established that the instantly claimed acrylic resin, currently amended modified acrylic resin is same or substantially the same that of instantly claimed, therefore, same or substantially the same glass transition temperature is expected. Applicant only supplied pure arguments but did not demonstrate or show Takahira et al disclosed acrylic resin being different as compared to that of instantly claimed. Furthermore, it is well-known in the art that acrylic resin having glass transition temperature within the claimed range, see CN102181215, shows acrylic acid resin Tg range from 50-70 °C (see para. [0046]).
Similar reasons for sustaining double patenting rejections wherein the examiner already explained US’660 teaches a same water-based paint composition as that of instantly claimed.
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 JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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/JUN LI/ Primary Examiner, Art Unit 1732