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.
Claims 1-3, 5-8, and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schlarb (US Patent No. 6,348,528 B1).
Regarding claim 1, Schlarb teaches an aqueous polymer dispersion (Abstract), containing an emulsifier having a phosphate group and ethylene and propylene oxide groups (Abstract), containing an R group comprising a C1-C18 alkyl group (col. 2, line 25). The emulsifier of Schlarb reads on the claimed “functional surfactant” because it contains all of the claimed compositional limitations thereof. The dispersion is indicated as including inorganic fillers such as talc, mica, kaolin, etc. (col. 6, lines 22-30).
Schlarb does not directly point out that the polymer particles and/or inorganic particles are insoluble in the aqueous solution; However, Schlarb does specifically point out that the polymer may, for example, include 100 wt% of at least one principal monomer (col. 2, line 46) which may be inter alia methyl methacrylate or butyl acrylate (col. 2, lines 60-64). These polymers and the aforementioned examples of inorganic fillers are contemplated by the instant Specification as suitable polymer and inorganic fillers, respectively (c.f. claims 3 and 4). 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 insolubility characteristic(s) of the polymeric/inorganic particles will therefore necessarily be present in the composition of Schlarb.
Schlarb also does not directly point out that the emulsifier (which reads on the claimed “functional surfactant”) is disposed on at least a portion of the surface(s) of the polymeric/inorganic particles. However, Schlarb does teach emulsion polymerization using the aforementioned components (col. 6, lines 50-62), which is the same production method contemplated by the instant Specification [0067]). 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 and have been produced by a substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. It is therefore the Office’s position that the composition of Schlarb will contain the same quality of having the emulsifier on the surface of the particles as claimed.
Regarding claims 2-3, as described above, Schlarb teaches that the polymer may, for example, include 100 wt% of at least one principal monomer (col. 2, line 46) which may be inter alia methyl methacrylate or butyl acrylate (col. 2, lines 60-64), which reads on “acrylate polymer” and “poly(butyl acrylate)” and “poly(methyl methacrylate” of the claimed lists.
Regarding claim 5, Schlarb is silent regarding the solubility of every emulsifying agent at the claimed temperature range. Nevertheless, as described above, Schlarb teaches emulsifying agents which meet all of the claimed compositional limitations. 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 water-insolubility will therefore necessarily be present in the emulsifying agents of Schlarb, as applied above.
Regarding claim 6, Schlarb teaches that the emulsifying agent has a molecular weight in the range of 400 to 2,000 g/mol (col. 2, lines 7-9) which the claimed range of “at least 265 grams per mole”, establishing a prima facie case of obviousness, and teaches the specific incorporation of a phosphate functional group (Abstract). Schlarb is silent regarding the claimed HLB characteristic; nevertheless, the emulsifying agent of Schlarb meets all of the claimed chemical and compositional characteristics as claimed. 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 HLB characteristic will therefore necessarily be present in the emulsifying agent of Schlarb, as applied above.
Regarding claim 7, as described above, Schlarb does not directly point out that the emulsifier (which reads on the claimed “functional surfactant”) is disposed on at least a portion of the surface(s) of the polymeric/inorganic particles. However, Schlarb does teach emulsion polymerization using the aforementioned components (col. 6, lines 50-62), which is the same production method contemplated by the instant Specification [0067]). 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 and have been produced by a substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. It is therefore the Office’s position that the composition of Schlarb will contain the same quality of having the emulsifier on the surface of the particles as claimed, and in the claimed amount.
Regarding claim 8, Schlarb teaches that the composition contains from 0.1 to 10 phr of the emulsifying agent (Abstract), and that the composition contains from 35 to 65% by weight of solids (col. 4, lines 60-62). The amount of water within the composition may therefore range from 36-65 wt% of the overall formulation; the polymer may comprise between about 31.82 and 64.94 wt% of the overall formulation; and the emulsifying agent may comprise about between about 0.06 and 3.18 wt% of the overall formulation. In each case, these amounts overlap/fall within the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 10, The claim is recognized as a product-by-process claim. Product-by-process claims are limited not by the recited steps, but by the structure imparted by said steps (see MPEP 2113.I.). In this case, the implied structures include an emulsion-polymerized polymer and the presence of the claimed “functional surfactant.”Schlarb teaches the polymerization in the presence of the emulsifying agent to stabilize the monomer dropelets therein, and teaches that the emulsifier remains in the coating composition thereafter, influencing the resulting coating (col. 1, lines 37-41), which reads on the claimed method. Therefore, the composition of Schlarb meets all of the limitations of claim 10.
Regarding claim 11, as described above, Schlarb teaches a dispersion containing an aqueous solution and polymer particles; the insolubility characteristic of said particles and the disposition of the claimed surfactant thereon are inherently present in Schlarb; and the emulsifier of Schlarb meets the claimed compositional limitations of the claimed “functional surfactant” (see rejection of claim 1, above). Furthermore, Schlarb teaches an anticorrosion coating using the inventive dispersion (col. 1, lines 14-16).
Regarding claim 12, Schlarb teaches the incorporation of, inter alia, carbon black and titanium dioxide (col. 6, lines 7-13), and talc, mica, and kaolin (col. 6, lines 22-30).
Regarding claim 13, as described above, Schlarb teaches that the polymer may, for example, include 100 wt% of at least one principal monomer (col. 2, line 46) which may be inter alia methyl methacrylate or butyl acrylate (col. 2, lines 60-64). The polymer of Schlarb therefore reads on, inter alia, “acrylate polymer” from the claimed list.
Regarding claim 14, Schlarb teaches that the emulsifying agent has a molecular weight in the range of 400 to 2,000 g/mol (col. 2, lines 7-9) which overlaps the claimed range of “at least 265 grams per mole,” establishing a prima facie case of obviousness. Schlarb additionally teaches the specific incorporation of a phosphate functional group (Abstract). Schlarb is silent regarding the claimed HLB characteristic and the solubility of every emulsifying agent at the claimed temperature range; nevertheless, the emulsifying agent of Schlarb meets all of the claimed chemical and compositional characteristics as claimed. 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 HLB characteristic and water-insolubility characteristic will therefore necessarily be present in the emulsifying agent of Schlarb, as applied above.
Regarding claim 15, as described above, Schlarb does not directly point out that the emulsifier (which reads on the claimed “functional surfactant”) is disposed on at least a portion of the surface(s) of the polymeric/inorganic particles. However, Schlarb does teach emulsion polymerization using the aforementioned components (col. 6, lines 50-62), which is the same production method contemplated by the instant Specification [0067]). 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 and have been produced by a substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. It is therefore the Office’s position that the composition of Schlarb will contain the same quality of having the emulsifier on the surface of the particles as claimed, and in the claimed amount.
Regarding claim 16, Schlarb teaches that the composition contains from 0.1 to 10 phr of the emulsifying agent (Abstract), and that the composition contains from 35 to 65% by weight of solids (col. 4, lines 60-62). The amount of water within the composition may therefore range from 36-65 wt% of the overall formulation; the polymer may comprise between about 31.82 and 64.94 wt% of the overall formulation; and the emulsifying agent may comprise about between about 0.06 and 3.18 wt% of the overall formulation. In each case, these amounts overlap/fall withinthe claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 17, Schlarb teaches the further incorporation of a polymerization initiator in amounts ranging from 0.1 to 10% by weight (col. 4, lines 25-29), which reads on the claimed “additive.” The amount of 0.1 to 10% by weight falls within the claimed range of “0.01 to 85 weight percent,” establishing a prima facie case of obviousness.
Regarding claim 18, Schlarb teaches the incorporation of a colorant (col. 5, lines 38-42).
Regarding claim 19, Schlarb teaches the formation of a coating using the inventive dispersion (col. 1, lines 14-16), and teaches the coating of the composition onto a panel substrate (col. 8, lines 46-47), which reads on the claimed limitation requiring that the coating is disposed on at least a portion of a surface of an article.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Schlarb (US Patent No. 6,348,528 B1).
Regarding claim 4, Schlarb teaches all of the limitations of claim 1, as described above. Schlarb teaches the incorporation of fillers such as, inter alia, talc, mica, and kaolin (col. 6, lines 22-30).
Schlarb is silent regarding the full range of acceptable particle sizes for the inventive composition. However, Schlarb does teach the use of a different, alternative filler with a particle size of 7.5 microns (col. 11, lines 22-23). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate any of the fillers of Schlarb (including talc, mica, and/or kaolin) with particle sizes of 7.5 microns, as Schlarb teaches this as a suitable particle size for alternative fillers. The value of 7.5 microns falls within the claimed range of “10 nm to 50 µm,” establishing a prima facie case of obviousness.
Regarding claim 9, as described above, Schlarb teaches that the polymer incorporates at least one principal monomer (col. 2, line 48); therefore, two principal monomers together are implicitly included within the formation of the inventive polymer. Furthermore, mixtures of alkyl (meth)acrylates are particularly pointed out as suitable (col. 2, lines 63-64), and methyl methacrylate and n-butyl acrylate are specified as particularly preferred (col. 3, lines 18-21). It therefore would have been obvious to one having ordinary skill in the art to utilize a copolymer of n-butyl acrylate and (methyl) methacrylate as the polymer of Schlarb. Finally, Schlarb additionally teaches the incorporation of carbon black and titanium oxide (col. 6, lines 7-13).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762