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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17 and 21-28, drawn to a stain-blocking paint, classified in C09D 5/022.
II. Claims 18, 19, 20 and 29-32, drawn to a method of causing a stain-blocking paint to be applied to a stained substrate, classified in B05D 5/00.
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product (I) can be a two-stage paint comprising a surfactant applied to unstained surface, the process (II) can apply a different product comprising a 9 wt.% of an emulsion latex polymer and a non-aqueous carrier.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Ann Mueting on April 22nd, 2026 a provisional election was made with traverse to prosecute the invention of the elected group, claims 18-20, 29-32. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-17, 21-28 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Interpretation
Since the elected claims 18 and 19 are dependent on the non-elected claims 1 and 15, respectively, claims 18 and 18 were examined as containing the limitations of claims 1 and 15.
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.
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.
6. Claims 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Balk (US 20190100613 A1) in view of Boone (US 10442936 B2).
Regarding claims 18-20, Balk teaches a paint composition comprising a polymer emulsion comprising 3146.9g of an aqueous polymer dispersion comprising:
1383.9g (44 wt.% of the non-volatile weight of the paint) of interpolymerized monomers comprising:
103.6g (7.5 wt.% of the interpolymerized monomers) t-butyl acrylate;
239.1g (17 wt.%) methyl (meth)acrylate; and
260.4g (18.8 wt.%) styrene
(Abstract, paragraph [0153], Inventive Example 3). Balk further teaches N-(2 methacryloyloxyethyl)ethylene urea as an optional adhesion promoter (paragraph [0108]). The examiner notes that the additives as claimed are optional.
Balk teaches methods of applying the paint of the invention to substrates (paragraph [0166]), but does not teach painting a stained substrate.
Boone teaches an emulsion paint that can be applied to substrates like wood and cement (column 6, lines 9-16), both of which are considered stained substrates according to the instant specification page 7, lines 5-11.
It would have been obvious to one of ordinary skill in the art to use the technique of applying an emulsion paint to a stained substrate from Boone to apply the paint composition from Balk to a stained substrates like wood and concrete to produce expected results.
Claims 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Balk (US 20190100613 A1) in view of Beaudry (US 9080060 B2).
Regarding claims 29-32, Balk applies as explained above in paragraph 6. However, Balk does not teach a paint comprising a single-stage emulsion polymer comprising a coalescent.
Beaudry discloses an aqueous emulsion latex polymer coating composition comprising 2.2 wt.% of Eastman Texanol, a coalescent (Table 1b), also teaches that coalescents are useful in forming films and for paint stability (column 9, line 62 – column 10, line 5). Beaudry further teaches emulsion latex polymers as interchangeable as either single stage and/or multistage polymers (column 3, line 63 - column 4 line 25; column 7, line 41).
A person of ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to apply the teachings from Beaudry of the interchangeability of single and multistage emulsion latex polymers and the teaching of the usefulness of a coalescent in the exemplified amounts to the paint composition of Balk to produce a single stage latex emulsion polymer comprising styrene.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 4:00 pm 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, Joseph Del Sole can be reached at (517)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOLTON JONES/Examiner, Art Unit 1763 4/29/2026
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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