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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/13/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/13/2026. In particular, claim 1 has been amended to incorporate original claim 2 into claim 1. This combination of limitations was not present in the original claims. Also, claim 15 has been amended to include a resin comprising cellulose acetate butyrate. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 6, 8-11, 13, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over McIntyre (US 2003/0108667).
With respect to claims 1, 3, and 11, McIntyre discloses aqueous pigment dispersion comprising a conditioned inorganic pigment prepared by mixing a crude titanium dioxide with at least about 0.1 wt % one or more copolymer dispersants (page 10, claims 1 and 19). McIntyre teaches that the hydrophobic monomer for the copolymer dispersants includes styrene, cycloaliphatic (meth)acrylates, and aromatic (meth)acrylates (paragraph 0039). Example 3 includes 1500 g titanium dioxide, 2.5 wt % polymer dispersant 1 and 2.5 wt % polymer dispersant 3 (paragraph 0113), wherein polymer dispersant 1 (reads on claimed “second dispersant”) is an acrylic copolymer (paragraph 0093) and polymer dispersant 3 (reads on claimed “first dispersant”) is derived from BZMA (benzyl methacrylate), DMAEMA (dimethyl amino ethyl methacrylate, i.e., tertiary amine-containing), and other acrylic-based monomers (paragraph 0102-0105).
While McIntyre discloses aqueous pigment dispersion and also teaches that conditioned pigments can be added to a liquid carrier before being incorporated into a final application system (paragraph 0079), McIntyre fails to disclose that the dispersion is in the form a paste.
Even so, McIntyre does not teach away from utilizing a paste and does no specifically discloses a lower viscosity dispersion. Therefore, it would have been obvious to one of ordinary skill in the art to select an appropriate dispersion, including a paste, in which to form the liquid pigment concentrate.
With respect to claim 4, McIntyre teaches that a suitable titanium dioxide particle size “from about 0.1 to about 0.5 micron” (paragraph 0030) which overlaps with claimed range of 10-100 nm. McIntyre also teaches using transparent titanium dioxide materials having crystal sizes of less than 100 nm (paragraph 0031).
With respect to claim 6, McIntyre teaches that the copolymer dispersant is present in an amount of at least 0.1 wt % of the titanium dioxide which provides for an amount of titanium dioxide of less than 50 wt % solids for more than 100 wt % of copolymer dispersant based on titanium dioxide.
With respect to claim 8, McIntyre teaches that their method provides for improved dispersibility (paragraph 0008). Therefore, it would have been obvious to one of ordinary skill in the art to expect improved haze when using its polymeric dispersants.
With respect to claim 9, while McIntyre does not teach haze value explicitly, it is the examiner’s position that the haze values can be readily optimized based on the amount of titanium dioxide and the use of McIntyre’s polymeric dispersants which allow for improved dispersibility (paragraph 0008).
With respect to claim 10, it is noted that this claim does not limit the binder and only limits the functionality of the first and second dispersants. Exemplified polymer dispersant 3 (reads on claimed “first dispersant”) is necessarily compatible with cellulose acetate butyrate because of the hydrophilic amino group. The dispersant without the amino group is not compatible because it does not have the amino group and is hydrophilic with acid functional groups.
With respect to claim 13, exemplified polymer dispersant 3 (reads on claimed “first dispersant”) is BZMA/DMAEMA//BMA/MMA/HEMA/MAA having weight ratio of 25/7//15/10/5/12 (paragraphs 0103-0105) which provides for an amount of monomer (DMAEMA) containing nitrogen-containing anchor group of about 9 wt %.
With respect to claim 26, McIntyre disclose mixing the ingredients to form a coating composition (paragraphs 0125).
Claims 15, 18, 19, 21, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over McIntyre (US 2003/0108667) in view of Piro (US 2007/0028806).
The discussion with respect to McIntyre in paragraph 4 above is incorporated here by reference.
With respect to claim 15, McIntyre discloses that the polymers used to prepare the coating compositions comprising conditioned titanium dioxide pigment includes natural resin such as acetyl cellulose and cellulose butyrate (paragraph 0080) but fails to disclose that the polymer is cellulose acetate butyrate.
Piro discloses coating composition comprising titanium dioxide pigments (abstract) and teaches that suitable binders include cellulose acetate butyrates (paragraph 0068; page 11, claim 5).
Given that both McIntyre and Piro and disclose coating compositions comprising titanium dioxide pigment and cellulose ester binder, it would have been obvious to one of ordinary skill in the art to utilize a cellulose acetate butyrate binder in McIntyre’s coating composition as taught as suitable by Piro.
With respect to claim 18, McIntyre teaches that a suitable titanium dioxide particle size “from about 0.1 to about 0.5 micron” (paragraph 0030) which overlaps with claimed range of 10-100 nm. McIntyre also teaches using transparent titanium dioxide materials having crystal sizes of less than 100 nm (paragraph 0031).
With respect to claim 19, McIntyre fails to disclose an amount of added pigment of up to 5 wt % to a coating composition.
Piro discloses a coating composition comprising titanium dioxide pigment and teaches that the pigment to weight ratio is 0.1:100 to 300:100 (abstract), which is at least 0.1 wt % based on solids.
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate amount of piment in the coating composition, including those within the scope of the present claims desired pigmentation properties.
With respect to claim 21, exemplified polymer dispersant 3 (reads on claimed “first dispersant”) is necessarily compatible with cellulose acetate butyrate because of the hydrophilic amino group. The dispersant without the amino group is not compatible because it does not have the amino group and is hydrophilic with acid functional groups.
With respect to claims 23 and 24, McIntyre teaches that its coating compositions are used for automotive and architectural substrates (paragraph 0079).
Response to Arguments
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that McIntyre fails to disclose or suggest a second dispersant having a cycloaliphatic or aromatic group.
McIntyre teaches that the hydrophobic monomer for the copolymer dispersants includes styrene, cycloaliphatic (meth)acrylates, and aromatic (meth)acrylates (paragraph 0039). While the example does not include a cycloaliphatic or aromatic comonomer in the acrylic copolymer corresponding to the claimed second dispersant, McIntyre does include benzylmethacrylate (i.e., aromatic anchor group) in the copolymer comprising a nitrogen-containing anchor group corresponding to claimed first dispersant. Given that McIntyre discloses that cycloaliphatic and aromatic comonomers are suitable in either dispersant and further given that McIntyre exemplifies a dispersant containing cycloaliphatic and aromatic comonomers, McIntyre clearly suggests the use of them.
Applicant also argues that the data of the present specification establishes unexpected synergistic results by combining the two claimed dispersants regarding low haze.
The data has been fully considered, however, it is insufficient to establish unexpected results for two reasons. First, Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). The data only compares a coating made with two dispersants and comparative examples that is made from only one of them. Because McIntyre already teaches using a mixture of two dispersant, with the deficiency being that the exemplified acrylic dispersant reading on claimed second dispersant does not have cycloaliphatic or aromatic anchor group, the mixture is expected. Therefore, no criticality is established for the claimed cycloaliphatic or aromatic anchor group.
Second, the data of the specification is not commensurate in scope with the scope of the claims for three reasons. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). First, the second dispersant in the examples does not appear to have a cycloaliphatic or aromatic group by US 8,129,466 (cited in footnote of Table 1). Second, there is only one exemplified first dispersant and one exemplified second dispersant having specific relative amounts of acrylic monomer and comonomers which are not representative of the claimed acrylic polymers. Therefore, it has not been made clear that other copolymer dispersants not exemplified but within the scope of the instant claims would have the same advantageous haze properties. Third, similarly,
Pigment Blue 60 is the only exemplified pigment and therefore not representative of claimed “pigment.”
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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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 (571)272-1130. 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.
/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
vn
Prosecution Insights