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
Applicant's election with traverse of Group I (claims 1-9) in the reply filed on 1/9/2026 is acknowledged. The traversal is on the ground(s) that it would not be burdensome to examine both groups. This is not found persuasive because inventions I and II would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/9/2026.
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.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohling et al (US 20110166257 A1).
Regarding claims 1-5, 8, Bohling teaches an aqueous coating composition comprising acrylic copolymer comprising emulsion polymerized units of ethylenically unsaturated monomers [0029], including acetoacetoxyethyl (meth)acrylate [0045].
It would have been obvious to one of ordinary skill in the art at the time of filing to select acetoacetoxyethyl methacrylate as the ethylenically unsaturated monomer in Bohling’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Acetoacetoxyethyl methacrylate reads on the claimed (a), as specified in claim 8.
Bohling teaches that the emulsion polymer comprises 0.25% to 12.5% of acetoacetoxyethyl (meth)acrylate as polymerized units [0081]. This range overlaps the claimed from 1% to 10%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The aqueous composition further comprises a nitrogen-containing nucleophilic molecule [0018] including 2-amino-2-ethyl-1,3-propanediol [0062].
It would have been obvious to one of ordinary skill in the art at the time of filing to select 2-amino-2-ethyl-1,3-propanediol as the nitrogen-containing nucleophilic molecule in Bohling’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
2-Amino-2-ethyl-1,3-propanediol reads on the claimed (b), as specified in claims 2-4.
Bohling is silent about the amount of 2-Amino-2-ethyl-1,3-propanediol.
However, Bohling teaches that 2-Amino-2-ethyl-1,3-propanediol is used to reduce aldehyde level [0062]. Therefore, the amount of 2-Amino-2-ethyl-1,3-propanediol affects the aldehyde level with a target. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Thus, Bohling recognizes the claimed amount of a multihydroxy-functional amine as a result-effective variable affecting aldehyde level with a target. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the amount of 2-Amino-2-ethyl-1,3-propanediol by routine experimentation to arrive at the claimed from 0.11% to 0.9% and from 0.15% to 0.7%, by weight based on the weight of the acrylic copolymer, recited in claim 1 and claim 5, respectively, with a reasonable expectation of successfully obtaining the desired aldehyde level with a target in the final product. See MPEP 2144.05. "[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claims 6-7, Bohling teaches that the composition may further comprise a polyamine such as decamethylene diamine or a dihydrazide to effect an ambient cure [0045]. Decamethylene diamine reads on the claimed primary amine with less than two hydroxyl groups.
Bohling discloses in Example 8 an emulsion polymer of 45% solids comprising 2% adipic dihydrazide. It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since adipic dihydrazide and decamethylene diamine are recognized as equivalent for effecting ambient cure as stated above, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute adipic dihydrazide with decamethylene diamine in Bohling’s composition. When 2% of decamethylene diamine is used, 0.034 mole of primary amine groups is contained in 100 g of the composition, as calculated by the examiner. Since the composition comprises about 45% of the copolymer which contains 0.25% to 12.5% of acetoacetoxyethyl methacrylate as stated above, about 0.0005-0.026 mole of acetoacetyl groups is contained in 100 g of the composition, as calculated by the examiner. Thus, the mole ratio of primary amine groups to acetoacetyl groups is about 1.3 to 66. This range overlaps the claimed range of from 0.3 to 1.5. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
It is understood that when primary amines other than decamethylene diamine is used, or when the solids content or primary amine content varies, the resulting ratio varies. However, the amount of the primary amine is a result-effective variable that affects ambient curing as stated above. "[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claim 9, Bohling teaches that the composition further comprises a pigment, an extender, a defoamer, a thickener, a wetting agent, a coalescent, a biocide, etc. [0053].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762