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 Arguments
In response to the non-final Office Action (dated 9 March 2026), the Applicant submits the following:
-- Claim 1 has been amended, further limiting the branched cellulose ether.
-- No new matter has been entered.
The arguments provided by the Applicant have been fully considered & thoroughly reviewed but are ultimately found unpersuasive in view of the amended claims.
The Applicant states the invention achieved unexpected results such as surprisingly enhanced set time of exterior compositions provides the benefit of earlier resistance to water thereby preventing washout. Applicant states the amendment to the independent base claim 1 further limits the invention to align more directly with exterior compositions (Remarks, p. 4, bottom paragraph).
The Applicant identifies apparent deficiencies in Wielen, stating Wielen requires both a cellulose ether and a network building polymer (Remarks, p. 5, bottom 3 paragraphs) and further challenges the modification of Wielen in view of Hild. Applicant maintains that there is no teaching or suggestion in Wielen or Hild that replacing the cellulose ethers used in Wielen with the cellulose ethers disclosed by Hild would, in combination with the network building polymer in Wielen, provide the desired properties (Remarks, p. 6, top 2 paragraphs).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner points to Hild where Hild teaches crosslinked cellulose ethers (Abstract) that can be used as thickeners (p. 1, lines 6-9). Inventive embodiments exhibit beneficial rheological behavior in a variety of applications (p. 7, lines 15-17). Hild makes an express disclosure of the crosslinked cellulose ether (XCE) enabling increased viscosity allowing for reduced dosage time without sacrificing performance (p. 16, lines 16-19). Examiner points to Wielen where Wielen teaches the use of a thickening system comprising cellulose ethers (p. 2, [0014]). One of ordinary skill in the art would naturally select the XCE (taught by Hild) as the cellulose ether component in the thickening system (taught by Wielen), as it is both recognized by the prior art as being suitable for use as a thickener, and further allows for the use of reduced quantities to achieve desired viscosities.
The Applicant concludes by contrasting the modification of Wielen in view of Hild with the composition of the amended independent claim 1 which requires a crossover point feature and points to inventive examples in the instant Specification (Tables 5-10) for support. The examples in the present application show that this specific branched cellulose ether provides better performance in comparison with conventional cellulose ether rheology modifiers and synthetic rheology modifiers (Remarks, p. 6, bottom 2 paragraph).
Examiner notes the empirical data supplied by the Applicant, however, said data is not commensurate in scope with the claims and the Applicant has not provided an explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. Applicant must show unexpected results over the entire claimed ranged to support unexpected results for the entire range. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d). Therefore, the examples are insufficient to establish nonobviousness of the claims.
The examples disclosed in the instant Specification employ branched cellulose ethers formed according to Hild’s Example 1 (specification, p. 17, line 30 – p. 18, line 2). Although not expressly disclosed, Hild’s branched cellulose ethers are identical to those of the claimed invention and will therefore necessarily possess the claimed crossover point feature.
This rejection is FINAL.
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.
Claims 1 – 10 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Regarding claim 1, the claim contains registered trademarks or tradenames (i.e., brand name products) (Claim 1, line 9). Use of registered trademarks &/or tradenames renders the claim indefinite because trademark &/or tradename properties can change over time, making the scope of the claim uncertain. See MPEP § 2173.05(u).
Claims 2 – 10 all depend from the independent base claim 1, either directly or indirectly, inheriting all the limitations and indefiniteness established by the independent base claim 1. Therefore, claims 2 – 10 are similarly rejected as being indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 7 are rejected under 35 U.S.C. § 103 as being unpatentable over van der Wielen et al. (US 2008/0227892 A1; hereinafter Wielen) in view of Hild et al. (WO 2020/223040; referenced herein via US 12,312,420 B2).
Regarding claims 1 & 2, Wielen teaches compositions comprising cellulose ether (CMC or HEC) in tandem with a network building polymer (Abstract) suitable for use as interior or exterior paints or coatings (p. 1, [0002]). Wielen teaches the latex component of the composition is preferably acrylic (p. 5, [0044], [0050]). Wielen also explicitly discloses the viscosity of the cellulose component in a 1 wt.% solution will be in the range of 10-50,000 mPas (p. 2, [0016]) and the cellulose ether content of their invention is in the preferable range of 0.1-1.0 wt.% (p. 6, [0054]). Wielen also teaches the use of a thickening system comprising cellulose ethers (p. 2, [0014]), however, Wielen is silent on the cellulose ethers being branched/crosslinked as required by the claims.
In the same field of endeavor, Hild teaches crosslinked cellulose ethers (Abstract) that can be used as thickeners, binders, or film-forming agents that exhibit beneficial rheological behavior in a variety of applications (col. 1, lines 12-17). One advantage of Hild’s crosslinked cellulose ether (i.e., XCE) is increased viscosity allowing for reduced dosage without compromising performance (col. 12, lines 56-60). Although suggested for use in mortar systems, Hild recognizes the utility of XCE in a variety of applications as indicated above and one of ordinary skill in the art would recognize the economic advantage of employing a thickener requiring a reduced dosage compared to other materials.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the crosslinked/branched cellulose ether taught by Hild (i.e., XCE) and use it in place of the cellulose ether component in the thickening system taught by Wielen, as it is recognized by the prior art as being suitable for use as a thickener (Hild: col. 1, lines 12-15) and enables for the use of reduced quantities to achieve comparable viscosity, leading to reduced formulation cost.
In regards to the crossover point limitations; examples presented in the instant specification employ branched cellulose ethers formed according to Hild’s Example 1 (specification, p. 17, line 30 – p. 18, line 2). Although not expressly disclosed, Hild’s branched cellulose ethers are identical to those of the claimed invention and will therefore necessarily possess the claimed crossover point feature. 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.
Incorporating the XCE in amounts of 0.1-1.0 wt.% and the epoxy into the acrylic latex taught by Wielen results in an exterior coating composition comprising an acrylic (latex) emulsion and branched/crosslinked cellulose ether with a viscosity of 10-50,000 mPas, and the crossover point as required by the claims. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Wielen in view of Hild as detailed above reads on all limitations established by the independent base claim 1 and dependent claim 2.
Regarding claim 3, maintaining the modification of Wielen in view of Hild previously detailed, Wielen’s inventive compositions comprise at least one binder and at least one pigment (p. 2, [0011]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 4 & 5, maintaining the modification of Wielen in view of Hild previously detailed, Wielen discusses the importance of the relationship between pigments and binders in such compositions (p. 1, [0002], [0003]). Suitable pigments include titanium dioxide, zinc oxide & iron oxide (p. 4, [0035]). Wielen teaches pigment and binder content(s) of the coatings to be present in particular amounts of 5-70 wt.% and 1-30 wt.%, respectively (p. 6, [0054]). Thus, Wielen teaches suitable pigment:binder ratios ranging from 5:30 – 70:1. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 6, maintaining the modification of Wielen in view of Hild previously detailed, Wielen teaches the cellulose ether content of their invention is in the preferable range of 0.1-1.0 wt.% (p. 6, [0054]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 7, maintaining the modification of Wielen in view of Hild previously detailed, Wielen explicitly discloses exterior coatings applied to a substrate (p. 1, [0002]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claims 8 & 10 are rejected under 35 U.S.C. § 103 as being unpatentable over van der Wielen et al. (US 2008/0227892 A1; hereinafter Wielen) in view of Hild et al. (WO 2020/223040; referenced herein via US 12,312,420 B2), in further view of Li et al. (US 2019/0153236 A1).
Regarding claim 8, maintaining the modification of Wielen in view of Hild previously detailed, homogenous application methods of exterior paints are known to those skilled in the art. Neither Wielen nor Hild teach the drying time as required by the claims.
In the same field of endeavor, Li teaches coating compositions (Abstract) suitable for use as an outdoor coating (p. 1, [0005]). Li teaches a binder composition comprising two acrylic emulsion copolymers, a crosslinking agent & a foaming agent (p. 2, [0013]-[0017]). The binder composition may further comprise rheology modifiers, such as cellulose ethers, in amounts of 0.005-3.0 wt.% (p 4 & 5, [0046]). Li teaches their inventive composition may have a drying time of 48 hours (p. 7, [0097]).
It would have been obvious to further modify Wielen in view of Hild (previously detailed) by following the process details disclosed by Li, as Li’s composition uses cellulose ethers for rheological control and is suitable for use in the same capacity as the coating compositions of Wielen & Hild. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Applying known methods of homogenous application of outdoor coatings, along with the teaching & modification of Wielen in view of Hild, in further view of Li reads on all limitations established by claim 8.
Regarding claim 10, maintaining the modification of Wielen in view of Hild, in further view of Li previously detailed, Wielen teaches the cellulose ether content of their invention is in the preferable range of 0.1-1.0 wt.% (p. 6, [0054]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over van der Wielen et al. (US 2008/0227892 A1; hereinafter Wielen) in view of Hild et al. (WO 2020/223040; referenced herein via US 12,312,420 B2), in further view of Li et al. (US 2019/0153236 A1) in further view of Beaudry et al. (US 2013/0105473 A1).
Regarding claim 9, maintaining the modification of Wielen in view of Hild, in further view of Li previously detailed, Li teaches the use of their inventive coating composition at ambient conditions, such as 5°C – 30°C (p. 7, [0097]). Neither Wielen, Hild, nor Li teach the relative humidity as required by the claim.
In the same field of endeavor, Beaudry teaches compositions & methods of applying compositions suitable for use as coating systems (Abstract). Said compositions preferably further comprise at least one kind of clay anti-sag (i.e., CAS) agents (p. 1, [0002]). Beaudry discloses an organoclay of hydroxyethyl cellulose and bentonite clay as a suitable example of a CAS agent (p. 6, [0063]). Beaudry teaches adding a CAS agent to coating compositions comprising acrylic emulsions (p. 5, [0050]) prevents undue sagging in humid environments and does not impact dry time to an undue degree (p. 3, [0023]). Coatings including said CAS agent can be used in environments with relative humidity ranging from 50-99% (p. 6, [0057]).
It would have been obvious to one of ordinary skill in the art at the time of filing to further modify Wielen in view of Hild, in further view of Li, by incorporating a CAS agent (i.e., HEC/bentonite clay) taught by Beaudry into the inventive composition, to increase the range of environments in which the inventive coating may effectively be applied by enabling operating conditions to expand to 50-90% relative humidity (p. 6, [0057]). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Modification of Wielen in view of Hild, in further view of Li, in further view of Beaudry as detailed above reads on all limitations established by claim 9.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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