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All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 1/27/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-7 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Iwazumi (US 8,642,180).
The rejection is adequately set forth in paragraph 4 of Office action mailed on 12/23/2025 and is incorporated here by reference.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Iwazumi (US 8,642,180) in view of Fox, Jr. (US 5,019,096).
The rejection is adequately set forth in paragraph 5 of Office action mailed on 12/23/2025 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Iwazumi does not fairly disclose a number-average molecular weight (Mn) of 200-900 g/mol because Iwazumi does not recognize the technical advantage regarding light scattering.
While the same motivation regarding light scattering is not taught by Iwazumi, case law holds that “[a]s long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 132 (Fed. Cir. 1992). Iwazumi Mn of 500-6000 that overlaps with claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Therefore, Iwazumi clearly suggests using Mn of 500-900 g/mol.
The data of the specification as originally filed has been considered and no support for criticality of the Mn has been established. Inventive examples include Mn of 650, and comparative examples include Mn of 2000. While the specification teaches generally that low-molecular-weight polyols may hinder the coalescing of hard segments (paragraph 0078), the examples only provide properties of gloss over exposure time (where there is no difference between inventive and comparative examples) and abrasion resistance. No data shows a relationship between molecular weight and light scattering.
Conclusion
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.
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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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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