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 .
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
Claims 1-10 and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanda (US 20160333219 A1). All references have been cited in a prior Office action.
Regarding claims 1, 3, 8-10, 14-15, and 19, Kanda teaches an aqueous coating composition including acrylic urethane copolymer particles with graft acrylic resin having weight average molecular weight of 5,000 or more, plus a reactive-group containing resin, and optional crosslinking agent (Abstract). The crosslinking agent may be adipic acid dihydrazide (p. 16, [0225]). The particles may be dispersed in water (p. 11, [0145]). The acrylic urethane copolymer may contain carboxy-containing unsaturated monomers and carbonyl-containing unsaturated monomers, but is not required to (p. 3-4, [0037]). The urethane portion may be contributed by a carboxy-containing compound and an amine neutralizer, which may be dimethylaminoethanol (p. 6, [0085]-[0086]). The second polymer (graft acrylic resin) may contain unsaturated monomers having carboxy groups and carbonyl groups (p. 9, [0119]; claim 4). Kanda further teaches that the acid number of the final resin may be in the range of 10-100 mg KOH/g (p. 11, [0143]). Although not measured according to the claimed ISO method, this represents a physical characteristic of the composition that will remain constant and necessarily present regardless of the method by which it is measured.
In the alternative, Kanda states a particular preference for an acid value of 25-50 mg KOH/g and states that this property affects dispersibility, storage stability, and water load resistance (p. 11, [0143]). It would have been obvious to one of ordinary skill in the art at the time of filing to optimize Kanda’s acid value as measured under any criteria, including ISO 2114:2000, in order to achieve the desired degree of dispersibility, storage stability, and water load resistance, thereby arriving at the claimed range.
The weight average molecular weight of the particles may be 5,000-50,000 (p. 10, [0141]). These prior art ranges overlap all claimed ranges with sufficient specificity to anticipate them. See MPEP 2131.03.
Regarding claim 2, Kanda remains as applied to claim 1 above. Kanda further teaches that the final resin may be composed of a hydrophilic chain and a hydrophobic chain, each made from unsaturated monomers (p. 7, [0102]-[0103]).
Regarding claim 4, Kanda remains as applied to claim 1 above. Kanda's hydrophobic component corresponds to the claimed P1, and may contain methyl (meth)acrylate and (meth)acrylamide (p. 8, [0115]). Methyl (meth)acrylate is a C1-C2 alkyl methacrylate monomer, and (meth)acrylamide is a carbonyl-functionalized ethylenically unsaturated monomer.
Regarding claim 5, Kanda remains as applied to claim 1 above. Kanda's hydrophilic component corresponds to the claimed P2, and may contain methyl methacrylate, lauryl methacrylate, vinyltriacetoxysilane, and maleic anhydride (p. 9, [0121]). Methyl methacrylate is a C1-C2 alkyl methacrylate monomer, lauryl methacrylate is a C10-C14 alkyl (meth)acrylate monomer, vinyltriacetoxysilane is a carbonyl-functionalized ethylenically unsaturated monomer, and maleic anhydride is a carboxy-functionalized ethylenically unsaturated monomer.
Regarding claim 6, Kanda remains as applied to claim 1 above. Kanda further teaches that the two polymers may be present in mass ratios ranging from 50/50 to 95/5 (hydrophobic/hydrophilic) (p. 10, [0132]). Kanda's hydrophilic polymer corresponds with the claimed carboxyl-functional P2. This translates to mass ratios of P1/P2 ranging from 50/50 to 95/5. This prior art range overlaps the claimed range with sufficient specificity to anticipate the claimed range. See MPEP 2131.03.
Regarding claim 7, Kanda remains as applied to claim 1 above. Kanda further teaches that the acrylic component has a glass transition temperature of -60 to 60 ℃ (p. 5, [0068]). This prior art range overlaps the claimed range with sufficient specificity to anticipate the claimed range. See MPEP 2131.03.
Regarding claims 16-18, Kanda remains as applied to claims 1, 8, and 14 above. Kanda further teaches a method of forming a coating film by applying the aqueous coating dispersion, which already contains the crosslinking agent (claims 1 and 6). The coating may be applied to a variety of substrates including metal, concrete, wood, and plastic (p. 17, [0248]).
Response to Arguments
Applicant's arguments filed 10 August 2026 have been fully considered but they are not persuasive.
Applicant argues that Kanda does not anticipate the claimed invention because a production example, Example 37, on which the rejection of record does not rely, fails to meet all claim limitations in the Applicant’s estimation. Applicant objects specifically to the acrylic acid content, molecular weight, and acid value of Example 37. However, a reference may be relied on for all that it teaches, and Kanda’s teachings are not limited to solely Example 37. See MPEP 2121.01. Kanda teaches all claimed limitations of the instant invention, as discussed in the rejection above. Additional teachings outside of the scope of the instant invention do not negate anticipation.
Applicant further argues that Kanda fails to teach the claimed molecular weight limitation because the paragraph relied on by the Office refers to a post-emulsified resin. However, the range taught by Kanda (greater than 5,000 g/mol, see [0141]) overlaps the claimed range of less than 25,000 g/mol, as discussed in the rejection above. In the absence of a claim limitation specifying that the claimed molecular weight limitation applies only to a resin that is not post-emulsified, this reads on the claimed molecular weight. The rejection is maintained.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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