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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 38 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
9. Claim 38 provides for the use of polymer latex, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 103
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.
Claim(s) 20-27, 29 and 31-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0269402 (herein Maurice).
As to claims 20-23, 31 and 34, Maurice discloses an aqueous copolymer dispersion, reading on the claimed aqueous polymer latex (see examples) of film forming copolymer particles (paragraph 68 and examples) obtained by an aqueous emulsion polymerization of ethylenically unsaturated monomers M and a method of forming the dispersion by polymerization. See examples. Specifically, see example 5 in table 2 comprising 55.89 wt% styrene (ST, reading on monovinyl aromatic hydrocarbon monomers), 41.85 wt% butyl acrylate (BA, reading on C4 alkyl esters of acrylic acid), thus 97.74 wt% of claimed monomer M1, 0.13 wt% vinyl trimethoxysilane (A-171, reading on claimed monomer M2) 1.96 wt% phosphoethyl methacrylate (PEM, reading on monomer M3). See table in 66, which defines the acronyms.
The polymer also comprises 0.30 wt% sodium styrene sulfonate (SSS), which is a monomer M4 bearing an acid different than a phosphate group and no (less than 1 wt% neutral monomers M5).
The particle size if example 5 is 111 nm, which is outside the claimed range of 260 to 500 nm. However, paragraphs 11, 43, 46 and 62, state that the particle size is 50 to 350 nm, which substantially overlaps the 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). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 24, phosphoethyl methacrylate reads on formula I, wherein R=methyl, A=C2 alkandiyl, n=0.
As to claim 25, paragraph 21 of Maurice states that the phosphate monomer may be phospho tri-ethylene glycol (meth)acrylate, which reads on the formula of claim 25, wherein n=2, A=1,2-ethanediyl and alkyl=1,2-ethanediyl.
As to claim 26, paragraph 42 of Maurice states that the polymer may be produced via utilizing styrene in the inner phase (core) and utilizing the monomers of Maurice, thus having M3 on the surface/outer phase (shell).
As to claim 27, following the method of paragraph 42 would arrive at the claimed method via polymerizing styrene first to form the core and the rest to form the shell.
As to claim 29, the method of paragraph 42, the first phase can be considered a seed.
As to claim 32, the Tg of example 5 is 15.2 oC. See table 1.
As to claim 33, the polymer appears to be identical with the same monomers, Tg and other properties. Therefore, it is reasonable to take the position that the polymer would also have the same minimum film forming temperature, since it would naturally flow from the same polymer.
As to claim 35, Maurice discloses a waterborne coating composition comprising the latex and an inorganic pigment. See paragraph 11-12, 46, 55 and examples.
As to claim 36, the paint is for surfaces such as wood, etc., which could be utilized as an interior latex paint. See paragraph 61, 65, 68 and examples.
As to claim 37, the pigment volume concentration (PVC) is 40 to 90%. See paragraph 12. Also see examples with a PVC within the claimed range.
As to claim 38, the latex shows higher (improved) wet scrub resistance (paragraph 56) and opacity from the pigment (paragraph 55) and the PVC is 40 to 90% (paragraph 12). Also see examples with a PVC within the claimed range.
Allowable Subject Matter
Claims 28 and 30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
US 2017/0349851 teaches similar latex compositions except the amounts for M2 and M3.
US 2016/0289516 teaches similar latex compositions except the particle size, M3 not within the claimed range and M4 outside the claimed range.
US 2013/0052457 teaches similar latex compositions with the proviso that acrylic acid (M4) is too high.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764