DETAILED ACTION
This is an Office action based on application number 18/281,129 filed 8 September 2023, which is a national stage entry of PCT/US2022/014943 filed 2 February 2022, which claims priority to US Provisional Application No. 63/164,102 filed 22 March 2021. Claims 1-12 are pending. Claims 13-14 are canceled.
Amendments to the claims, filed 8 September 2023, have been entered into the above-identified application.
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 § 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.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation “a third acrylic emulsion” in line 1. The limitation is unclear because neither the instant claim nor the preceding parent claim recite a first or second acrylic emulsion.
Claim 5 further recites the limitation “the second acrylic beads”. There is insufficient antecedent basis for the limitation in the instant claim and the preceding parent claim.
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 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.
Claims 1-2 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bohling (US Patent Application Publication No US 2019/0177554 A1) (Bohling).
Regarding instant claims 1-2 and 7:
Bohling discloses an aqueous dispersion of phosphorus acid functionalized polymer particles useful in coating formulations used a pigmented matte coatings (paragraph [0001]).
Bohling discloses an aqueous dispersion of polymeric organic crosslinked multistaged microspheres prepared by contacting under polymerization conditions a first aqueous dispersion of microspheres comprising structural units of a first ethylenically unsaturated nonionic monomer with first stage monomers comprising 0.05 wight percent of an inorganic phosphate represented by Formula I and 70 to 99.95 weight percent of a second monoethylenically unsaturated monomer to produce a dispersion of second microspheres having a particle size in the range of from 1.1 μm to 25 μm (paragraph [0033])
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Bohling further discloses that the second microspheres are further staged with carryover organic phosphate and additional monoethylenically unsaturated nonionic monomer to yield a dispersion of a third microspheres with a domain having a Tg of less than 25° C and a domain with a Tg of greater than 50° C, wherein the domains for a gradient core-shell morphology (paragraph [0049]).
It is noted that the particle size and Tg ranges recited by Bohling overlap or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
As to the claimed Young’s modulus and static coefficient of friction properties:
In their original disclosure, Applicant discloses that the first stage of the first acrylic beads comprise 85 wt % to 99.9 wt % structural units of a monoethylenically unsaturated nonionic monomer (Specification at page 9, lines 1-2).
At page 10, lines 1-6 of the Specification, Applicant further discloses that the multistaged crosslinked acrylic beads are functionalized with up to 5 wt % of one or more polymerizable organic phosphates of Formula (I):
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Applicant further discloses that the multi-staged acrylic bead has a core-shell particle morphology where a first stage is a crosslinked core having a Tg ≤ 20° C and a second stage grated as a shell having a Tg ≥ 30° C (Specification at page 9, lines 22-24).
Therefore, the scope of Bohling encompasses an embodied crosslinked multistaged particle having a substantially identical structure and composition to that of Applicant’s invention, and one of ordinary skill in the art would reasonably conclude that the encompassed embodiment must have the same properties as Applicant’s invention (i.e., the surface Young’s modulus and provided static coefficient of friction). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 6:
Bohling further discloses that the coating formulation further comprises a rheology modifier (Claim 1).
Regarding instant claims 8-10:
Bohling further discloses that the formulations are used to form matte finish paints (paragraph [0084]) and that the paints are drawn down over vinyl charts and dried (paragraph [0090]).
Claims 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US Patent Application Publication No US 2019/0315994 A1) (Guo) in view of Bohling.
Regarding instant claims 1-5 and 7:
Guo discloses aqueous matte coating compositions comprising acrylic beads and slip additives (paragraph [0002]).
Guo further discloses that the compositions comprise first acrylic beads having an average particle diameter of 0.1 to 2 μm (paragraph [0011]).
Guo further discloses that the first acrylic beads include multi-stage polymeric particles having a core-shell morphology comprising a core of crosslinked acrylic polymers (paragraph [0012]).
Guo further discloses that the first acrylic beads include acid monomers inclusive of phosphorus-containing acid monomers (paragraph [0024]).
Guo further discloses that the first acrylic beads have a Tg- of from -60 to 150° C (paragraph [0025]).
Guo further discloses that the acrylic beads comprises second acrylic beads having an average particle diameter of 0.5 to 30 μm (paragraph [0036]).
Said second acrylic beads are construed to meet the second acrylic beads recited by claim 3, wherein the particle size disclosed by Guo overlaps the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Guo further discloses that the coating composition includes a polymer binder having a Tg of from 0 to 30° C and an average particle diameter of from 0.03 to 0.5 μm (paragraph [0040]). It is noted that the particle size range of the binder of Guo includes the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Guo does not explicitly disclose first multistage crosslinked acrylic beads.
However, Bohling discloses an aqueous dispersion of phosphorus acid functionalized polymer particles useful in coating formulations used a pigmented matte coatings (paragraph [0001]).
Bohling discloses an aqueous dispersion of polymeric organic crosslinked multistaged microspheres prepared by contacting under polymerization conditions a first aqueous dispersion of microspheres comprising structural units of a first ethylenically unsaturated nonionic monomer with first stage monomers comprising 0.05 wight percent of an inorganic phosphate represented by Formula I and 70 to 99.95 weight percent of a second monoethylenically unsaturated monomer to produce a dispersion of second microspheres having a particle size in the range of from 1.1 μm to 25 μm (paragraph [0033])
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Bohling further discloses that the second microspheres are further staged with carryover organic phosphate and additional monoethylenically unsaturated nonionic monomer to yield a dispersion of a third microspheres with a domain having a Tg of less than 25° C and a domain with a Tg of greater than 50° C, wherein the domains for a gradient core-shell morphology (paragraph [0049]).
It is noted that the particle size and Tg ranges recited by Bohling overlap or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Bohling discloses that their composition provides a way to provide matte finish coatings with the scrub resistance and stain removal attributes of a semi-gloss paint (paragraph [0073]).
As to the claimed Young’s modulus and static coefficient of friction properties:
In their original disclosure, Applicant discloses that the first stage of the first acrylic beads comprise 85 wt % to 99.9 wt % structural units of a monoethylenically unsaturated nonionic monomer (Specification at page 9, lines 1-2).
At page 10, lines 1-6 of the Specification, Applicant further discloses that the multistaged crosslinked acrylic beads are functionalized with up to 5 wt % of one or more polymerizable organic phosphates of Formula (I):
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Applicant further discloses that the multi-staged acrylic bead has a core-shell particle morphology where a first stage is a crosslinked core having a Tg ≤ 20° C and a second stage grated as a shell having a Tg ≥ 30° C (Specification at page 9, lines 22-24).
Therefore, the scope of Bohling encompasses an embodied crosslinked multistaged particle having a substantially identical structure and composition to that of Applicant’s invention, and one of ordinary skill in the art would reasonably conclude that the encompassed embodiment must have the same properties as Applicant’s invention (i.e., the surface Young’s modulus and provided static coefficient of friction). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to replace the core-shell particles of Guo with those of Bohling. The motivation for doing so would have been that Bohling provides core-shell acrylic particles desired by Guo that are also art-recognized components of a matte coating composition that has optimized scrub resistance and stain removal properties.
Therefore, it would have been obvious to combine Bohling with Guo to obtain the invention as specified by the instant claims.
Regarding instant claim 6:
Guo further discloses that the coating composition comprises slip additives (paragraph [0005]).
Guo further discloses that the coating composition comprises rheology modifiers, defoamers, and wetting agents (paragraph [0006]).
Regarding instant claims 8-9:
Guo further discloses that in order to provide a coating, the aqueous coating composition is applied to a substrate and dried (paragraph [0055]).
Regarding instant claim 10:
Guo further discloses that the substates are inclusive of films sheets or containers of wood, metal, plastic, leather, vinyl, woven textiles, nonwoven textiles, and combinations of two or more (Claim 16).
Regarding instant claim 11:
Guo further discloses that the matte coating compositions are used in packaging applications (paragraph [0003]).
Regarding instant claim 12:
Guo in view of Bohling discloses the synthesis of a first acrylic bead dispersion having the claimed particle size and Young’s modulus as cited in the rejection of claim 1, above.
Guo further discloses that the acrylic beads are mixed with the polymeric binder (paragraph [0050])
Guo further discloses that the aqueous coating composition is incorporated with a with a water dispersible aliphatic polyisocyanate crosslinker before being applied to a substrate and dried (paragraph [0050]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 03/03/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788