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 1-2, 6-12, and 15-19 are pending. Claims 3-5 and 13-14 are canceled.
Amendments to the claims, filed 8 June 2026, 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 .
Withdrawn Rejections
The 35 U.S.C. §103 rejection of claims 1-2 and 6-10 over Bohling, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-2, 6-12, and 15-19 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 (US Patent Application Publication No US 2019/0177554 A1) (Bohling).
Regarding instant claims 1-2 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 in an amount of from 10 to 65 wt % based on the total weight of the composition (paragraph [0011]), which 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 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 are prepared from monomers inclusive of butyl acrylate (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, wherein the second acrylic beads account for from 20 to 85 wt %, based on the weight of the coating composition (paragraph [0036]).
Said second acrylic beads are construed to meet the second acrylic beads recited by the claims, wherein the particle size and amount disclosed by Guo overlap 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.
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, wherein the binder accounts for from 10 to 30 wt % of the coating composition (paragraph [0040]). It is noted that the particle size range and the amount of the binder of Guo include or overlap 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.
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 phosphorus functionalized particles comprise structural units inclusive of butyl acrylate (paragraph [0024]).
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]).
Guo further discloses that the coating composition is incorporated with a crosslinker inclusive of a water dispersible aliphatic polyisocyanate before being applied to a substrate and dried (paragraph [0055]). Said water dispersible aliphatic polyisocyanate crosslinker is construed to meet the claimed water-dispersible post-crosslinker.
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]).
Regarding instant claim 15:
Bohling further discloses that the phosphorus acid functionalized polymer particles include structural units inclusive of one or more of methyl methacrylate, ethyl acrylate, and methacrylic acid (paragraph [0024]).
Bohling further discloses that an initiator/redox couple such as t-butyl hydroperoxide and isoascorbic acid is used to form a gradient core-shell morphology (paragraph [0049]).
Bohling further discloses that the microspheres are prepared from an oligomeric seed inclusive of n-dodecyl mercaptan (paragraph [0041]).
Bohling further discloses that the microspheres include multiethylenically unsaturated monomers inclusive of allyl methacrylate (paragraph [0046]).
Regarding instant claim 16:
Guo further discloses that the second acrylic beads are similar to the first acrylic beads (paragraph [0036]).
Guo further discloses that the first acrylic beads are composed of monomers inclusive of styrene, ethyl acrylate, and butyl acrylate (paragraph [0012]).
Guo further discloses that the first acrylic beads are further composed of monomers inclusive of acrylic acid and (meth)acrylic acid (paragraph [0024]).
Before the effective filing date of the claims, it would have been obvious to use the same monomers to produce the first acrylic beads to produce the second acrylic beads as Guo discloses that both beads are similar.
Guo further discloses that the second acrylic beads include copolymerized units inclusive of allyl(meth)acrylate (paragraph [0037]).
Regarding instant claim 17:
Guo further discloses that the second acrylic beads are similar to the first acrylic beads (paragraph [0036]).
Guo further discloses that the first acrylic beads are composed of monomers inclusive of butyl acrylate (paragraph [0012]).
Before the effective filing date of the claims, it would have been obvious to use the same monomers to produce the first acrylic beads to produce the second acrylic beads as Guo discloses that both beads are similar.
Guo further discloses that the second acrylic beads include copolymerized units inclusive of allyl(meth)acrylate (paragraph [0037]).
Bohling further discloses that the phosphorus functionalized particles comprise structural units inclusive of butyl acrylate (paragraph [0024]).
Bohling further discloses that the microspheres include multiethylenically unsaturated monomers inclusive of allyl methacrylate (paragraph [0046]).
Regarding instant claim 18:
Guo further discloses that the aqueous coating composition is incorporated with 0.5 to 5 parts crosslinker inclusive of a water dispersible aliphatic polyisocyanate (paragraph [0055]), which is construed to overlap the range recited by the claim; 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-to-crosslinker ratio is from 100:0.1 to 100:5 based on the coating weight (paragraph [0007]), which is construed to overlap the range recited by the claim; 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.
Regarding instant claim 19:
Guo further discloses that the coating composition may contain conventional coating adjuvants inclusive of organic or inorganic pigments (paragraph [0050]). The disclosure that the coating composition may contain conventional coating adjuvants inclusive of pigments suggests to one of ordinary skill in the art that Guo encompasses those embodiments of coating compositions that exclude pigment.
Answers to Applicant’s Arguments
In response to Applicant’s amendments the grounds of rejection are altered to address the newly added limitations.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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.
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 06/15/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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