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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson (US Patent No. 7,078,102 B2).
Regarding claims 1, Robertson teaches an aqueous coating composition, which reads on the claimed “paint” (Abstract), which contains a slip aid (Abstract), wherein the slip aid may be inter alia a silicone additive such as a modified polydimethylpolysiloxane (col. 4, lines 16-17), which reads on the claimed “slip additive having a surface energy of less than about 40 mJ/m2” because the instant disclosure contemplates that polydimethylsiloxanes are suitable slip additives (c.f. claim 9). The slip aids are indicated as being included in amounts of 0.1 to 15 wt% (col. 2, line 6), which reads on the claimed “sufficient amount such that slip resistance of a coating formed… is decreased compared to a coating formed from the base paint formulation” because the instant disclosure contemplates that 0.2 to 3.0 % is suitable therefor (c.f. claim 5).
The formulation of Robertson requires the incorporation of up to 60 wt% of a crosslinking agent (col. 2, lines 4-5), which may be a polymer (col. 3, lines 5-6) which is preferably an acrylate-based material (c.f. col. 3, lines 13-15). The composition containing acrylate-based materials therefore read on the claimed limitation requiring that the paint formulation is an “acrylic paint formulation.”
Regarding claim 2, Robertson alternatively states that the crosslinking agent may be a styrene-acrylic copolymer aqueous dispersion (col. 3, lines 25-27). Formulations containing this aqueous dispersion read on the claimed “latex paint formulation” because the instant Specification states i) in latex paint formulations, the latex resin is the binder, ii) in latex paint, the binder may be styrenated acrylic, and iii) the liquid is usually water (c.f. instant Specification at [0034]).
Regarding claims 3-4, as described above, the slip aid may be a modified polydimethylpolysiloxane (col. 4, lines 16-17), which reads on the claimed “silicone-containing slip additive” and the claimed “resin.”
Regarding claims 5-6, as described above, Robertson teaches the incorporation of between 0.1 and 15 wt% of the slip aid(col. 2, line 6), which encompasses and therefore anticipates the claimed ranges of “0.2 to 3.0%” and “0.5 to 2.0%.”
Regarding claim 8, Robertson teaches that the silicone slip aids may be provided as emulsions (col. 3, lines 22-23).
Regarding claim 9, as described above, Robertson teaches that the slip aid may be a modified polydimethylpolysiloxane (col. 4, lines 16-17), which reads on the claimed “polydimethylsiloxane.”
Regarding claim 10, Robertson additionally teaches that mixtures of slip aids may be utilized (col. 3, line 9), and teaches that waxes such as polyethylene waxes and polytetrafluoroethylene may be utilized (col. 3, lines 10 and 18).
Regarding claim 11, Robertson teaches the mixing of the inventive ingredients (col. 5, lines 56-57), which reads on the claimed method. As described above, the formulation of Robertson meets all of the claimed compositional limitations.
Regarding claim 12, as described above, Robertson states that the crosslinking agent may be a styrene-acrylic copolymer aqueous dispersion (col. 3, lines 25-27). Formulations containing this aqueous dispersion read on the claimed “latex paint formulation” because the instant Specification states i) in latex paint formulations, the latex resin is the binder, ii) in latex paint, the binder may be styrenated acrylic, and iii) the liquid is usually water (c.f. instant Specification at [0034]).
Regarding claim 13, as described above, the slip aid may be a modified polydimethylpolysiloxane (col. 4, lines 16-17), which reads on the claimed “silicone-containing slip additive” and the claimed “resin.”
Regarding claims 14-15, as described above, Robertson teaches the incorporation of between 0.1 and 15 wt% of the slip aid(col. 2, line 6), which encompasses and therefore anticipates the claimed ranges of “0.2 to 3.0%” and “0.5 to 2.0%.”
Regarding claim 17, Robertson teaches that the silicone slip aids may be provided as emulsions (col. 3, lines 22-23).
Regarding claim 18, as described above, Robertson teaches that the slip aid may be a modified polydimethylpolysiloxane (col. 4, lines 16-17), which reads on the claimed “polydimethylsiloxane.”
Regarding claim 19, Robertson additionally teaches that mixtures of slip aids may be utilized (col. 3, line 9), and teaches that waxes such as polyethylene waxes and polytetrafluoroethylene may be utilized (col. 3, lines 10 and 18).
Regarding claim 20, Robertson exemplifies the inventive formulation with a mixture of a polyurethane polymer and a crosslinking agent which are both commercially available from Neoresins and Nippon Shokubai Co, Inc., respectively (c.f. col. 7, Table 1.1).
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson (US Patent No. 7,078,102 B2) in view of Shuo (CN 101307210 B, hereinafter referring to the attached ESPACENET translation).
Regarding claims 7 and 16, Robertson teaches all of the limitations of claim 1, as described above. Robertson differs from claims 7 and 16 because it is silent with regard to the specific incorporation of a silicone acrylic hybrid slip agent.
In the same field of endeavor, Shuo teaches an acrylic-based coating composition ([0002]), further a silicone-acrylic emulsion ([0019]) which is suitable for improving the weather resistance of the coating ([0033]). Furthermore, Robertson contemplates the use of it the inventive composition for outdoor applications such as in windshield wiper blades (col. 8, claim 1), and it is prima facie obvious to select a known material based on its art recognized suitability for its intended use (See MPEP 2144.07). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the silicone acrylate of Shuo into the formulation of Robertson for the purpose of improving the weather resistance properties of the inventive coating composition, especially for uses wherein the inventive coating would be exposed to weather conditions, such as in windshield wiper blades.
In so doing, the formulation of Robertson as modified by Shuo would further contain a silicone acrylic hybrid, thereby meeting all of the compositional limitations of claims 7 and 16.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed July 16, 2026, with respect to the rejections of claims under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of Robertson, as described above.
Applicant argues that the formulations of Roberston do not fit the criteria of a “base paint formulation;” however, Robertson teaches that inventive composition is a coating composition (Abstract). Furthermore, as described above, the composition of Robertson meets all of the claimed structural and compositional limitations of the claimed “base paint formulation” including the type of binding polymers involved. Applicant states that Robertson describes an aqueous coating composition containing a slip aid but then immediately states that Robertson “does not disclose the amended limitation requiring a slip additive dispersed in a base paint formulation that is a latex paint formulation or an acrylic paint formulation.”
Applicant argues that the incorporation of acrylate crosslinker in the amounts as described above does not qualify as meeting the definition of a “base paint formulation;” however, the instant Specification simply states that a “base paint formulation” is a complete formulation which can be used to form a coating on a substrate, and specifically states that a commercial product is merely optional ([0029]). No meaningful limitations are imposed upon what compositional materials are required to meet the definition of a “base paint formulation” which is latex or acrylic in nature, and therefore the broadest reasonable interpretation of the claim includes inter alia coating compositions containing acrylate functional materials. Furthermore, the composition of Robertson may include the acrylic crosslinker in amounts up to 60% -- more than half of the entire composition. The compositions of Robertson therefore meet the broadest reasonable interpretation of the claims as drafted. While Robertson’s composition does include a polyurethane polymer as contended by the applicant, there are no limitations in the claims which preclude the incorporation of such a material therein.
Applicant argues that the crosslinkers of Robertson do not constitute base paint formulations; however, the overall composition of Robertson is utilized in the rejections above to read on the claimed “base paint formulation” components, not merely one subcomponent thereof.
Applicant argues that Robertson does not disclose the claimed functional relationship between the slip aid and the slip resistance of the coating. However, it is not required that Robertson explicitly contemplate this particular relationship. The composition of Robertson contains a slip aid meeting the claimed surface energy requirements in amounts overlapping the amounts which are claimed to meet this limitation (c.f. claim 5). Finally, as described above, a prima facie case of obviousness exists where the claimed composition and prior art composition are structurally identical, because products of identical chemical compositions cannot have mutually exclusive properties. Therefore, the composition of Robertson meets the claimed “sufficient amount” limitation.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
