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 .
Election/Restrictions
Restriction requirement was issued on 10/27/2025, wherein three groups included a method of coating a substrate, coated substrate and coating composition. The examiner acknowledges applicant’s election without traverse group III directed to a One part aqueous composition, claims 14-23. Claims 1-13 are withdrawn from examination. The examiner further confirms that if composition claims are found allowable, the restricted claims may be rejoined as long as all allowable subject matter is included in withdrawn claims.
Claim Interpretation
Instant claim 14 recites: “at least one emulsified binder comprising at least one of: a) (meth)acrylamide or derivative thereof as polymerized monomer; or b) at least one surfactant”
This limitation is interpreted that polymeric binder is already polymerized. Additionally for purpose of claim 1 (meth)acrylamide is not required because the claim recited either acrylamide or surfactant. Additionally, instant specification.
With respect to (meth)acrylamide the term derivative is viewed as including acrylamide, any alkyl(meth)acrylamide or alkyl acrylamide, which interpretation is in line with applicant’s definition on pages 6, 8, 9, 11 and examples (latex synthesis) of the instant invention. Additionally, applicants seem to be using “acrylamide” and “(meth)acrylamide” interchangeably.
The examiner requests clarification with respect to acrylamides. Applicants discloses acrylamides that can be utilized as monomers polymerization and as diacetone acryl amide which is a crosslinker. The examiner would like to inquire if applicants use acrylamide as monomer, crosslinker or both.
With respect to the formula used to calculate PVC as claimed in claim 1, this calculation is performed has different names associated such as PVK. Either one will read on the instant claims.
With respect to emulsified polymer, the claim is read as requiring emulsion polymerized polymer that is incorporated into coating composition, the composition itself does not require to an emulsion. Dispersion and suspension are also encompassed by term “aqueous coating”
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.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 14-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tissier (WO 2015/193192).
Tissier discloses composition suitable for coatings, where the organic binder is emulsion polymerized. The composition is suitable as a paint for particularly suitable paints and coatings with good adhesion to internal buildings surfaces.
With respect to claim 14, 21 and 22, claim 1 of Tissier discloses composition comprising an emulsion polymerized organic binder comprising mixture of monomers a through d.
Monomers selected from group a) and b) are based on acrylates as depicted in claims 1-5 wherein preferred monomer b) is styrene. Styrene monomer meets the limitation of vinyl aromatic of instant claim 21.
The component c) comprises 0.1-5 parts of monomer containing stabilizing group. Component c) is defined as acrylamide, methacrylamide, diacetone acrylamide and the like (see 1st paragraph on pate 5 of the translation) as particularly preferred monomers.
The component d) 0.05-5 parts of copolymerizable monomers comprising one or more hydrolysable silane monomers (See also page 5 of the translation). Monomer d meets limitation of instant claim 22.
Emulsifiers utilized in the polymerization are disclosed on the bottom of page 5 of the translation.
Emulsion polymerized acrylates as described above are utilized in an aqueous coating composition comprising (see claim 9 of Tissier) by weight:
d) 0.1-50% of emulsion polymerized polymer,
e) 2-15% of inorganic pigment,
f) 20-70% of inorganic fillers,
g) 0.1-10% of common aids,
h) 0.01-5% of strong alkali agent to adjust the pH to at least 10, and
i) water.
The strong alkali agent as defined in claims 12 and 13 of Tissier is water soluble silicate. More specifically potassium silicate (also see color formulation B).
The composition of Tissier has pigment volume concentration of at least 60 (page 3 1st paragraph). The concentration is a ratio where the sum of the volume of filler (VF) and pigment (VP) is divided by sum of VP+VF+VB, wherein VB is volume of the binder. The alkali silicate is considered a binder along with emulsion polymerized biner. The calculation is made of dry basis.
With respect to claim 15, acrylamide or methacrylamide is utilized in 0.1-5 parts based on the content of all monomers in the polymerization (see claim 1 as addressed above).
Surfactants is a nonionic surfactant as depicted on the bottom of page 5) utilized in amount of 1-8% by weight. customary to emulsion polymerization are utilized in 1-8 wt.% as preferred amount (top of page 5).
The content of emulsion polymerized binder is 0.01-50 wt. % more preferably 10-20wt% (claim 11) and the content of water soluble silicate is 0.01-5 wt.%. As such the ratio of binder to silicate can be calculated (using end points) includes 90:10.
With respect to claim 16, the acrylamide is utilized in 0.1-5 parts as defined in claim 1 of Tissier, as such even if not all acrylamide polymerizes, the content would still be within a claimed range of 0.01-10%.
With respect to claim 17, as disclosed above content of surfactant is 1-8% (see bottom of page 5).
With respect to claim 18, as it was disclosed above, the water soluble silicate is potassium silicate (see claims and color formulation B). In his specification Tissier also lists lithium silicate, and in general manner an alkaline-silicate, which has to be water soluble (see paragraph 3, page 8). With respect to claim 19, preferred pigment is titanium dioxide (tradename Kronos 2300) as exemplified in color formulation B (Page 11). With respect to claim 20, color formulation B of Tissier further includes calcium carbonate (TM: Omycarb), Talc (TM Finntalc). On top of page 8 of the translation Tissier further discloses silicates such as kaolin which is a clay, mica and the like. Preferred combination is that of calcium carbonate with either kaolin or talc. Surfactants which promote dispersion of the components of the composition include Betolin Q40 and KW-n, thickener is Tylose MH 4000. With respect to claim 23, Tissier further defines coloring agent as not only an inorganic pigment but also dyes, which include indigo, azo dyes and the like (last paragraph of page 7).
The coating composition is utilized to paint interior surfaces of the buildings.
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.
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 14, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Parkinson (US 3,908,066) in view of evidence in Junk (US 20170137662).
With respect to claim 14, Parkinson discloses flexible coating composition comprising emulsion polymerizable monomers and aluminum silicate.
The polymer is emulsion polymerized stabilized by surfactants. Monomers are ethylenically unsaturated and include monomer such as ethylene, vinyl acetate and acrylate (col. 3, l. 28-45). Parkinson teaches utilizing monomer such as diacetone acrylamide as polymer forming material that is suitable to crosslinking the composition.
While Parkinson does not specifically state that the acrylamide is utilized in an emulsion with the binder, one of ordinary skill in the art would have to readily understand the necessity of doing so. Most of all is because diacetone acrylamide if added to the paint dispersion would along with emulsified binder will react quickly resulting in premature crosslinking under ambient conditions. At the same time emulsified binder such as acrylic provides dispersed phase that along with acrylamide forms a composite network within silicate binder.
Second component of Parkinson is ammonium silicate, which is soluble in water but also volatile where the ammonium cation can be driven off with heating at moderate temperatures living silica network (col. 2, l. 23-27).
Other components of the composition of Parkinson include fillers such as clays, talc or mica; pigments such as titania; and surfactants ( col. 3, l. 51 to col. 4. l. 6).
With respect to PVC value, while Parkinson does not explicitly disclose the pigment value concentration, such has to be necessarily present due to presence of silicate network of the dried film. Specifically, in Parkinson, content of the filler and pigment (both contribute to affecting the overall color is higher than that of emulsion polymerized binder. Utilizing examples as a guide, clay is utilized in amount of 110 parts, ammonium silicate is utilized in amount of 267 (example 6) the binder is usually utilized in amount of 160 parts) content of titania was not disclosed. According to claimed formula, with clay alone, the PVC is 110/427 = 0.25, then multiplying by 100 will be at least 25%.
Since instant claim 14 does not specify any specific PVC value or range, the composition has to only have a content. As such Parkinson meets the limitations of claim 14.
With respect to claim 18, Parkinson teaches ammonium silicate (Abstract).
With respect to claim 19, Parkinson teaches use of titania (col. 4, l. 3).
With respect to claim 20, example 6 of Parkinson teaches use of clay, Talc is enabled in col. 3, l. 55).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 14-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of co-pending Application No. 18/290320(‘320). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘320 discloses one part composition comprising following:
5-50 wt.% of binder which comprises methacrylamide as monomer which meets the binder of the instant invention. The binder of the instant invention is opened to any amount. The amount of the binder in the instant invention is also depicted in instant claims 15-16, which further meet the limitation of PVC.
1-55 wt.% of water-soluble silicate and 0.01-10 at least one alkyl siliconate, both of which are soluble in water. While instant claim 14 teaches at least one water-soluble silicate, per MPEP 804, instant specification can be utilized as a dictionary to learn the meaning of water-soluble silicate. Instant invention discloses alkali silicate in great detail, while mentioning that combination of both can be utilized on page 3 of the instant specification. Amounts of silicates in instant invention are open to include amounts in the co-pending application ‘320. The content of alkali silicate meets the content of silicate of instant claim 15.
Lastly the remaining ingredients are pigment, filler, additive and water. These are the same ingredients as those of instant claims 14, 19 and 20. Generic term additive includes surfactant of instant claim 17 and dyes of instant claim 23
Claim 2 of ‘320 discloses one part composition having narrower range as that of its claim 1 which also encompasses instant claims 14, 19 and 20.
With respect to particle size of the emulsified polymer in both claims 1 and 2 of ’320, while instant invention does not place limits on the binder particle size, per MPEP 804 specification can be consulted to learn the meaning of emulsified polymer, where emulsifier and content of surfactant dictate particle size. Instant specification on page 10 discloses that particle size of emulsified polymeric binder is in a range of 50-500 nm.
Claim 3 of ‘320 requires no more than 0.5 wt.% of amine stabilizers to be added to the composition. Instant invention does not claim amine stabilizer; therefore the content of these stabilizers is viewed as 0.
Claim 4 of ‘320 discloses content of water-soluble silicates which is also within the same range as the content based on ratio of instant claim 15. Claim discloses water-soluble silicates which are also listed in instant claim 18.
Claims 11-14 of ‘320 discloses content of alkyl acrylate and acrylamide, which fall within the same range as claims 16 of the instant invention which includes use of vinyl aromatic which meets instant claim 21.
Claims 15-16 of ‘320 disclose use of at least one crosslinkable monomer or functionalized monomer, wherein functionalized monomer encompasses monomers of instant claim 22.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3 of ‘324 discloses that the pigment is utilized in amount of 5-40 wt.%. While instant invention is open to any content of the pigment, the content has to be within the same range in order to obtain claimed PVC as disclosed in instant claim 15.
Claim 14-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of copending Application No. 18/290324 (‘324) Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘324 discloses following:
5-50 wt.% of binder which meets the binder of the instant invention. The binder of the instant invention is opened to any amount. The amount of the binder in the instant invention is also depicted in instant claims 15-16, which further meet the limitation of PVC.
2-10 wt.% of water-soluble silicate and 0.01-5 at least one alkyl siliconate, both of which are soluble in water. While instant claim 14 teaches at least one water-soluble silicate, per MPEP 804, instant specification can be utilized as a dictionary to learn the meaning of water-soluble silicate. Instant invention discloses alkali silicate in great detail, while mentioning that combination of both can be utilized on page 3 of the instant specification. Amounts of silicates in instant invention are open to include amounts in the co-pending application ‘324.
Lastly the remaining ingredients are pigment, filler, additive and water. These are the same ingredients as those of instant claims 14, 19 and 20.
Claim 2 of ‘324 states that the composition is one-part composition which is also disclosed in all instant claims.
Claim 3 of ‘324 discloses that the pigment is utilized in amount of 5-40 wt.%. While instant invention is open to any content of the pigment, the content has to be within the same range in order to obtain claimed PVC as disclosed in instant claim 15.
Claim 4 of ‘324 discloses content of water-soluble silicates which is also within the same range as the content based on ratio of instant claim 15.
Claim 5 of ‘324 discloses water-soluble silicates which are also listed in instant claim 18.
Claims 11-13 of ‘324 discloses content of alkyl acrylate and acrylamide, which fall within the same range as claim 16 of the instant invention.
Claim 14 of ‘324 discloses use of vinyl aromatic which meets instant claim 21.
Claim 17 of ‘324 discloses additional monomers having functional groups that encompass additional monomers of instant claim 22.
Claim 18 of ‘324 discloses use of additive which encompasses surfactant of instant claim 17 and a dye of instant claim 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 20, 2025