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 .
Response to Arguments
In their response dated 7/22/2026 the applicants amended claim 14 to include limitation of claim 15 to overcome teachings of Parkinson. The applicants also amended claim 14 to exclude silane monomer to overcome teachings of Tissier. With respect to new claim 24, the applicants recited narrower PVC range which is outside of the range of Tissier. The applicants further requested for Double Patenting rejection to be held until application is in condition for allowance.
In view of applicants’ amendment, anticipation rejection of claims 14-23 over Tissier is withdrawn.
The obviousness rejection over Parkinson is maintained. While applicants amended the claim to recite the content of surfactant to be at least 1%, the use of methacrylamide and surfactant is in alternative form. One or the other but not necessarily both. Consequently, the presence of the surfactant is not required. Claim 15 was not rejected over the because of the amount of surfactant. Although one could argue that the ionomer, which is used as a binder when utilized in combination with another binder (example 5) would serve as a surfactant due to presence of the ionic groups. Surfactant was required in the original claim 15. Content of binder to silicate was addressed in the rejection and it is a limitation that is clearly taught by Parkinson. Consequently, the rejection over Parkinson will be restated.
Double patenting rejections are maintained.
Updated search resulted in new references that will be applied, that do not contain silicone compound as comonomer.
Applicants further presented arguments on the patentability of claim 24 summarizing stability properties in Table B. Applicants’ arguments are not persuasive. The examples utilized to show why instant invention is patentable are not commensurate with the scope of the claims. Specifically in claim 14 as amended on 7/22/2026 the composition comprises any pigment, any filler, any additive in any amount. The polymeric binder can be any binder in any amount and as amended it does not require use of methacrylamide. The two requirements are the ratio of emulsified binder to water soluble silicate of 65:35 to 95:5 and the PVC in a range of 5-60%. Instant specification provides no factual data or information which would show that all generically listed components as claimed will still result in the same stability properties as the specific composition of the instant invention. By specific composition, please see Table 3 of the instant specification for actual components and their amounts utilized in examples 3, 5 and 6. Comparative results are inconclusive for following reasons:
Applicants change the content of water and latex in the comparative examples whereas the unexpected results discuss viscosity modifiers which are not claimed and importance of having acrylamide.
Latex 4 in inventive example 6 does not contain acrylamide and its initial stability is better than that of inventive example 5 which does contain acrylamide. The difference in stability after 4 weeks of heat aging does not show pronounced improvement, as such it is not clear how the acrylamide provides unexpected results for inventive examples 3, 5 and 6.
It should also be noted that applicants claim (meth)acrylamide and while it is the same family of monomers, they do have one structural difference which is a presence of the methyl group. So, either the lates 1-4 disclosed is not commensurate with scope of the claims or applicants utilize the two compounds interchangeably. This has to be clarified.
With respect to Tissier and its applicability to claim 24, the ratio of binder to silicate using disclosed range was calculated ranges taught by the reference. While PVC of the composition of Tissier is at least 60
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 § 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 14, 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Killilea (US 2011/0151265).
With respect to claim 14, Killilea discloses coating composition for cementitious substrates. The composition can be utilized to make different layers on the same substrate. If the composition is utilized as a primer, the PVC is at least 40% [0027, 0035]. If the composition is utilized as a the top coat, the PVC is less than 50%, preferably less than 35% [0070].
The base composition comprises a polymer latex, silane (not as comonomer) and a water-soluble acid (claim 1). Silane is utilized in its capacity as coupling agent [0054].
Latex is defined as a polymer particulate formed in presence of water and dispersing or emulsifying agents such as surfactants or alkali soluble polymer. Killilea clearly states that at least one of the two is required to form an emulsion [0021]. The content of such additive is 7% or more if alkali soluble polymer is utilized as surfactant [0044]. Surfactant is utilized in an amount of less than 5 wt.% which reads on at claimed amount of “at least 1 wt.% [0064]. Exemplary content of surfactant (Table 10) is 3 wt.%. Dispersant 7 wt.%, wherein the two compounds are utilized to obtain the same function.
Latex polymers are preferably prepared from ethylenically unsaturated monomers such as acrylates, which include acrylamides and methacrylamides [0037].
Water soluble acid of Killilea are defined as salts of silicic acid which are water soluble silicates [0060]. These compounds are utilized in an amount of at least 5wt.% most preferably at least 50wt.% [0057]. Exemplary ratio of emulsified binder to water soluble silicate can be calculated from component listed in Table 9 where latex content is 645 and potassium silicate content is 215 approximately 70:30 (all content reported by wt. %).
Other components of the composition include pigments [0065, 0084], fillers and other additives [0066].
With respect to claim 17, as it was disclosed in the rejection of claim 14 the content of surfactant encompasses the claimed amount based in the solids content in a range of 10 wt.% to less than 100 wt.% [0047].
With respect to claim 18, the water-soluble salt includes: sodium silicate, potassium silicate, lithium silicate, magnesium silicate and ammonium silicate [0060].
With respect to claim 19, pigments include titania, carbon black iron oxide and the like [0065]. By the way of examples, titania is preferred.
With respect to claim 20, filler of Killilea includes clays, calcium carbonate, talc, mica and the like [0066].
With respect to claim 21, other monomers of Killilea are ethylenically unsaturated and include alkyl (meth)acrylates, styrene and vinyl compounds such as vinyl acetate or allyl methacrylate [0037].
With respect to claim 22, the composition of Killilea can include up to 5 wt.% of acrylic acids which is a crosslinkable compound [0037].
With respect to claim 23, the composition of Killilea includes organic dyes [0065].
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Killilea (US 2011/0151265).
With respect to claim 24, Killilea discloses coating composition for cementitious substrates. The composition can be utilized to make different layers on the same substrate. If the composition is utilized as a primer, the PVC is at least 40% [0027, 0035]. If the composition is utilized as a the top coat, the PVC is less than 50%, preferably less than 35% [0070].
The base composition comprises a polymer latex, silane (not as comonomer) and a water-soluble acid (claim 1). Silane is utilized in its capacity as coupling agent [0054].
Latex is defined as a polymer particulate formed in presence of water and dispersing or emulsifying agents such as surfactants or alkali soluble polymer. Killilea clearly states that at least one of the two is required to form an emulsion [0021]. The content of such additive is 7% or more if alkali soluble polymer is utilized as surfactant [0044]. Surfactant is utilized in an amount of less than 5 wt.% which reads on at claimed amount of “at least 1 wt.% [0064]. Exemplary content of surfactant (Table 10) is 3 wt.%. Dispersant 7 wt.%, wherein the two compounds are utilized to obtain the same function.
Latex polymers are preferably prepared from ethylenically unsaturated monomers such as acrylates, which include acrylamides and methacrylamides [0037].
Water soluble acid of Killilea are defined as salts of silicic acid which are water soluble silicates [0060]. These compounds are utilized in an amount of at least 5wt.% most preferably at least 50wt.% [0057]. Exemplary ratio of emulsified binder to water soluble silicate can be calculated from component listed in Table 9 where latex content is 645 and potassium silicate content is 215 approximately 70:30 (all content reported by wt. %).
Other components of the composition include pigments [0065, 0084], fillers and other additives [0066].
Claim 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Killilea (US 2011/0151265) in view of Tissier (WO 2015/193192).
Discussion of Killilea from paragraph 1 of this office action is incorporated here by reference. While Killilea discloses use of acryl amides as a copolymer the content of the acrylamides is not explicitly recited.
Tissier teaches another coating composition used in painting buildings which comprises emulsified polymer and water-soluble silicate along with surfactant, pigment and a filler. Tissier also states that latex polymer is formed by polymerization of ethylenically unsaturated monomers wherein at least one monomer has to be based on acrylamides or methacrylamides as monomer c. According to claim 1 of Tissier, the content of monomer c is 0.1-5 wt.% which is within claimed range of 0.1-10 wt.%. By the way of the examples, this content is based on dry basis.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize acrylamides of Killilea in small amounts as it is shown in Tissier. One of ordinary skill in the art would readily understand that acrylamide is a highly polar and hydrophilic monomer. The content has to be controlled as it will affect the solubility of the polymer in water. Acrylamide derivatives such as diacetone acrylamide, which is also disclosed in Killilea is added to introduce crosslinkable sites which in turn improves many properties of the coating composition. These properties include film durability, mechanical strength, moisture resistance, abrasion. It should also be worth noting that use of acrylamides in polymers is regulated by agencies such as EPA, FDA and OSHA.
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.
As it was indicated in the response to applicants’ arguments, Parkinson is still available as a prior art since the biner comprises acrylamide compound or surfactant. Consequently, only one of the two limitations has to be met.
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 14-24 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 and 24, 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 and 24.
Lastly the remaining ingredients are pigment, filler, additive and water. These are the same ingredients as those of instant claims 14, 19, 20 and 24. Generic term additive includes surfactant of instant claim 17 and dyes of instant claim 23 and 24.
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 and 24.
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 and 24.
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 14-24 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, 20 and 224.
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 and 24.
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 and 24.
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 and 24.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 13, 2026
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