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 § 101
Claims 49-50 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility.
In this case, claims 49-50 are ostensible method steps that fail to recite any process steps.
Claims 49-50 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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.
Claim 47 is rejected under 35 U.S.C. 112(b) 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.
Regarding claim 47, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 26-27, 29-36, and 45-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bochnik (US 20070154646 A1). ChemNet (Momentive Silquest Wetlink 78, attached) is cited as an evidentiary reference.
Regarding claims 26-27, 29-32, and 49, Bochnik teaches a method of mixing a polymer latex with an epoxysilane crosslinking agent during or after polymerization of the latex polymer particles (p. 7, [0061]). Bochnik also teaches a latex obtainable by the method (p. 1, [0009]). Bochnik does not limit what epoxysilanes may be used, but does recommend Silquest Wetlink epoxysilanes as suitable. Specifically, Bochnik teaches Silquest Wetlink 78 in the inventive examples (p. 7, [0063]; p. 9, [0071]). ChemNet clarifies that Silquest Wetlink 78 is (3-glycidoxypropyl)methyldiethoxysilane, which reads on the claimed epoxysilanes where R is C2 alkyl, n is 2, R1 is C1 alkylene, R2 is C3 alkyl, and X is a radical having 3 carbon atoms and an oxirane ring (p. 1).
The epoxy silane may be added when the latex temperature is in the range from about 30℃ to about 80℃ , which overlaps the claimed range with sufficient specificity to anticipate the claimed range of at least 60 ℃ (p. 7, [0061]). See MPEP 2131. This teaching is further reinforced in Bochnik’s Example 1, which illustrates a process in which an acrylic latex paint including about 5 wt% of acid functional monomers is mixed with Silquest Wetlink 78 under the conditions taught by Bochnik (p. 7, Ex. 1).
Regarding claims 33-36, Bochnik remains as applied to claim 26 above. Starting with instant claims 34-36, Bochnik's polymer may be polymerized from crosslinkable monomers and non-crosslinkable monomers (p. 4, [0037]). The crosslinkable monomers may include carboxylic acid-functional monomers such as acrylic acid and alkacrylic acids (e.g., methacrylic acid) in amounts of 0.1-35 wt% of the total monomer content, as well as non-crosslinking monomers including C1-C8 alkyl acrylates, styrene, alkylstyrenes, etc. (p. 4, [0040]-[0041]; p. 3, [0032]). Crosslinkable monomer content of 0.1-35 wt% leaves 65-99.9 wt% non-crosslinking monomers. Further regarding claim 36, Bochnik does not list the solubility and polarity characteristics of the monomers. Nevertheless, the composition of Bochnik contains the same monomers in overlapping amounts, and these monomers will necessarily possess the same solubility and polarity characteristics as the claimed monomers. Products of identical chemical composition cannot possess mutually exclusive properties. See MPEP 2112. Turning to instant claim 33, Bochnik further teaches that the crosslinking agent may be present in amounts ranging from 0.01-5 wt% (p. 2, [0021]). Methacrylic acid is a monoethylenically unsaturated monocarboxylic acid and Silquest Wetlink 78 has one epoxy functionality. Considering the content of methacrylic acid will be 0.1-35 wt%, the oxirane of the epoxysilane and the carboxyl group of the polymer will therefore be present in ratios ranging from 5:35 to 0.01:0.1, or 1:7 to 1:10, relative to the total monomer content.
Regarding claims 45-47, Bochnik remains as applied to claim 26 above. Bochnik further teaches that a further crosslinking step may take place (claim 39). Specifically, Bochnik teaches a composition having a polymer latex that can be further crosslinked with adipic acid dihydrazide (p. 7, Table 1).
Regarding claims 48 and 50, Bochnik remains as applied to claim 26 above. Bochnik also teaches a latex obtainable by the method (p. 1, [0009]). Bochnik does not specify the PVC value of a varnish made of the latex. Nevertheless, Bochnik's latex contains the same ingredients in the same amounts as the composition of claim 50, and will necessarily possess the same PVC characteristics. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
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.
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.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Bochnik as applied to claim 26 above, and further in view of Jana (US 2020/0283908 A1).
Regarding claim 28, Bochnik remains as applied to claim 26 above. However, Bochnik is silent as to use of epoxysilanes having three alkoxy groups. In the same field of endeavor, Jana teaches that 3-glycidoxypropyltriethoxysilane is suitable for use in industrial coatings (p. 2, [0019]). 3-glycidoxypropyltriethoxysilane reads on the claimed epoxysilanes where R is C2 alkyl, n is 0, R2 is C3 alkyl, and X is a radical having 3 carbon atoms and an oxirane ring. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the epoxysilane of Jana for use in the composition of Bochnik to arrive at the claimed invention, and to expand the industrial applicability of Bochnik’s composition to include coatings suitable for metal substrates, as taught by Jana (p. 1, [0005], [0007]).
Claims 37-41 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Bochnik in view of Freidzon (WO 2008028062 A2, attached).
Regarding claims 37-39, Bochnik remains as applied to claim 26 above. Bochnik is silent as to the acid content of the latex particles' shell. In the same field of endeavor, Freidzon teaches latex particles having a higher concentration of monoethylenically unsaturated carboxylic acid monomers (M1) in the shell than in the core, which reads on the instant specification's definition of "acid-rich shell" (instant specification, p. 22; Freidzon p. 25-26 and 28-29, Ex. 2 and 4). Specifically, Ex. 2 teaches 0.8% methacrylic acid in the core and 2.2% methacrylic acid in the shell, resulting in a difference of 1.4% and a total methacrylic acid content of 3% in the total polymer particle (p. 25-26, Ex. 2). Ex. 4 teaches 2.1% methacrylic acid in the core and 2.9% methacrylic acid in the shell, for a difference of 0.8% and a total methacrylic acid content of 5% in the total polymer particle (p. 28-29, Ex. 4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Bochnik and the acid content of Freidzon to arrive at the claimed invention, and to yield polymer that gives rise to paints with improved open time and other properties, as taught by Freidzon (p. 5, [0016]).
Regarding claims 40-41 and 44, Bochnik in view of Freidzon remains as applied to claim 37 above. Bochnik is silent as to the polymerization process that may be used. In the same field of endeavor, Freidzon teaches a multistage emulsion polymerization process having three stages (p. 5, [0020]). The process includes a first polymerization stage involving methacrylic acid and methacrylate monomers, followed by a second stage including acrylate and methacrylate monomers in the presence of the first stage's product (p. 24-25, Ex. 1). Freidzon further recommends selecting a first monomer (core) having a Tg in the range of 30-70℃ and a second monomer (shell) having a Tg in the range of -10 to +10℃(p. 4, [0017]). These ranges permit a difference of 20-80℃. These prior art ranges overlap the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the monomers of Freidzon for use in the composition of Bochnik to arrive at the claimed invention, and to achieve polymers suitable for paints with good block resistance and other properties, as taught by Freidzon (p. 4, [0016]).
Claims 42-43 are rejected under 35 U.S.C. 103 as being unpatentable over Bochnik in view of Freidzon, and further in view of Bony (US 20240218602 A1).
Regarding claim 42, Bochnik in view of Freidzon remains as applied to claim 41 above. Bochnik and Freidzon are silent as to use of a chain transfer agent. In the same field of endeavor, Bony teaches combining iso-octyl 3-mercaptopropionate, a chain transfer agent, with a free radical initiator during emulsion polymerization (p. 6, [0104]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the method of Bochnik in view of Freidzon with the chain transfer agent of Bony to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Regarding claim 43, Bochnik in view of Freidzon and Bony remains as applied to claim 42 above. Bochnik further teaches that the composition may be deactivated (neutralized) by ammonia (p. 3, [0027]). Bochnik does not limit the addition of ammonia to any particular stage of the method. Selection of any order of mixing ingredients is prima facie obvious. See MPEP 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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