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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 8/10/2026.
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 8/10/2026. In particular, claims 1, 51, 58, and 63 have been amended to limit the additive to one comprising a plasticizer or a coalescing agent or a film forming component having MFFT of 8-12°C. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 extends the scope of the additive but not necessarily including at least a coalescing agent or plasticizer because the coalescing agent and plasticizer are listed as alternatives to a plurality of other additives. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-58 and 60-63 are rejected under 35 U.S.C. 103 as being unpatentable over Craun (US 7,049,357).
With respect to claims 1, 47, 49, 50, and 60-62, Craun discloses a protective coating composition that is substantially free of VOC comprising a film forming polymeric binder comprising an aqueous emulsion polymeric film forming matrix polymer of copolymerized ethylenically unsaturated monomers and at least 3 wt % of poly(hydroxy alkanoic acid) (col. 13, lines 29-46). The poly(hydroxy alkanoic acid) acid serve as both a softening agent (i.e., a plasticizer) and a non-volatile coalescent (col. 2, lines 55-67) and, in part, reads on both the claimed film forming component and additive. Craun also teaches that low amount of a coalescing solvent along with the poly(hydroxy alkanoic acid) (col. 9, lines 45-53). The coating composition is applied at room temperature (col. 2, lines 26-30) and therefore has a film forming component having glass transition temperature of less than 25°C. The protective coating composition of Craun reads on preamble “to protect a substrate from at least one unwanted contaminant” because by coating a substrate it is capable of protecting it from any contaminant. It is noted that case law holds that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Craun teaches a substantially VOC free coating composition but fails to disclose a VOC of 300 g/L or less.
Even so, because Craun teaches that essentially a zero amount of VOC is permitted, it would have been obvious to one of ordinary skill in the art to utilize a low amount that overlap the claimed range of 300 g/L or less.
With respect to claim 2, because Craun teaches that the composition is applied at room temperature, it is deformable. Because Craun does not disclose a conductive composition, the composition is electrically insulating.
With respect to claims 3, 4, and 20, in the inventive gloss paint formulation (col. 11, lines 45-60) includes total 98.065 weight parts. Included are 3.1 wt % thickener (rheology modifier), 0.07 wt % mildewcide (i.e., biocide), 0.79 wt % defoamer, 1.3 wt % surfactant, 22.6 wt % titanium dioxide pigment, and 4.4 wt % adhesion promoting latex. In the inventive formulations, the amount of coalescent is replaced with the polyhydroxyalkanoic acid.
With respect to claims 5-19 and 21-35, these claims which further limit fillers, plasticizers, initiators, defoamers, surfactants, hydrophobing agents, biocides, rheology modifier leveling agents, wetting agents, dyes, crosslinking agents, dispersing agent, adhesion promoters, coalescing agents, UV absorber or stabilizers, anti-corrosion agents, antioxidants, passivators, or tackifiers and do not exclude the alternative embodiment of pigments. Since the latter embodiment is disclosed by Craun as discussed above, it is proper to include these claims in this rejection.
With respect to claim 36, Craun fails to disclose the thickness of the conformal film coating, however, this claim limitation is functional language and the composition taught by Craun need only be capable of forming a conformal film having a thickness of 25 nm to 500 µm. Given the breadth of this range and further given that Craun teaches that the coating composition is used to prepare a film, it would have been obvious to one of ordinary skill in the art expect that Craun’s composition is capable of forming a coating film having claimed thickness.
With respect to claim 37, Craun discloses that the coating composition is prepared from a film-forming polymeric binder comprising both the poly(hydroxy alkanoic acid) and an aqueous emulsion polymeric film forming matrix polymer (col. 13, lines 29-46).
With respect to claims 38 and 39, in the exemplified semi gloss paint comprises a vinyl acrylic latex having 56 wt % solids (col. 11, line 60), i.e., an aqueous dispersion comprising 61.3 wt % water.
With respect to claims 40, Craun teaches that the composition is an essentially zero VOC coating (col. 9, lines 45-46). Therefore, it would be expected that the water-based carrier does not include volatile organic solvents.
With respect to claim 41, Craun discloses that the coating composition is prepared from a film-forming polymeric binder comprising both the poly(hydroxy alkanoic acid) and an aqueous emulsion polymeric film forming matrix polymer (col. 13, lines 29-46). Therefore, the claimed “first resin” can be either the poly(hydroxy alkanoic acid) or the aqueous emulsion polymeric film forming matrix polymer. The exemplified semi gloss paint comprises a vinyl acrylic latex (col. 11, line 60).
With respect to claims 42-45, in the semi-gloss formulation, a vinyl acrylic latex is added (col. 11, line 60). Craun teaches that the vinyl acrylic latex has a moderately elevated Tg above ambient dry temperatures (col. 1, lines 38-53). Therefore, the exemplified acrylic latex inherently has a higher Tg than the poly(hydroxy alkanoic acid). Vinyl acetate copolymers are inherently self-crosslinking.
With respect to claim 46, the plasticizer is optional because the amount up to 40 wt % includes 0 wt %. Also, Craun teaches that the poly(hydroxy alkanoic acid) serves as a softening agent.
With respect to claim 48, when no volatile coalescing agent is used, the VOC of the composition is 0 wt %.
With respect to claims 51-54 and 57, Craun exemplifies polymerizing lactic acid to form the poly(hydroxy alkanoic acid) (col. 10, lines 58-67), i.e., condensation polymerization with water by-product.
With respect to claim 55, an aqueous emulsion polymeric film forming matrix polymer of copolymerized ethylenically unsaturated monomers is polymerized in water (col. 8, lines 61-67).
With respect to claim 56, the poly(hydroxy alkanoic acid) is added directly to the water carrier comprising the film forming matrix polymer (col. 7, line 65 to col. 8, line 2).
With respect to claims 58 and 63, a coating composition is inherently applied to a substrate to form the coating.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Craun (US 7,049,357) and further in view of Bell (US 7,531,221).
The discussion with respect to Craun in paragraph 5 above is incorporated here by reference.
With respect to claim 59, while Craun teaches applying their aqueous acrylic compositions to a substrate at room temperature, it fails to disclose a specific method of applying the composition to the substrate.
Bell discloses a finish protector comprising an aqueous composition (abstract) that is applied at room temperature (col. 2, lines 9-15) and teaches that such compositions are applied by known techniques to those skilled in the art such as brushing and spraying (col. 4, lines 7-11).
Given that Craun discloses aqueous acrylic coating composition and further given that Bell teaches similar compositions that are conventionally applied by brushing to spraying, it would have been obvious to one of ordinary skill in the art to brush or spray the coating compositions taught by Craun onto a substrate like claimed.
Response to Arguments
Applicant's arguments filed 8/10/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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