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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/330,464, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, US prov ‘464 does not disclose a Tg range of film forming component of claimed less than 25°C. Rather, US ‘464 only teaches range of -60 to 25°C (paragraph 021). Also, US ‘464 discloses that the composition “contains no volatile organic content” (paragraph 008) which does not support the claimed “low VOC composition.” Lastly, the specifics of the presently claimed additives are not disclosed by US ‘464 which improperly incorporates by reference a PCT application (paragraph 026). Only US patent publications are permitted to be relied upon to incorporate by reference. See 37 CFR 1.57(d).
Therefore, the effective filing is the actual filing date, 4/13/2023.
Claim Objections
Claims 1, 2, 5-35, 46, 49, 50, 52, 59, and 61-63 are objected to because of the following reasons:
With respect to claims 1, 51, 58, and 63, it is not immediately clear that the glass transition temperature is that of resin and that of the conformal film or film forming component.
With respect to claims 2, 5-26, 31-35, 49, 50, 61, and 62, the combination of “comprise(s)” and “and” suggests the presence of all components listed in what appears to be an alternative expression.
With respect to claim 10, the term “the initiator” is inconsistent with previous recitation (from claim 3) “initiators” and should read as “the initiators.”
With respect to claim 11, the term “the defoamer” is inconsistent with previous recitation (from claim 3) “defoamers” and should read as “the defoamers.”
With respect to claim 12, the term “the surfactant” is inconsistent with previous recitation (from claim 3) “surfactants” and should read as “the surfactants.”
With respect to claim 13, the term “the hydrophobing agent” is inconsistent with previous recitation (from claim 3) “hydrophobing agents” and should read as “the hydrophobing agents.”
With respect to claim 14, the term “the biocide agent” is inconsistent with previous recitation (from claim 3) “biocides” and should read as “the biocides.”
With respect to claims 15 and 32, the term “the rheology modifier” is inconsistent with previous recitation (from claim 3) “rheology modifiers” and should read as “rheology modifiers.”
With respect to claim 17, the term “the wetting agent” is inconsistent with previous recitation (from claim 3) “wetting agents” and should read as “the wetting agents.”
With respect to claim 19, the term “the crosslinking agent” is inconsistent with previous recitation (from claim 3) “crosslinking agents” and should read as “the crosslinking agents.”
With respect to claim 20, the term “the pigment” is inconsistent with previous recitation (from claim 3) “pigments” and should read as “the pigments.”
With respect to claim 21, the term “the dispersing agent” is inconsistent with previous recitation (from claim 3) “dispersing agents” and should read as “the dispersing agents.”
With respect to claims 22 and 33, the term “the adhesion promoter” is inconsistent with previous recitation (from claim 3) “adhesion promoters” and should read as “the adhesion promoters.”
With respect to claim 23, the term “the coalescing agent” is inconsistent with previous recitation (from claim 3) “coalescing agents” and should read as “the coalescing agents.”
With respect to claim 24, the term “the UV absorb or stabilizer” is inconsistent with previous recitation (from claim 3) and should read as “the UV absorbers or stabilizers.”
With respect to claim 25, the term “the anti-corrosion agent” is inconsistent with previous recitation (from claim 3) “anti-corrosion agents” and should read as “the anti-corrosion agents.”
With respect to claim 26, the term “the antioxidant” is inconsistent with previous recitation (from claim 3) “antioxidants” and should read as “the antioxidants.”
With respect to claim 27, the term “the phenolic antioxidants” is inconsistent with previous recitation (from claim 26) “a phenolic antioxidant” and should read as “the phenolic antioxidant.”
With respect to claim 28, the term “the amine antioxidants” is inconsistent with previous recitation (from claim 26) “an amine antioxidant” and should read as “the amine antioxidant.”
With respect to claim 29, the term “the thioether antioxidants” is inconsistent with previous recitation (from claim 26) “a thioether antioxidant” and should read as “the thioether antioxidant.”
With respect to claim 30, the term “the phosphite antioxidants” is inconsistent with previous recitation (from claim 26) “a phosphite antioxidant” and should read as “the phosphite antioxidant.”
With respect to claim 46, the term “a plasticizer” has antecedent basis in claim 3 and should read as “the plasticizers.”
With respect to claim 52, line 4, the term “a water-based carrier” has antecedent basis and should read as “the water-based carrier.”
With respect to claim 59, crosslinking components including crosslinking through UV radiation, crosslinking through heating, and crosslinking using humidity are not methods of “coating application.”
With respect to claims 61 and 62, the use of both “at least one” and “combinations thereof” is redundant.
Appropriate correction is required.
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.
Claims 1-63 are 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 regards as the invention.
With respect to claims 1, 51, and 60, the term “low” in “low VOC” is indefinite because it not clear how low is “low.” Also, the term “unwanted” in “unwanted contaminant” is unclear because a contaminant is by definition unwanted.
With respect to claim 34, the term “the substrate wetting or dispersing agent” lacks antecedent basis as they are each recited separately as “substrate wetting agents” and “dispersing agents” in claim 3.
With respect to claim 35, the term “the tackifier” lacks antecedent basis.
With respect to claims 42 and 43, the term “the first resin” lacks antecedent basis. It is also unclear whether the additional resin is included in the film forming component as a film forming component like the resin in claim 1.
With respect to claim 50, it is unclear what “other moisture” or “other conductive particulate matter and chemical” encompasses.
With respect to claims 58 and 63, the term “low” in “low VOC” is indefinite because it not clear how low is “low.”
With respect to claims 2-33, 36-41, 44-49, 52-57, 59, and 61-62, they are rejected for failing to cure the deficiency of the claims from which they depend.
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)(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.
(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.
Claim 1-41, 46-56, 58, and 60-63 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashimoto (US 2006/0178479).
With respect to claims 1-4, 10, 12, 37, 40, 41, 47-56, 58, and 60-63, Hashimoto discloses a non-sticky water-based conformal coating material that is formed into a film at room temperature without using a coalescent comprising an acrylic resin having a glass transition temperature of at most 0°C and grafted thereof a vinyl polymer having a Tg of at least 20°C and no solvent (abstract), i.e., VOC free. Hashimoto teaches that the water-based coating material has moisture resistance (i.e., protects the substrate from water contaminant) and has insulating properties (i.e., electrically insulating) (abstract).
In Example 1, a graft copolymer is radically polymerized by first forming an acrylic resin having Tg of -19°C and subsequently polymerizing thereon 25.5 wt % of a graft of polystyrene having a Tg of 100°C (paragraph 0023-0025), which provides for a Tg of the graft copolymer of about 11°C based on the Fox Equation by averaging the Tg for the acrylic resin and the polystyrene. When forming the emulsion, V-50 (azo initiator additive) and ADEKA REASOAP ER-20 (nonionic reactive surfactant additive) are added in an amount of 0.13 wt % and 2.2 wt %, respectively (based on total weight parts of 925) (paragraphs 0019 and 0023-0024). This graft copolymer is directly applied by flow coating to form a membrane on a substrate (paragraphs 0041 and 0045).
With respect to claims 5-9, 11, and 13-35, these claims which further limit fillers, plasticizers, defoamers, hydrophobing agents, biocides, rheology modifiers, leveling agents, wetting agents, dyes, crosslinking agents, pigments, 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 initiators and surfactants. Since the latter embodiment is disclosed by Hashimoto as discussed above, it is proper to include claims in this rejection.
With respect to claim 36, for the tensile strength properties, a film having thickness of 80-90 µm is prepared (paragraph 0037).
With respect to claims 38 and 39, in Example 1, water is present in an amount of 63 wt % and the amount of graft copolymer is 43 wt % (paragraphs 0023-0025).
With respect to claim 46, the plasticizer is optional because the amount up to 40 wt % includes 0 wt %.
Claims 1-35, 37, 38, 40, 42-54, 57, and 58-63 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Craun (US 7,049,357).
With respect to claims 1, 37, 49, 50, and 60-62, Craun discloses a protective coating composition that is substantially free of VOC comprising a polyhydroxyalkanoic acid having Tg of below 0°C (col. 13, lines 29-46). The coating composition is applied at room temperature (col. 2, lines 26-30). 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).
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 38, the exemplified semi gloss paint formula comprises 18.6 wt % water and 41.9 wt % 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, 47, and 48, Craun teaches that the composition is an essentially zero VOC coating (col. 9, lines 45-46).
With respect to claims 42-45, in the semi-gloss formulation, a vinyl acrylic latex is added (col. 11, line 60). Craun teaches that these 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 polyhydroxyalkanoic 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 %.
With respect to claims 51-54 and 57, Craun exemplifies polymerizing lactic acid to form the polyhydroxyalkanoic acid (col. 10, lines 58-67), i.e., condensation polymerization with water by-product.
With respect to claims 58 and 63, a coating composition is inherently applied to a substrate to form the coating.
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 of this title, 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.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over either Hashimoto (US 2006/0178479) or Craun (US 7,049,357) and further in view of Bell (US 7,531,221).
The discussions with respect to Hashimoto and Craun in paragraphs 5 and 6, respectively, above are incorporated here by reference.
While Hashimoto and Craun teach applying their aqueous acrylic compositions to a substrate at room temperature, they both fail 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 Hashimoto and Craun disclose aqueous acrylic coating composition and further given that Craun 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 Hashimo and Craun onto a substrate.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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