DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-6 and 10 in the reply filed on 01/27/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
in paragraph [0034], line 3, “the mixture 10 may coated on a paper (not ahown)” should read “the mixture 10 may be coated on a paper (not shown)”;
in paragraph [0036], line 3, “mixture 10 may repeatedly use for cleaning” should read “mixture 10 may be repeatedly used for cleaning”.
Appropriate correction is required.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
in claim 1, line 5, a period should be replaced with a semicolon (see MPEP §608.01(m));
in claim 5, line 2, “0.001mm” should read “0.001 mm”.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 1, the claim is generally narrative and indefinite, failing to conform with current U.S. practice. Claim 1 appears to be a literal translation into English from a foreign document and is replete with grammatical and idiomatic errors. Furthermore, the phrase “the abrasives shovels particles on the surface up and the resin sticks the particles to form a bright and smooth surface” renders claim indefinite, because it is unclear what particles are being “shoveled on the surface” and how the resin “sticks the particles”.
For the purpose of examination, the examiner will treat the aforementioned limitation of claim 1 according to the specification, paragraph [0032] reciting: “the resin 10 of the mixture may wrap up and stick particles 80 … attached on the surface” and “the abrasive 14 may “shovel” the particles up from the surface to remove the particles from the surface”.
Please note, claims 2-6 and 10 are rendered indefinite as a result of their dependency on claim 1.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (TW 200523356 A) with reference to the provided machine translation, hereinafter referred to as CAI, in view of Hiroyoshi et al. (JP H04202389 A) with reference to the provided machine translation, hereinafter referred to as HIROYOSHI.
Regarding claim 1, CAI teaches a mixture with a waxing and polishing effect (see CAI at paragraph 2, p. 3: a mixture for removing surface deposits), comprising:
wax (see CAI at paragraph 2, p. 7: the stabilizer may be wax);
25-45% by weight of colloidal resin (see CAI at paragraph 3, p. 4: A) 20 wt% to 45 wt% colloid material; and paragraph 4, p. 5: the adhesive can be silicone gel, medical white glue, melt glue, rubber, etc). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim. See MPEP §2144.05(I); and
15-30% by weight of abrasives (see CAI at paragraph 3, p. 4: C) abrasive materials in powder form, ranging from 10 wt% to 30 wt%). CAI teaches ranges which overlap and render obvious the claimed ranges;
wherein the abrasives shovel the particles up from the surface to form a bright and smooth surface (see CAI at paragraph 3, p. 8: the abrasive produces a "spade effect" to remove the adhering material from the working surface);
While CAI discloses that the mixture may contain wax (see CAI at paragraphs 2-3, p. 7), CAI fails to explicitly teach 15-30% by weight wax and 2-5% by weight of glycerin.
However, HIROYOSHI discloses the film forming aqueous polish that preserves the original beauty of automobile paint films in a beautiful state, since the paint films of automobiles are deteriorated by rainwater and natural pollutants (see HIROYOSHI at paragraph 1, p. 5). HIROYOSHI also discloses that a polishing agent that combines a wax component and an organopolysiloxane (hereinafter referred to as silicone) component is a well-known fact, and its effects are obvious (see HIROYOSHI at paragraph 9, p. 5). HIROYOSHI teaches the composition comprising 0.5 to 20 wt% wax (see HIROYOSHI at paragraph 9, p. 6), as well as benefits associated with utilizing amount of wax within disclosed range, such as providing water resistance and polishing effect (see HIROYOSHI at paragraph 11, p. 6). HIROYOSHI also teaches that polyhydric alcohols such as ethylene glycol, chloropylene glycol, and glycerin and other substances having an antifreeze effect are commonly used for antifreezing purposes in amount below 20 wt% (see HIROYOSHI at paragraph 8, p. 7).
Both CAI’s and HIROYOSHI’s disclosures are from the same field of endeavor and describe compositions for removing substances from the painted surfaces, e.g., automobiles. According to MPEP § 2144.06(I), "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the composition of CAI by including 0.5 to 20 wt% wax as disclosed by HIROYOSHI based on teachings of HIROYOSHI describing benefits associated with including wax in the composition, such as providing water resistance and polishing effect (see HIROYOSHI at paragraph 11, p. 6); and according to HIROYOSHI a polishing agent that combines a wax component and a silicone component is a well-known fact (see HIROYOSHI at paragraph 9, p. 5). Furthermore, one of ordinary skill in the art would have been motivated to modify the composition of CAI by adding polyhydric alcohols such as glycerin in amount below 20wt% as disclosed by HIROYOSHI for antifreezing purposes (see HIROYOSHI at paragraph 8, p. 7).
MPEP §2112.01(I) states: “when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”, thus, the glycerin in the composition of CAI as modified by HIROYOSHI is anticipated to release the wax evenly and slowly on the surface to provide function of glazing, as set forth in claim 1.
Regarding claim 2, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein the resin is selected from the group consisting of silicone, medical white glue or melt glue (see CAI at paragraph 4, p. 5: the adhesive can be silicone gel, medical white glue, melt glue, rubber, etc).
Regarding claim 3, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein the abrasives are selected from the group consisting of aluminum oxide, silicon carbide, garnet, calcium carbonate or alumina (see CAI at paragraph 8, p. 5: the abrasive can be calcium carbonate, iron oxide, alumina, silicon carbide, quartz, etc).
Regarding claim 4, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein the abrasives have different crystalized shapes (see CAI at paragraph 1, p. 6: different crystal shapes of the different abrasives).
Regarding claim 5, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein the abrasives have average diameter less than 0.001 mm (see CAI at paragraph 4, p. 6: the average particle size of abrasive is preferably below 0.001 mm). CAI teaches a range which is identical and anticipates the claimed range.
Regarding claim 6, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein the mixture is coated on a sponge or a foam (see CAI at paragraph 1, p. 7: the mixture for removing surface deposits is fixed on a sponge or foam).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over CAI in view of HIROYOSHI as applied to claim 1 above, and further in view of Kobayashi et al. (JP 2005263934 A) with reference to the provided machina translation, hereinafter referred to as KOBAYASHI.
Regarding claim 10, CAI as modified by HIROYOSHI teaches the mixture of claim 1, wherein 2-5% by weight of the glycerin is replaced by dipropylene glycol or propylene glycol (see HIROYOSHI at paragraph 8, p. 7: polyhydric alcohols such as ethylene glycol, chloropylene glycol, and glycerin and other; and Example 8, p. 8: propylene glycol). While HIROYOSHI is silent with respect to the propylene glycol being used as a substitute for glycerin, the equivalency of the aforementioned compounds is evidenced form the disclosure of KOBAYASHI teaching water-based wax agent for imparting water repellency to a vehicle body such as a body of an automobile, particularly a painted surface thereof (see KOBAYASHI at paragraph 1, p. 1); the agent composition comprising at least one polyhydric alcohol selected
from glycerin, polyglycerin, sorbitol, mannitol and propylene glycol (see KOBAYASHI at paragraph 7, p. 7). Therefore, based on the aforementioned disclosure of KOBAYASHI, one of ordinary skill in the art would have recognized that replacing glycerin with propylene glycol is a simple substitution of one known element for another to obtain predictable results. Therefore, one of ordinary skill in the art would have a reasonable expectation of success when replacing glycerin with propylene glycol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANASTASIA KUVAYSKAYA whose telephone number is (703)756-5437. The examiner can normally be reached Monday-Thursday 7:00am-5:00pm.
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731