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
Amendments to the claims, filed on 6/23/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
The terms “or,” “and/or,” “0” (in regards to composition minimum), and “one or more of” are properly interpreted to mean optional limitations that need not be taught by the prior art of record.
Claim Objections
Claim 7 is objected to because of the following informalities: the inclusion of “further” appears to be erroneous. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: it appears “further” should be followed be “includes” or some alternative phrasing should be used. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 10, 23, 28, and 38 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.
Claim 10 recites the limitation "ZnO" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "ZnO" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation "ZnO" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 38 recites the limitation "ZnO" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 43 states “hollow microspheres,” so it would have been unclear to one of ordinary skill in the art at the time of invention if the hollow microspheres of claim 43 are additional hollow microspheres or that of the hollow polymer microspheres of claim 37.
Claim 44 states “hollow microspheres,” so it would have been unclear to one of ordinary skill in the art at the time of invention if the hollow microspheres of claim 44 are additional hollow microspheres or that of the hollow polymer microspheres of claim 37.
Claims 46, 48, and 50 are rejected for failing to cure the deficiencies of claim 44.
Claim Rejections - 35 USC § 103
Claims 1-12, 15-30, and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (US 2017/0037263 A1) in view of Greenwood et al (US 2021/0071010 A1).
Regarding claims 1-5, 9, 19-23, and 27, Iyer teaches an aqueous roof coatings applied to granulated asphaltic cap sheep sheets (i.e., a prefabricated material) (para 76) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the of invention a method of forming a roofing and/or siding material (and therein a roofing and/or siding material) comprising providing a substrate member that forms at least part of a roofing system of a structure or is configured to subsequently be used as at least part of a roofing system of a structure; wherein said substrate member has a top surface; wherein a top surface of said substrate member and/or a top surface of said coating material includes granules. It is noted that Iyer teaches that of a two-part aqueous coating composition, but further teaches the coatings can be simultaneously co-applied (abstract) therein essentially creating that of a single coating.
Iyer further teaches an acrylic-based coating; wherein the coating comprises white primary pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) (i.e., 100% of primary pigment), silicon dioxide (i.e., secondary pigment), extenders, and flame retardants (e.g., aluminum trihydrate) (para 57-58, 64, 90, 92, table 1).
Regarding the limitations “said coating material includes less than 10 wt.% titanium dioxide” and “said pigment is absent of TiO2;” Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide and pigments blends lacking TiO2 (i.e., said pigment is absent of TiO2) (para 58). so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., said coating includes less than 10 wt.% and said pigment is absent of TiO2) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Iyer fails to suggest said coating material has an average resulting reflectively in a dried state of at least 60% or an SRI of at least 60 and said pigment extender includes microspheres; said microspheres includes hollow polymer microspheres; said microspheres have an average particle size of 1-500 um; a weight percent ratio of said primary pigment to said pigment extender is 0.05:1 to 0.8:1.
Greenwood teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein said microspheres includes hollow polymer microspheres; said microspheres have an average particle size of 1-500 um (para 76, 88); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the microspheres and colloidal silica particles of Greenwood with the coating compositions or material of Iyer to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance and improved tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of white pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) and microspheres in the coating composition and/or material of Iyer as modified by Greenwood to optimize its whiteness and therein the average resulting reflectively in a dried state and/or its SRI in a dried state.
In addition, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 6-8, 10, 12, 24-26, 28, and 30, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that pigments would affect the color of the coating composition in its dried state, and therein its whiteness and reflectivity as taught by Greenwood (para 117); and Greenwood further suggests the organosilane-functionalised colloidal silica (i.e., secondary pigment) improves the tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials of the coating composition.
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of primary pigments in the composition, including relative to each other, as well as the amount of secondary pigment (e.g., organosilane-functionalised colloidal silica) in the composition, including relative to the primary pigment, to optimize the color, reflectiveness (or whiteness), the tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials of the coating composition in its final dried state on the roofing material and/or siding material.
Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 11 and 29, Greenwood teaches the colloidal silica particles suitably have an average particle diameter ranging from about 2 to about 150 nm (para 58) which lies within the range of the instant claims.
Regarding claims 15-18 and 33-36, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), glycol, fire or flame retardants, polymer dispersions and polymer dispersing agents (i.e., dispersants), biocides, fillers, and co-solvents (i.e., coalescing solvents) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, biocidal ability, etc) in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Claims 13, 14, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer and Greenwood as applied to claims 1, 2, 19, and 20 above, and further in view of Wickert et al (US 6,214,450 B1).
Iyer as modified by Greenwood teaches the method of forming a roofing and/or siding material of claims 1 and 2; and therein the roofing material and/or siding material of claims 19 and 20.
Iyer as modified by Greenwood fails to suggest wherein said primary pigment has an average particle size of 1 nanometer to 500 nanometers; and wherein said fire retardant includes antimony trioxide (Sb2O3).
Wickert teaches roof coatings comprising acrylic latex, flame retardants (e.g., antimony trioxide), hollow microspheres and opacifiers (i.e., pigments including zinc sulfide, zinc oxide, and barium sulfate); wherein the pacifiers have a size of about 0.3 to 0.5 microns (i.e., 300 to 500 nm) which lies within the range of the instant claims (col 1, lines 5-14; col 5, line 45 - col 6, line 60; col 8, lines 27-60).
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the flame retardants and pacifiers of Wickert for the primary pigments and flame retardants in the coating compositions of Iyer as modified by Greenwood; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 37, 38, 41, 43, 45, 47, 49 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (US 2017/0037263 A1) in view of Greenwood et al (US 2021/0071010 A1).
Regarding claims 37, 38, 45, and 49, Iyer teaches an aqueous roof coatings applied to granulated asphaltic cap sheep sheets (i.e., a prefabricated material) (para 76) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the of invention a method of forming a roofing and/or siding material (and therein a roofing and/or siding material) comprising providing a substrate member that forms at least part of a roofing system of a structure or is configured to subsequently be used as at least part of a roofing system of a structure; wherein said substrate member has a top surface; wherein a top surface of said substrate member and/or a top surface of said coating material includes granules. It is noted that Iyer teaches that of a two-part aqueous coating composition, but further teaches the coatings can be simultaneously co-applied (abstract) therein essentially creating that of a single coating.
Iyer further teaches an acrylic-based coating material that satisfies the requirements under ASTM D6083 (i.e., said coating material satisfies the requirements under ASTM D6083 for a Type I or a Type II acrylic coating) (para 31, 87); wherein the coating comprises white primary pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) (i.e., 100% of primary pigment), silicon dioxide (i.e., secondary pigment), extenders (i.e., said coating material includes primary pigment and pigment extender that forms a white colored pigment for said coating material), and flame retardants (e.g., aluminum trihydrate) (para 57-58, 64, 90, 92, table 1).
Regarding the limitations “said coating material includes less than 5 wt.% titanium dioxide” and “said pigment is absent of TiO2;” Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide and pigments blends lacking TiO2 (i.e., said pigment is absent of TiO2) (para 58). so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., said coating includes less than 10 wt.% and said pigment is absent of TiO2) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Iyer fails to suggest said coating material has an average resulting reflectively in a dried state of at least 60% or an SRI of at least 60 and 60-100% of said pigment extender includes microspheres; said microspheres includes hollow polymer microspheres; said microspheres have an average particle size of 1-500 pm; a weight percent ratio of said primary pigment to said pigment extender is 0.05:1 to 0.8:1.
Greenwood teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein said microspheres includes hollow polymer microspheres; said microspheres have an average particle size of 1-500 um (para 76, 88); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the microspheres and colloidal silica particles of Greenwood with the coating compositions or material of Iyer to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance and improved tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of white pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), microspheres (i.e., pigment extenders), and flame retardants in the coating composition and/or final film material, as well as in relationship to one another, of Iyer as modified by Greenwood to optimize its whiteness and therein the average resulting reflectively in a dried state and/or its SRI in a dried state as well as its flame retardancy.
In addition, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claim 41, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), and fire or flame retardants,) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Greenwood further teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood, as well as in relation to one another, to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence, etc) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, etc) in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 43 and 47, Greenwood teaches the use of hollow microspheres having a diameter of 10 to about 60 μm (para 8, 88). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greenwood, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Claims 39, 40, 42, 44, 46, 48, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer and Greenwood as applied to claims 37 and 38 above, and further in view of Wickert.
Regarding claims 39 and 40, Iyer as modified Greenwood teaches the roofing and/or siding material of instant claims 37 and 38. Iyer further teaches the use of a secondary pigment (e.g. silicon dioxide or SiO2); as does Greenwood (e.g., colloidal silica or SiO2) (para 10); wherein the colloidal silica particles of Greenwood suitably have an average particle diameter ranging from about 2 to about 150 nm (para 58) which lies within the range of the instant claims.
Iyer as modified by Greenwood fails to suggest wherein said primary pigment has an average particle size of 1 nanometer to 500 nanometers.
Wickert teaches roof coatings comprising acrylic latex, flame retardants (e.g., antimony trioxide), hollow microspheres and opacifiers (i.e., pigments including zinc sulfide, zinc oxide, and barium sulfate); wherein the pacifiers have a size of about 0.3 to 0.5 microns (i.e., 300 to 500 nm) which lies within the range of the instant claims (col 1, lines 5-14; col 5, line 45 - col 6, line 60; col 8, lines 27-60).
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the pacifiers of Wickert for the primary pigments and in the coating compositions of Iyer as modified by Greenwood; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding claim 42, 44, and 46, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), and fire or flame retardants,) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Greenwood further teaches coatings with solar reflective properties comprising hollow microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 8, 74-75, 88, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood, as well as in relation to one another, to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence, etc) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, etc) in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claim 48, Greenwood teaches the use of hollow microspheres having a diameter of 10 to about 60 μm (para 8, 88). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greenwood, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claim 50, Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide; so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., 0 wt.%) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Response to Arguments
Applicant contends that the only example provided by Iyer teaches the use of TiO₂ as the primary pigment. This is not persuasive. “[I]t is well established that the disclosure of a reference is not limited to specific working examples contained therein.” In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982).
Applicant contends Iyer is also absent any teachings regarding the use of a pigment extender with a primary pigment that is absent TiO2. This is not persuasive. Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide and pigments blends lacking TiO2 (i.e., said pigment is absent of TiO2) (para 58). so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., said coating includes less than 10 wt.% and said pigment is absent of TiO2) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Applicant further contends Iyer or Greenwood do not individually not teach any of the pigment ratios defined in the claims; do not teach or suggest the pigment to pigment extender ratios as defined in the claims. This is not persuasive.
Greenwood teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein said microspheres includes hollow polymer microspheres; said microspheres have an average particle size of 1-500 um (para 76, 88); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the microspheres and colloidal silica particles of Greenwood with the coating compositions or material of Iyer to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance and improved tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of white pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) and microspheres in the coating composition and/or material of Iyer as modified by Greenwood to optimize its whiteness and therein the average resulting reflectively in a dried state and/or its SRI in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
In response to applicant's argument that the pigment extender as defined in the claims in combination with the primary pigment enhances the pigment properties of the coating, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant contends that Greenwood does not teach a primary pigment that includes one or both of BaSO4 and ZnS. This is not persuasive due to the combination of Iyer and Greenwood. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
Prosecution Insights