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
The Amendment filed on June 17th, 2026 has been entered. Claims 33-36 and claims 39-41 are pending in the application. Claims 1-32, 37-38, and 42-56 have been cancelled.
The rejection of claims 33-34 and claims 37-38 under 35 U.S.C. 103 as obvious over Henry (US 6306943 B1) is withdrawn.
The rejection of claims 35-36, 39, and 41 under 35 U.S.C. 103 as obvious over Henry (US 6306943 B1) and Riddle (US 20170275495 A1) is withdrawn.
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.
Claims 33-36, 39, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Henry (US 6306943 B1) and further in view of Riddle (US 20170275495 A1).
With regard to claim 33 and claim 34, Henry discloses solvent blends, for use adhesives, coatings, inks, cleaning and blowing agents and the like (see Abstract). Henry further discloses a solvent-resin composition having a combination of a zero volatile compound with a highly reactive compound or with a low reactivity compound. The solvent component is about 5% to about 95% by total volume of the solvent-resin composition and is one or more of the zero VOC solvents selected from the group which includes acetone and t-butylacetate (see Col 3 line 36-56). Henry further discloses a preferred embodiment comprising 5% to 90% methyl acetate, by total volume of the composition, is added to 10% to 95% of a solvent or solvent blend selected from the group which includes acetone and t-butylacetate (see Col 9 line 6-27). Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38). Therefore, the exemplary composition comprising 5% to 90% methyl acetate and 10% to 95% of a solvent or solvent blend selected from the group which includes acetone and t-butylacetate may be comprised of 5% to 90% of acetone and 10% to 95% of t-butylacetate.
It would have been obvious to utilize the solvent blend of acetone and t-butylacetate as Henry discloses all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38).
Henry further discloses a composition comprising 1-20% of technical white oil and 10-90% of t-butylacetate (see Col 10 line 46). As stated above, Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38). Therefore, technical white oil may be replaced by acetone.
However, Henry fails to disclose 2-ethylhexanol.
Riddle discloses a composition for coating and cleaning metals, an analogous art (see Abstract). Riddle further discloses that organic solvents in solubilizing components and/or enhancing the cleaning capability of a composition (see [0110]). Riddle further discloses 0.01-50wt% of organic solvents and 2-ethylhexanol as a suitable organic solvent (see [0111]-[0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 2-ethylhexanol of Riddle in the composition of Henry for the purpose of solubilizing components and/or enhancing the cleaning capability of a composition, as disclosed by Riddle.
Given a value of 65% t-butylacetate, 34% 2-ethylhexanol, and 1% acetone, the total Hansen Solubility Parameters are δD = 15.18, δP = 4.96, and δH = 6.55. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
With regard to claim 35 and claim 36, Henry discloses all of the limitations of claim 33. Henry further discloses a composition comprising 1-20% of technical white oil and 10-90% of t-butylacetate (see Col 10 line 46). As stated above, Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38). Therefore, technical white oil may be replaced by acetone.
However, Henry fails to disclose 2-ethylhexanol.
Riddle discloses a composition for coating and cleaning metals, an analogous art (see Abstract). Riddle further discloses that organic solvents in solubilizing components and/or enhancing the cleaning capability of a composition (see [0110]). Riddle further discloses 0.01-50wt% of organic solvents and 2-ethylhexanol as a suitable organic solvent (see [0111]-[0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 2-ethylhexanol of Riddle in the composition of Henry for the purpose of solubilizing components and/or enhancing the cleaning capability of a composition, as disclosed by Riddle.
Given a value of 65% t-butylacetate, 34% 2-ethylhexanol, and 1% acetone, the total Hansen Solubility Parameters are δD = 15.18, δP = 4.96, and δH = 6.55. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
With regard to claim 39, Henry discloses all of the limitations of claim 33. Henry further discloses a composition comprising 5% to 90% methyl acetate, by total volume of the composition, is added to 10% to 95% of a solvent or solvent blend selected from the group which includes acetone and n-alkane, which may be dodecane (see Col 3 line 36-56). As stated above, Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38).
However, Henry fails to disclose 2-ethylhexanol.
Riddle discloses a composition for coating and cleaning metals, an analogous art (see Abstract). Riddle further discloses that organic solvents in solubilizing components and/or enhancing the cleaning capability of a composition (see [0110]). Riddle further discloses 0.01-50wt% of organic solvents and 2-ethylhexanol as a suitable organic solvent (see [0111]-[0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 2-ethylhexanol of Riddle in the composition of Henry for the purpose of solubilizing components and/or enhancing the cleaning capability of a composition, as disclosed by Riddle.
Given a value of 55% acetone, 15% 2-ethylhexanol, 5% methyl acetate, and 15% dodecane, the total Hansen Solubility Parameters are δD = 14.1, δP = 6.6, and δH = 6.02. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
With regard to claim 41, Henry discloses all of the limitations of claim 33. Henry further discloses a composition comprising 5% to 90% methyl acetate, by total volume of the composition, is added to 10% to 95% of a solvent or solvent blend selected from the group which includes acetone and (see Col 3 line 36-56). As stated above, Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38).
However, Henry fails to disclose 2-ethylhexanol.
Riddle discloses a composition for coating and cleaning metals, an analogous art (see Abstract). Riddle further discloses that organic solvents in solubilizing components and/or enhancing the cleaning capability of a composition (see [0110]). Riddle further discloses 0.01-50wt% of organic solvents and 2-ethylhexanol as a suitable organic solvent (see [0111]-[0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 2-ethylhexanol of Riddle in the composition of Henry for the purpose of solubilizing components and/or enhancing the cleaning capability of a composition, as disclosed by Riddle.
Given a value of 40% t-butylacetate, 5% 2-ethylhexanol, and 50% acetone, the total Hansen Solubility Parameters are δD = 14.55, δP = 6.85, and δH = 6.50. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Henry (US 6306943 B1) in view of Riddle (US 20170275495 A1), as applied to claims 33-36, 39, and 41 above, and in further view of Sakane (JP 2017095541 A).
With regard to claim 40, Henry and Riddle disclose all of the limitations of claims 33-36, 39, and 41. Henry further discloses a composition comprising 5% to 90% methyl acetate, by total volume of the composition, is added to 10% to 95% of a solvent or solvent blend selected from the group which includes acetone (see Col 3 line 36-56). As stated above, Henry further teaches all embodiments may interchangeably use any of the other non-VOC solvents listed in the specification (see Col 12 line 36-38).
However, Henry and Riddle fail to disclose ethylene glycol 2-ethylhexyl ether.
Sakane discloses a coating composition for metal, an analogous art (see Abstract). Sakane further discloses the metal coating composition may preferably contain an organic solvent which may improve coatability (see [0215]). Sakane further teaches 1-80wt% of an organic solvent and ethylene glycol mono-2-ethylhexyl ether as a suitable organic solvent (see [0215]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the ethylene glycol mono-2-ethylhexyl ether of Sakane in the composition of Henry and Riddle for the purpose of improving coatability, as disclosed by Sakane.
Given a value of 12% ethylene glycol mono-2-ethylhexyl ether, 21% methyl acetate, and 67% acetone, the total Hansen Solubility Parameters are δD = 15.56, δP = 8.97, and δH = 6.90. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
While the above calculations disclose a δD of 15.56 and the upper limit of the claims is 15.45, A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05 I.
Response to Arguments
Applicant’s arguments with respect to claims 33-36 and 39-41 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Henry does not disclose 2-ethylhexanol or ethylene glycol 2-ethylhexyl ether. As stated above, Riddle discloses a composition for coating and cleaning metals, an analogous art (see Abstract). Riddle further discloses that organic solvents in solubilizing components and/or enhancing the cleaning capability of a composition (see [0110]). Riddle further discloses 0.01-50wt% of organic solvents and 2-ethylhexanol as a suitable organic solvent (see [0111]-[0112]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the 2-ethylhexanol of Riddle in the composition of Henry for the purpose of solubilizing components and/or enhancing the cleaning capability of a composition, as disclosed by Riddle.
Further, Sakane discloses a coating composition for metal, an analogous art (see Abstract). Sakane further discloses the metal coating composition may preferably contain an organic solvent which may improve coatability (see [0215]). Sakane further teaches 1-80wt% of an organic solvent and ethylene glycol mono-2-ethylhexyl ether as a suitable organic solvent (see [0215]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the ethylene glycol mono-2-ethylhexyl ether of Sakane in the composition of Henry and Riddle for the purpose of improving coatability, as disclosed by Sakane.
Applicant further argues that Henry does not teach Hansen Solubility Parameters. Applicant further argues that the office’s calculations are based on impermissible hindsight. The disclosed Hansen Solubility Parameters may be obtained through routine experimentation.
For example, as stated above, given a value of 65% t-butylacetate, 34% 2-ethylhexanol, and 1% acetone, the total Hansen Solubility Parameters are δD = 15.18, δP = 4.96, and δH = 6.55. Varying the concentration of each component is considered routine experimentation. Optimization or even simply varying of the relative amounts within the prior art’s general conditions amounts to routine experimentation. 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.
Applicant further argues that the compositions of Henry are solvent-resin blends, not resin-free cleaning compositions. The instant claims make no mention of a resin-free cleaning composition. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., resin-free cleaning compositions) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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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/B.S.H./ Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761
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