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 .
Election/Restrictions
Applicant’s election with traverse of Invention I in the reply filed on February 13th, 2026 is acknowledged.
Claims 42-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on February 13th, 2026.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0002], “an less” should read “a less”
In paragraph [0015], “one or more ester functional group” should read “one or more ester functional groups”
In paragraph [0015], “t-butyl acetate” should read “and/or t-butyl acetate”
In paragraph [0018], “one or more ketone functional group” should read “one or more ketone functional groups”
In paragraph [0024], “solvent blends” should read “solvent blend’s”
In paragraph [0034], “cleaning composition” should read “cleaning compositions”
In paragraph [0036], “examples” should read “example”
In paragraph [0036], “15-17” is missing units of time
In paragraph [0036], “allow” should read “allows”
Appropriate correction is required.
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 33-34 and claims 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Henry (US 6306943 B1).
With regard to claim 33 and claims 37-38, 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).
In order to determine the Hansen Solubility Parameters of the solvent blend, the volume percentages must be known. Given a value of 65% acetone and 35% t-butylacetate, the total Hansen Solubility Parameters are δD = 15.3, δP = 8.06, and δH = 6.65. 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 34, Henry discloses all of the limitations of claim 33.
Given a value of 10% acetone and 90% t-butylacetate, the total Hansen Solubility Parameters are δD = 15.05, δP = 4.37, and δH = 6.1. 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.
Claims 35-36 and claims 39 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Henry (US 6306943 B1), as applied to claim 33 above, and in further view of Riddle (US 20170275495 A1).
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), as applied to claim 33 above, and in further view of Riddle (US 20170275495 A1).
With regard to claim 40, 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 (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 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 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.
Conclusion
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/B.S.H./Examiner, Art Unit 1761