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 .
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.
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 7-11 and 15-19 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.
Claims 7 and 15 list groups of alternative acrylic latex resins.
Claims 8-10 and 16-18 list groups of alternative functional fillers.
Claims 11 and 19 lists a group of alternative hydrophobic additives.
Each of these groups of alternatives are claimed from a groups which “comprises” the alternative members.
A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,995,233. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US ‘233 claims a coating material comprising at least one acrylic latex resin, at least one functional filler, at least one hydrophobic additive and a crosslinking agent, wherein the acrylic latex is a hydrophobic resin, a self-crosslinking rein or a crosslinkable resin, and wherein the coating material has a water infiltration depth of 120 micron or less after applied as a 500 micron dry film to a roofing substrate (claim 1), further claiming the inclusion of a pigment (claim 7).
Preparing the claimed roofing system is prima facie obvious.
US ‘233 is prima facie obvious over instant claims 1-20, as the functional fillers and hydrophobic additives are the same as those claimed by the instant invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,840,636. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US ‘636 claims a roofing system comprising a coating comprising 20-70 wt% of at least one acrylic latex resin, 25-65 wt% of at least one functional filler and 05-20 wt% of at least one hydrophobic additive and 2-15 wt% of a pigment, wherein the acrylic latex is a hydrophobic resin, a self-crosslinking rein or a crosslinkable resin, the functional filler and the hydrophobic additives are the same as those claimed by the instant invention (claim 1), and wherein the coating material has a water infiltration depth of 120 micron or less after applied as a 500 micron dry film to a roofing substrate (claim 11).
Preparing the claimed roofing system is prima facie obvious.
US ‘636 is prima facie obvious over instant claims 1-20.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,110,410. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US ‘410 claims a roofing system comprising a coating system comprising at least one acrylic latex resin, at least one functional filler and 0.5-20 wt% of at least one hydrophobic additive (claim 1), wherein the acrylic latex is a hydrophobic resin, a self-crosslinking rein or a crosslinkable resin (claim 5), and wherein the coating material has a water infiltration depth of 120 micron or less after applied as a 500 micron dry film to a roofing substrate (claim 20), further claiming the inclusion of a pigment (claim 16).
Preparing the claimed roofing system is prima facie obvious.
US ‘410 is prima facie obvious over instant claims 1-20, as the functional fillers and hydrophobic additives are the same as those claimed by the instant invention.
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.
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, 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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hibben (US 2019/0315995).
Hibben exemplifies the following coating composition for polymeric roofing materials:
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The latex formed in Synthesis Example 1 is prepared from 2-ethylhexyl acrylate and n-butyl methacrylate and meets applicants’ acrylic latex, which is present in an amount of about 42 wt% and inherently results in a hydrophobic resin, as both monomers are hydrophobic.
Duramite meets applicants’ functional filler and is present in an amount of about 40 wt% and Tamol 165A meets applicants’ hydrophobic additive, which is present in an amount of about 0.9 wt%. The composition also contains about 5 wt% titanium dioxide pigment.
While Hibben does not teach or disclose the claimed water infiltration, the composition contains applicants preferred components in amounts which fall within the claimed ranges and inherently possesses the claimed infiltration.
In the case that the property is not inherent in the composition, one of ordinary skill in the art would expect the composition to possess the claimed water infiltration as it includes applicants’ claimed hydrophobic additive, which is responsible for the claimed water infiltration, as evidenced by the instant specification. See Table I.
Hibben anticipates or is prima facie obvious over instant claims 1-20.
Claims 1-20 are rejected under 35 U.S.C. 103 as obvious over Hibben (US 2019/0315995), as applied above to claims 1-20, and further in view of Dow (Tamol 165A Dispersant, Dow, 2019, 2 pages).
Hibben anticipates or is prima facie obvious over instant claims 1-20, as described above and applied herein as such, as Hibben exemplifies a roofing coating composition which contains about 42 wt% hydrophobic acrylic latex, 40 wt% functional filler, 5 wt% pigment, and 0.9 wt% of a hydrophobic copolymer dispersant, Tamol 165A.
In the case that this composition does not possess the claimed water infiltration, Dow teaches that Tamol 165A is dispersant which offers water resistance properties to latex coatings, and is highly compatible with HEUR (hydrophobically ethoxylated urethane) rheology modifiers, which are known nonionic rheology modifiers.
Hibben teaches that hydrophobically modified ethylene oxide urethane thickeners may be added to the coating composition (p. 7, [0056]), further teaching that the concentration of the thickener stabilizer in the aqueous coating composition will be known to persons having ordinary skill in the art or can be determined using standard methods.
Incorporating the HEUR into the exemplified composition is prima facie obvious, as this modification is clearly suggested by Hibben.
This combination is applicants’ preferred combination for meeting the claimed water infiltration; therefore, one of ordinary skill in the art would expect the modified coating of Hibben to possess the claimed water infiltration, as well.
Claims 1-20 are rejected under 35 U.S.C. 103 as obvious over Chen (US 2009/0004468).
Chen teaches a primer for building materials which effectively blocks moisture from penetrating the building materials, acting as a weather-guard and a hydrophobic treatment to all surfaces of building material upon application (Abstract), where the building materials are specifically listed to include concrete roofing tile material (p. 2, [0026]).
Chen teaches a typical primer as comprising the following:
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Chen goes on to teach preferred embodiments where Tamol 165 is used as the dispersant, 2020 NPR is used as he thickener, and NeoCar 820 or 850 is used as the binder.
NeoCar 820 and 850 are specifically listed by applicants as a suitable acrylic latex (see instant specification, p. 7, [0018]).
Calcium carbonate is disclosed as applicants’ preferred functional filler, and titanium dioxide is exemplified as applicants’ pigment (see instant specification, pp. 13-14, [0034], Table I).
2020 NPR is also known as Acrysol RM-2020NPR, and is a hydrophobically modified ethylene oxide urethane (HEUR) rheology modifier and is disclosed as a preferred hydrophobic additive (see instant specification, p. 8, [0020]).
Tamol 165 is also listed as one of applicants’ preferred hydrophobic additive (see instant specification, p. 8, [0020]).
Both 2020 NPR and Tamol 165 meet applicants’ hydrophobic additive and are taught in a total amount, at minimum, of 0.25 up to 1.5 wt%.
While Chen does not specifically teach the claimed water infiltration after testing on a dry film thickness of 500 micron after exposure to 95% humidity at 60°C, Chen does teach that the primer reduces moisture absorption by up to 75% compared to other primer coatings (p. 7, [0068]), has a reduced rate of water absorption, lower water migration, lower water permeability, etc. (p. 7, [0073]).
The above teaching suggests a combination of about 10-50 wt% acrylic latex, 20-55 wt% functional filler, 5-20 wt% pigment, and 0.25-1.5 wt% or preferabloy 0.35-0.8 wt% of the hydrophobic additives, and overlaps with the claimed ranges of instant claims 1-6 and 13-14, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
The suggested compositions of Chen overlap with applicants preferred examples, which comprise about 40 wt% acrylic latex, about 40 wt% functional filler, about 1 wt% hydrophobic additive from a combination of a hydrophobic copolymer dispersant and a HEUR thickener, and about 7 wt% pigment; therefore, one of ordinary skill in the art would expect the compositions of Chen to possess the claimed water infiltration, as Chen clearly teaches a composition which prevents or reduces moisture absorption, migration and permeability.
Applicants show that when the hydrophobic additive is not present, the claimed water infiltration cannot be met; therefore, incorporation of such would be expected to meet the claimed water infiltration.
Chen is prima facie obvious over instant claims 1-9, 11-17 and 19-20.
As to claims 10 and 18, Chen teaches the possible inclusion of other additives such as silica, wollastonite, mica, kaolin, etc. (p. , [0027]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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