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 .
Priority
It is held that the effective filing date of the invention recited in claim 18 is 10 March 2022 as the provisional application 63/159,199 fails to provide support for at least the limitations of wherein a change in either a Stormer viscosity or ICI viscosity is “less than about 10%” and wherein the time duration within said internal temperature range is “about 15 seconds or less.”
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 18-22 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.
In regard to claim 18, the limitation of “dynamically moving said architectural composition through the heat source” is indefinite as it is unclear how the composition can be moved “through” a heat source. Does the claim intend to recite a specific structure of the heat source? For the purpose of examination, the limitation is interpreted using the broadest reasonable interpretation.
Claims 19-22 are rejected as being dependent on claim 18.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Shrewsburg et al. (US 2009/0218229; hereinafter “Shrewsburg”) in view of Craun et al. (US 4,608,139; hereinafter “Craun”).
In regard to claims 18 and 20-22, Shrewsburg discloses a method for pasteurizing or sterilizing the architectural coating composition (aqueous coating composition which is used to apply a coating to a substrate via electrodeposition; see [0002] and [0006]) comprising the steps of (i) providing or preparing the architectural coating composition (the aqueous coating composition is necessarily provided or prepared prior to pasteurization); and(ii) applying heat by heat transfer (“heat may be provided by hot water, steam, heated brine, glycol, heat transfer oils or other heat transfer fluids, electric induction, or suitable heating methods;” [0020]) to said architectural coating composition to pasteurize the architectural coating composition by heating said architectural coating composition to an internal temperature range from about 60°C to about 92.5 °C (coating is pasteurized by being “heated up to about 145° F” which is ~62.8°C; [0019]) and dynamically moving (coating is pumped through pipeline 5 and heat exchanger 6) said architectural coating composition through the heat source for any time duration (coating is heated up as quickly as possible in heat exchanger; [0019). See the figure and paragraphs [0017]-[0023].
Shrewsburg does not explicitly disclose wherein a change in either a Stormer viscosity or ICI viscosity from untreated to post-heat treatment is less than about 10% or wherein the time duration within said internal temperature range is about 15 seconds or less, about 10 seconds or less, about 5 seconds or less or about 2.5 seconds or less and it is noted that the instant application does not disclose the criticality of the change of viscosity nor the recited time duration. Shrewsburg does disclose that a chiller is preferably located in the fluid line shortly after the heat exchanger so that the coating material is not at the pasteurization temperature so long that it is adversely affected. See [0021]. Thus, Shrewsburg is concerned with the pasteurization process altering the properties of the coating composition and recognizes that decreasing the length of heat treatment can function to maintain the properties of the coating material. Therefore, it would have been within the ambit of one of ordinary skill in the art to have discovered the optimum or workable range of time at the pasteurization temperature to prevent adversely affecting the properties, such as Stormer or ICI viscosity, through routine experimentation and without producing any new or unexpected results. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Shrewsburg is further silent in regard to wherein the architectural coating composition contains latex particles. See
Craun discloses an aqueous electrocoating paint composition which comprises latex. See col. 2, lines 14-35.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have pasteurized the latex-containing composition of Craun using the method of Shrewsburg for the purpose of controlling bacterial growth in the composition. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shrewsburg in view of Craun as applied to claim 18 above and further in view of Sheerin et al. (US 2017/0354751; hereinafter “Sheerin”).
In regard to claim 19, Shrewsburg is silent in regard to a step of storing the architectural coating composition in containers.
Sheerin discloses that architectural coating compositions can be pasteurized using heat and stored in containers after being pasteurized. See at least the abstract and [0013].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the step of storing the coating composition in containers after being pasteurized as taught by Sheerin with the method of pasteurization taught by Shrewsburg for the purpose of allowing the coating composition to be stored and shipped to stores for use by customers.
Response to Arguments
Applicant's arguments filed 17 August 2026 have been fully considered but they are not persuasive.
Applicant argues that the specification fully describes “dynamically moving said architecture composition through the heat source,” thus the §112b should be withdrawn. The Examiner respectfully disagrees. The Examiner did not reject the limitation for lack of support in the specification, as that would be a §112a rejection. Rather, the limitation is indefinite as it is unclear how to dynamically move the architectural coating composition through a “heat source.” The Examiner notes that Applicant cited that specification that teaches that the composition moves through “the heating chamber 11.” The Examiner would withdraw the rejection if the term “the heat source” were replaced with --a heating chamber-- as it is clear and definite how the composition could be dynamically moved through a chamber.
Applicant argues that Shrewsburg does not disclose a composition which includes latex particles. The Examiner agrees and has entered the Craun reference to disclose an aqueous electrocoating paint composition which comprises latex.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 7:30 AM - 3:30 PM ET.
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, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
Prosecution Insights