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 .
Election/Restrictions
Applicant's election with traverse of Group III and Species B in the reply filed on 27 January 2026 is acknowledged. The traversal is on the ground(s) that Rinno et al. discloses heat transfer occurs only in static conditions while the claims recite “dynamically moving” the coating composition when heated. This is not found persuasive because it is noted that claims 1 and 18 of Groups I and III recite that the dynamically moving occurs for “any time duration” which is viewed to include a time duration of zero making the limitation, in essence, optional. Thus, the recited “dynamically moving” limitation is not viewed to be a shared technical limitation as the limitation is optional in two of the three groups.
The requirement is still deemed proper and is therefore made FINAL.
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 Objections
Claim 18 is objected to because of the following informalities: the phrase “to pasteurize same” in lines 4-5 of claim 18 is grammatically awkward. Appropriate correction is required.
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
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 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 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; see [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 my 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 same 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 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.).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shrewsburg 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 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.
Conclusion
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 9:00-5:30.
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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.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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