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 .
Claim Rejections - 35 USC § 112
Claims 1-10 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 claim 1, it is unclear whether the paint-protective coating material is in liquid form.
In claim 7, it is unclear what is meant by a coating composition “used for” forming the paint-protective coating material per claim 1. That is, it is unclear how the paint-protective coating material, which “is formed from a coating composition”, distinguishes over the coating composition.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-5, 7 and 8 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP S6096671 A (Murao) abstract and machine translation per IDS filed 9/24/2025.
Murao discloses a strippable resin coating composition comprising:
an aqueous dispersion obtained by emulsion polymerizing acrylic-based monomers such as (meth)acrylate ester and acrylonitrile; and
various additives inclusive of an amide compound, an anionic surfactant, and a polyhydric alcohol.
As to claims 1 and 7, Murao sets forth (examples/Table 2) various coating compositions comprising an aqueous dispersion of emulsion-polymerized copolymers from butyl acrylate, acrylonitrile and optionally methyl methacrylate, governed by a glass transition temperature (Tg) of from 252 K to 270 K (i.e., Tg of about -32 °C to -4 °C) (meet Applicants’ acrylic monomer-based polymer (A) having a Tg of ≤ 0 °C). To the extent Murao’s exemplified copolymers are derived from the same monomers expressly used in the production of Applicants’ examples (Tables 1 and 2) and have a Tg falling within the presently claimed scope, it is reasonably believed that such would inherently possess the same SP value and “paint-protective” properties. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
As to claim 2, the emulsion-polymerized copolymers exemplified by Murao do not comprise an acid monomer and, as such, necessarily have an acid value of 0.
As to claim 3, Murao’s exemplified copolymers are derived from the same monomers expressly used in the production of Applicants’ examples (Tables 1 and 2) and have a Tg falling within the presently claimed scope. Thus, since Murao’s copolymers have the identical monomeric composition, it is reasonably believed that such would inherently possess the same storage modulus. Notably, the properties are intrinsically linked to the chemical identity and formulation of a composition.
As to claim 4, the emulsion-polymerized copolymers exemplified by Murao are obtained from acrylonitrile (nitrogen atom-containing monomer).
As to claim 5, Murao sets forth emulsion-polymerized copolymers having a Tg of -15.5 (examples 1, 2 and 6), a Tg of -19.5 (examples 3-4) and a Tg of -3.5 (example 5) (meet Applicants’ Tg of ≥ -20 °C).
As to claim 8, Murao’s exemplified emulsion-polymerized copolymers are dispersed in an aqueous medium.
Murao anticipates the above-rejected claims in that it is believed that the exemplified copolymers having a Tg falling within the scope of the present claims would inherently meet the presently claimed SP value. In the alternative, it would have been obvious to one having ordinary skill in the art to formulate copolymers per Murao’s inventive disclosure which are obtained from the monomer mixtures defining Applicants’ examples (Tables 1 and 2) having a SP as presently claimed with the reasonable expectation of success.
Claims 6, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP S6096671 A (Murao) described hereinabove.
As to claim 6, Murao’s exemplified emulsion-polymerized copolymer per example 3 comprises methyl methacrylate, but no carboxy group-containing monomer. It is within the purview of Murao’s inventive disclosure (p. 4), and obvious to one having ordinary skill in the art, to further include other comonomers such as carboxy group-containing monomers for their expected additive effect and with the reasonable expectation of success.
As to claim 9, it is within the purview of Murao inventive disclosure [0001], and obvious to one having ordinary skill in the art, to apply and dry the strippable coating composition onto painted objects.
As to claim 10, it would have been within the purview of one having ordinary skill in the art to apply Murao’s coating composition onto a painted object via any conventional method, inclusive of via a slot die, with the reasonable expectation of success.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,384,933. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to similar-such paint-protective coating materials governed by the same Tg and SP.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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