DETAILED ACTION
This Office Action is in response to the Amendment filed on 8/4/2026. Claims 1-9 are pending in the application.
The previous objection to claim 3 is withdrawn in light of Applicant’s amendment and remarks.
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.
Claim 5 is 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.
Claim 5 recites the limitation "the base” in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Decato et al. (US PG Pub 2019/0106577 A1).
The disclosure of Decato et al. is adequately set forth on pages 4 – 6 of the Office Action dated 5/4/2026 and is incorporated herein by reference.
Regarding claim 1, Decato et al. teach a coating composition comprising an aqueous dispersion (Abstract) comprising:
first thermoplastic particles; having a Tg in the range of -10°C to 30 °C [0011] thereby overlapping with the claimed range of from -25 °C to 50 °C;
second thermoplastic particles; having a Tg in the range of 0 °C to 70 °C [0012] thereby overlapping with the claimed range of from 30 °C to 110 °C;
an extender; wherein the extender can contain both calcium carbonate and titanium dioxide (claim 6) thereby reading on the extender (calcium carbonate) and opacifying pigment particles (titanium dioxide);
a volatile base comprising ammonia (claim 6);
wherein the Tg ranges above read on the proviso that the second polymer particles have a Tg of at least 20 C0 higher than the first polymer particles;
wherein the first polymer particles have a solids content of 5 to 30 weight percent and the second polymer particles have a solids content of from 1 to 35 weight percent based on the weight of total solids [0005] which overlaps with the first and second polymer particles together have a solids content in the range of from 10 to 20 weight percent;
wherein the extender has a solids content from 30 to 80 weight percent [0005] which corresponds to the claimed range of from 45 to 70 weight percent for the extender particles and the opacifying pigment particles have a solids content in the range of from 3 to 15 weight percent;
wherein when all the components are considered, the total solids content overlaps the claimed range of from 60 to 85 weight percent;
wherein the amounts of first polymer particles (5 to 30 weight percent) and second polymer particles (1 to 35 weight percent) will achieve a w/w ratio that overlaps the claimed ratio of from 30:70 to 90:10.
Decato et al. and the claims differ in that Decato et al. do not teach the exact same ranges for the Tg of the first and second polymer particles, the solid contents for the first and second polymer particles, the solids content for the extender, the solids contents for the opacifying pigment particles, the total solids content, and the weight ratio of first to second polymer particles as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Decato et al. overlap the instantly claimed ranges as listed above and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 2, Decato et al. teach first thermoplastic particles; having a Tg in the range of -10°C to 30 °C [0011] thereby overlapping with the claimed range of from -15 °C to 30 °C;
second thermoplastic particles; having a Tg in the range of 0 °C to 70 °C [0012] thereby overlapping with the claimed range of from 50 °C to 110 °C.
Regarding claim 3, Decato et al. teach the composition further comprises from 0.02 to 3 weight percent, based on the weight of the composition, of a polyamine [0026]; wherein amounts of first polymer particles (5 to 30 weight percent) and second polymer particles (1 to 35 weight percent) will achieve a w/w ratio that overlaps the claimed ratio of from 50:50 to 90:10; and wherein the first and second polymer particles are acrylic or styrene-acrylic polymers [0007].
Regarding claims 4 and 6, Decato et al. teach the pigment volume concentration (PVC) is the range of from 50 to 70 [0024].
Regarding claim 5, Decato et al. teach the base is ammonia (claim 6), the polyamine is selected from oxazolidinyl ethyl acrylate [0027].
Decato et al. do not particularly teach the pH of the composition.
However, the pH is a function of the components present in the composition. Decato et al. teach the same composition having a volatile base (ammonium) as set forth in the rejection above. Therefore, the pH of the composition of Decato et al. is expected to be the same pH as required by the instant claim. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art 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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claims 7 and 8, Decato et al. teach other materials such as surfactants [0033].
Regarding claim 9, Decato et al. teach a coalescent [0033] in an amount of 116.73 g.
Decato et al. do not particularly teach the concentration of the coalescent to promote film formation of the first polymer particles at ambient temperature but low enough so as not to promote film formation of the second polymer particles.
However, Decato et al. teach the same coalescent as used in the instant specification examples and further teach the same composition having the same first and second polymer particles as set forth in the rejection above. The amount of coalescent will affect the ability to form a film. Therefore, the amounts of coalescent can be optimized to reach the desired film formation via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive. Regarding the 103 rejection over Decato et al., Applicant states “the Office’s determination of obviousness does not consider the claimed composition as a whole and does not provide proper ‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”
Applicant further states “Applicant’s Table 1 demonstrate the criticality of these parameters to achieve a durable, heat-age stable paint that dries quickly and retains color.” And further states the ranges of Decato “do not provide a reasonable motivation, suggestion, or teaching to specially select the combination of parameters as claimed in claim 1. To conclude otherwise ignores the claimed composition as a whole and would ‘encompass a very large number of possible distinct compositions’ that does ‘not invite optimization by one of skill in the art.’ “
In response, attention is drawn to the rejection as set forth before where Decato teaches all the claimed components in the same or in overlapping amounts and is therefore considered to establish a prima facie case of obviousness.
Regarding the Applicants indication that Table 1 teaches the criticality of the claimed ranges, attention is drawn to the case law wherein it is held that “a showing of unexpected results must be based on evidence, not argument or speculation”. See In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). The case law has held that arguments unsupported by comparative data were determined insufficient to overcome prima facie case of obviousness.
Applicant's argument of criticality is unpersuasive and insufficient. Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Decato. See MPEP § 716.01(c). The comparative examples in Table 1 merely test 0% of high Tg (Comp 1) or a substitution of Tg with CaCO3 (Comp 2 and 3). These experiments are not representative of the compositions of Decato. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and claimed components. Therefore, it is suggested that Applicant compare several compositions containing the claimed first polymer particle and second polymer particle, within the claimed Tg ranges and the claimed w/w ratio at several data points over the claimed range to several compositions containing first and second polymer particles outside of the claimed Tg range, and outside of the w/w ratio, including data points close to and far from the claimed range.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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