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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/9/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. See Pages 3, 6, and 7 of the Specification which list various references that are not on any information disclosure statement.
Election/Restrictions
Applicant's election with traverse of the process of Invention Group I (Claims 1-12 and 20-21) in the reply filed on 1/27/2026 in response to the requirement for restriction mailed 12/16/2025 is acknowledged. Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/27/2026.
The traversal is on the grounds that US Patent 5,914,153 to Swink et al. (“Swink”) describes water-soluble resins but not water-insoluble resins and fails to teach using an aqueous liquid as a solvent for water insoluble resins, thus Swink does not disclose or suggest a process involving supplying an emulsion of a water insoluble composition, spraying the emulsion of water insoluble composition, and/or spraying a mist of air and an aqueous liquid, so the technical feature makes a contribution over Swink.
This is not found persuasive because Invention Groups I and II lack unity of invention because even though the inventions of these groups both require the overlapping technical features of “a centrifugal atomizer comprising a housing, a rotary disc provided in a recess of the housing, the rotary disc comprising a front face provided with apertures and a cone, and a chamber being formed between the front face and the cone”, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Swink. Furthermore the groups do not share the same or corresponding technical feature of the distinct process steps of Claim 1 of Invention Group I, which are not required by Invention Group II. While Claim 1 requires a water insoluble composition being sprayed, such a method step is not a shared technical feature between Claims 1 and 13. The shared technical feature between Claims 1 and 13 is taught by Swink, therefore Invention Groups I and II lack unity because the shared technical feature is not a special technical feature. Furthermore, the process of Claim 1 is obvious as exhibited by the below rejection under 35 U.S.C. 103.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 9, 11-12, and 20 are objected to because of the following informalities:
In Claim 9 Line 2, “the atomizer” should be revised to “the centrifugal atomizer” to ensure using terminology consistent with what is used elsewhere throughout the claims.
In Claim 9 Line 5, “apertures the front face” should be revised to “apertures of the front face” to ensure proper grammar.
In Claim 11 Line 2, “comprising the successive steps” should be revised to “comprising successive steps” to ensure clarity in the claim.
In Claim 11 Line 3, “stopping the composition supply” should be revised to “stopping supplying the water insoluble composition” to ensure clarity in the claim.
In Claim 11 Line 4, “stopping the mist supply” should be revised to “stopping supplying the mist” to ensure clarity in the claim.
In Claim 12 Line 2, “the stopping the composition supply” should be revised to “stopping supplying the water insoluble composition” to ensure proper grammar and clarity in the claim.
In Claim 12 Line 3, “the stopping of the composition supply and the stopping the of mist supply” should be revised to “stopping supplying the water insoluble composition and stopping supplying the mist” to ensure proper grammar and clarity in the claim.
In Claim 20 Line 2, “10 and 25 PSI” should be revised to “10 psi and 25 psi” to ensure proper grammar.
In Claim 20 Line 3, “.01 and 1 gallon per minute” should be revised to “.01 gallons per minute and 1 gallon per minute” to ensure proper grammar.
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 11-12 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.
Claim 11 is indefinite because Line 5 states “after a set time, stopping the disc rotation” and there is improper antecedent basis for “the disc rotation” in the claim. It is not clear if a disc rotation step was intended to be previously recited or not. For the purpose of examination, Claim 11 Line 5 will be interpreted to state “after a set time, stopping the rotary disc from rotating”.
Claim 12 depends from Claim 11, therefore Claim 12 is also rejected under 35 U.S.C. 112(b) for being indefinite.
Claim 12 is also indefinite because Lines 1-3 state “wherein the aqueous emulsifier mixture supply is stopped upon the stopping the composition supply or between the stopping of the composition supply and the stopping the of mist supply” and there is improper antecedent basis for “the aqueous emulsifier mixture supply” in the claim. It is not clear if an aqueous emulsifier mixture supply was intended to be previously recited or not. For the purpose of examination, Claim 12 Lines 1-3 will be interpreted to state “wherein supply of an aqueous emulsifier mixture that is part of the emulsion of water insoluble composition is stopped upon stopping supplying the water insoluble composition or between stopping supplying the water insoluble composition and stopping supplying the mist”.
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 1-10 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5,914,153 to Swink et al. (“Swink”) in view of US PGPUB 2015/0203730 A1 to Parker et al. (“Parker”) and US PGPUB 2017/0197224 A1 to Taube et al. (“Taube”).
As to Claim 1, Swink discloses a process for spraying a material (See Col. 6 Lines 30-55) with a centrifugal atomizer (See #2 in Fig. 3), the centrifugal atomizer comprising:
a housing (#14),
a rotary disc (#16) provided in a recess (#19) of the housing (See Annotated Fig. 3), the rotary disc comprising a front face (#15) provided with apertures (#23) and a cone (See Annotated Fig. 3),
a chamber being formed between the front face and the cone (See Annotated Fig. 3),
wherein the process comprises the steps of
supplying a material (#12) to the chamber or forming the material in the centrifugal atomizer (See Col. 6 Lines 10-20. The resin #12 is supplied to the chamber),
spraying the emulsion of water insoluble composition by using the centrifugal atomizer (See Fig. 3 and Col. 5 Lines 65-67), and
spraying a fluid in the recess of the housing (See Col. 6 Lines 30-55 disclosing spraying solvent that is water and air sequentially in the recess).
Regarding Claim 1, in reference to the process of Swink as applied to Claim 1 above, Swink does not disclose wherein the material is an emulsion of a water insoluble composition (See Col. 6 Lines 10-15 disclosing resin #12 being phenol formaldehyde).
However, Parker discloses, in the same field of endeavor of fluid coating, wherein instead of spraying phenol formaldehyde, an emulsion of water insoluble composition is sprayed (See Paragraph 0003 disclosing that a composition having PMDI can be sprayed instead of a composition having PF, with the composition having PMDI having less issues with high temperature conditions. The composition having PMDI is a type of water insoluble composition per Paragraph 0030 is a water insoluble composition).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Swink as applied to Claim 1 above by replacing the material of Swink with the emulsion of water insoluble composition of Parker, since doing so would utilize substitution of known components to yield the predictable result of utilizing an environmentally friendly coating composition that has less issues with high temperature conditions (See Parker Paragraphs 0003-0005).
Regarding Claim 1, in reference to the process of Swink in view of Parker as applied to Claim 1 above, Swink does not specifically disclose wherein the fluid is a mist of air and an aqueous liquid (See Col. 6 Lines 30-55 disclosing spraying a solvent that is water and air sequentially in the recess for cleaning, however spraying a mist of water mixed with air is not specifically disclosed).
However, Taube discloses, in the same field of endeavor of fluid coating, a process comprising spraying a mist of air and an aqueous liquid in a recess of a housing (See Paragraph 0035 disclosing a purge material being a mist of solvent blended with air to purge material from a chamber in a housing).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Swink in view of Parker as applied to Claim 1 above such that the fluid is a mist of air and the solvent of Swink by having air from #43 and water from #40 both provided at the same time to #30 rather than sequentially such that a mist of air and an aqueous liquid is sprayed in the recess of the housing, since doing so would utilize a known technique taught by Taube of purging material with a mixture of solvent and air to yield the predictable result of helping removing residual material from the housing (See Taube Paragraph 0086).
As to Claim 2, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Swink as modified by Taube further discloses wherein the mist of air and an aqueous liquid is sprayed:
in a space situated between the housing and an outer surface of the cone ,
in the chamber, and/or
in a volume around a drive shaft of the centrifugal atomizer (See Swink Annotated Fig. 3, the liquid that is a mist of air and water as taught by Taube will be sprayed in a space between the housing and an outer surface of the cone).
As to Claim 3, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Swink as modified by Taube further discloses wherein the aqueous liquid is water (See Swink Col. 6 Line 10 disclosing that the solvent is water. Modifying Swink as taught by Taube results in the sprayed fluid being a mixture of air and solvent).
As to Claim 4, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Parker further discloses wherein the water insoluble composition comprises a water insoluble resin (See Parker Paragraph 0030 disclosing that the composition is a water-insoluble composition dispersible in water having PMDI).
As to Claim 5, in reference to the process of Swink in view of Parker and Taube as applied to Claim 4 above, Parker further discloses wherein the water insoluble resin is one of
a polyisocyanate based prepolymer; or a product of reaction between an organic polyisocyanate and a polypeptide, a polyol, an amine based polyol, an amine containing compound, a hydroxy containing compound, or a combination thereof; or a polymer comprising a terminal reactive isocyanate group;
an epoxy-based prepolymer, a product of reaction between an epoxy and, for example, a polypeptide, a polyol, an amine based polyol, an amine containing compound, a hydroxy containing compound, or a combination thereof; or
a latex-based prepolymer, a latex prepolymer, or a combination thereof (See Parker Paragraph 0030 disclosing PMDI, which is an organic polyisocyanate).
As to Claim 6, in reference to the process of Swink in view of Parker and Taube as applied to Claim 4 above, Parker further discloses wherein the water insoluble resin is an isocyanate resin (See Parker Paragraph 0030 disclosing PMDI, which is a type of isocyanate resin).
As to Claim 7, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Parker further discloses wherein the emulsion of water insoluble composition comprises an aqueous emulsifier mixture comprising an aqueous medium and an emulsifier (See Parker Paragraph 0016 disclosing incorporating ground plant meal and See Parker Paragraph 0468 disclosing an aqueous dispersion of canola meal).
As to Claim 8, in reference to the process of Swink in view of Parker and Taube as applied to Claim 7 above, Parker further discloses wherein the emulsifier mixture is an aqueous dispersion of a plant meal (See Parker Paragraph 0468 disclosing an aqueous dispersion of canola meal).
As to Claim 10, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Swink as modified by Taube further discloses wherein the mist of air and an aqueous liquid is sprayed continuously (See Swink Col. 6 Lines 50-55 disclosing automatic cleaning at proper intervals. Over such intervals, fluid is sprayed “continuously” over a certain period of time, thus reading on a broadest reasonable interpretation of the claim limitation).
Regarding Claim 20, in reference the process of Swink in view of Parker and Taube as applied to Claim 1 above, Swink as modified by Taube does not specifically disclose wherein air and mist are supplied at a pressure between 10 and 25 PSI, and the aqueous liquid flow rate to form the mist is between 0.01 and 1 gallon per minute (See Col. 8 Line 36 disclosing providing air at 5 psi and See Col. 5 Lines 61 disclosing that solvent is provided at 2 gallons per minute.).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Swink in view of Parker and Taube as applied to Claim 1 above such that air and mist are supplied at a pressure between 10 psi and 25 psi, and the aqueous liquid flow rate to form the mist is between 0.01 gpm and 1 gpm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. See MPEP 2144.05.II. The Examiner notes that a particular parameter must be recognized as a result effective variable, in this case, that parameter is the pressure and flow rate of cleaning fluid which achieves the recognized result of providing sufficient purging power to remove residual material from the centrifugal atomizer, therefore, one of ordinary skill in the art at the filing date of the invention would have found the claimed range through routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also In re Boesch, 617 F.2d 272, USPQ 215 (CCPA 1980). No criticality is apparent for the claimed range (See Page 10 of Applicant’s Specification which states “The air and mist are supplied at a pressure comprised between 10 and 25 psi such as 22 psi (152kPa), and the aqueous liquid flow rate to form the mist is comprised between 0.01 and 1 gallon per minute (0.000758 L/s to 0.075768 L/s), preferably 0.1 gallon per minute (0.007577 L/s)”. Thus, the claimed range of pressures and flow rates appear to be preferred ranges and not critical values).
As to Claim 21, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Parker further discloses wherein the emulsion of water insoluble composition is an emulsified resin (See Paragraph 0030 disclosing an emulsified composition containing PMDI).
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Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach, disclose, or suggest, in combination with other limitations recited in dependent Claim 9: “wherein the water insoluble composition is supplied to the chamber and the aqueous emulsifier mixture is supplied to the chamber so that the emulsion of water insoluble composition is formed upon passage of the composition and the aqueous emulsifier mixture through the apertures the front face of the rotary disc”.
Regarding Claim 9, in reference to the process of Swink in view of Parker and Taube as applied to Claim 7 above, Swink as modified by Parker does not disclose wherein the water insoluble composition is supplied to the chamber and the aqueous emulsifier mixture is supplied to the chamber so that the emulsion of water insoluble composition is formed upon passage of the composition and the aqueous emulsifier mixture through the apertures of the front face of the rotary disc (See Swink Annotated Fig. 3 and Col. 4 Lines 43-50. Resin #12 is provided via #22 into the chamber. Paragraph 0030 of Parker discloses mixing of the materials but does not disclose mixing materials in a chamber of a centrifugal atomizer). One having ordinary skill in the art before the effective filing date of the claimed invention would not be motivated to further reconfigure the process of Swink in view of Parker and Taube as applied to Claim 7 above such that the water insoluble composition is supplied to the chamber and the aqueous emulsifier mixture is supplied to the chamber so that the emulsion of water insoluble composition is formed upon passage of the composition and the aqueous emulsifier mixture through the apertures of the front face of the rotary disc as required by Claim 9, as there is no prior teaching in Swink, Parker, Taube, or other prior art that indicates that making such a further modification to the process would be an obvious design choice without utilizing improper hindsight.
Claims 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach, disclose, or suggest, in combination with other limitations recited in dependent Claim 11: “wherein the spraying process ends with a sequence comprising the successive steps of: stopping the composition supply; after a set time, stopping the mist supply; and after a set time, stopping the disc rotation.”.
Regarding Claim 11, in reference to the process of Swink in view of Parker and Taube as applied to Claim 1 above, Swink as modified by Taube further discloses wherein the spraying process ends with a sequence comprising the successive steps of: after a set time, stopping the mist supply (See Swink Col. 6 Lines 50-55 disclosing automatically performing intervals of cleaning, thus mist supply is stopped at some time); and after a set time, stopping the disc rotation (See Col. 4 Lines 35-40 disclosing using a motor to rotate the rotary disc and See Col. 5 Lines 1-5 disclosing hindering operation of #16. After some time after some cleaning interval, rotation of the disc will eventually stop when the centrifugal atomizer is not being used). However, Swink as modified by Taube does not disclose stopping the composition supply prior to stopping the mist supply as required by Claim 11 (See Col. 5 Lines 40-55 disclosing continuously cleaning during supply of resin). One having ordinary skill in the art before the effective filing date of the claimed invention would not be motivated to reconfigure the process of Swink in view of Parker and Taube as applied to Claim 1 above such that the spraying process ends with a sequence comprising the successive steps of: stopping the composition supply; after a set time, stopping the mist supply; and after a set time, stopping the disc rotation as required by Claim 11, as there is no prior teaching in Swink, Parker, Taube, or other prior art that indicates that making such a further modification to the process would be an obvious design choice without utilizing improper hindsight.
Claim 12 depends from Claim 11 therefore Claim 12 also contains allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited Form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN E SCHWARTZ whose telephone number is (571)272-1770. The examiner can normally be reached Monday - Friday 9:00AM - 5:00PM MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O Hall can be reached at (571)-270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN EDWARD SCHWARTZ/Examiner, Art Unit 3752 April 10, 2026
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