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 .
Response to Amendment
This Office Action is in response to the amendment filed on 07/09/2026. After entry of this amendment, claim 1 is currently pending in this Application.
Both Muroi and Casimiro, relied on in the previous Office action, are drawn to coating compositions disclosing the claimed components, including a binder. Muroi discloses a binder containing styrene-alkyl acrylate copolymer (Muroi, abstract and [0023]), and Casimiro discloses copolymers such as copolymers of styrene and ester of (meth)acrylic acid or mixture of said copolymer and other copolymers such as those containing monomers such as acrylic acid, (meth)acrylic acid, or an ester thereof (Casimiro, [0083]-[0092]).
However, Applicant’s argument with respect to the claimed copolymer composed of three types of monomers was found persuasive. Therefore, the present Office Action is hereby made Non-Final.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application No. 2018/0362774 to Muroi in view of EP 2 704 919 to Weinhold et al. (hereinafter Weindhold).
Muroi teaches a thermal insulating coating film which is formed from a thermal
insulating paint composition which comprises styrene-alkyl acrylate copolymer emulsion as a binder, hollow acrylic beads, and rutile type titanium dioxide, and other components and additives such as water (Muroi, abstract, [0008], [0009], [0014], [0017], [0022], and [0041]). Muroi teaches the thermal insulating coating film has excellent adhesiveness and discoloration (Muroi, [0025]) wherein the styrene-alkyl acrylate copolymer emulsion provides the film with excellent weather resistance and water resistance and has excellent affinity with the rutile titanium dioxide (Muroi, [0023]). Muroi teaches the use of 45-85 parts by mass of hollow acrylic beads with respect to 100 parts by mass of the solid content of styrene-alkyl acrylate copolymer and 74-143 parts by mass of rutile titanium dioxide with respect to 100 parts by mass of the solid content of styrene-alkyl acrylate copolymer (Muroi, [0026] and [0030]).
Although these concentrations are based on 100 parts by mass of the solid
content of the copolymer, they are expected to result in ranges and/or values having, at least, an overlapping range with the claimed concentrations because Muroi, also, teaches an embodiment in which 50 mass% of styrene-alkyl acrylate copolymer aqueous emulsion, a total of 26 mass% of titanium dioxide, and 16 mass% of hollow acrylic beads are combined and used in forming the paint composition (Muroi, [0043]) wherein all of the disclosed concentrations fall within the claimed concentrations of 35-50% by mass for the copolymer emulsion, 20-30% by mass for the rutile titanium dioxide, and 5-20% by mass for the hollow beads. It is noted that because the reference, in their general body of disclosure specifically discloses the use of rutile type titanium dioxide, the titanium dioxide disclosed in said embodiment, in paragraph [0043], is taken to mean the use of the rutile type of titanium dioxide, not any other type. Also, because the reference discloses, as an example, the use of 50% by mass of solid content of the copolymer (Muroi, [0025]), although no specific solid content is disclosed in paragraph [0043], it is expected of the solid content to also fall within the claimed range, again due to the disclosure in the general body of the reference, in paragraph [0025].
Although Muroi discloses styrene-alkyl acrylate copolymer emulsion as a binder, which is a copolymer containing styrene and alkyl acrylate or two monomers of the claimed copolymer, the reference does not expressly and/or literally disclose the use of an acrylic ester-methacrylic ester-styrene copolymer.
Weinhold, drawn to a coating composition, also, comprising an organic binder, 1-50 wt% of fillers such as hollow acrylate spheres, and 0.1-30 wt% of pigments such as rutile titanium dioxide (Weinhold, abstract, [0050]-[0052]), discloses the use of a binder compound such as water dispersible copolymers of monomers such as, “at least” one of acrylic acid ester, methacrylic acid ester, and aromatic vinyl compounds, in particular styrene (Weinhold, [0036]).
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Muroi in order to utilize a binder such as a copolymer of acrylic acid ester, methacrylic acid ester, and styrene, as that taught by Weinhold, as the binder in Muroi motivated by the fact that not only Muroi is directed to use of a binder, but that it recognizes binders of copolymers of monomers including styrene and acrylic acid have been used in coating composition. This combination is, also, motivated by the fact that both references are from the field of coating compositions utilizing binder, as well as hollow acrylate spheres and rutile type titanium dioxide. Thus, the incorporation of a binder such as one containing three monomers of styrene, acrylic acid ester, and methacrylic acid ester, as that taught by Weinhold, in the place of the binder of Muroi is seen to be the substitution of equivalents not needing an express motivation (see MPEP 2183); the reason the two binders comprising some similar monomers are seen equivalents is because according to Muroi, the binder of Muroi has excellent affinity for hollow acrylic beads due to the presence of acrylate monomer, and has excellent affinity for rutile type titanium dioxide due to being an aqueous emulsion (Muroi, [0023]). All these monomers and/or features are available in the copolymer binder of Weinhold, and therefore, the binder of Weinhold is, also, expected to have excellent affinity for rutile type titanium dioxide and hollow acrylic spheres present in the composition of Weinhold. The substitution of equivalents is, therefore, well within the scope of a skilled artisan.
Response to Arguments
Applicant’s arguments, see remarks, filed 07/09/2026, with respect to the rejection(s) of claim(s) 1 under 103 obviousness rejection over the combination of Muroi in view of Casimiro have been fully considered and, in view of the argument raised in page 7 of the remarks, are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Muroi in view of Weinhold.
Both Muroi and Casimiro, relied on in the previous Office action, are drawn to coating compositions disclosing the claimed components, including a binder. Muroi discloses a binder containing styrene-alkyl acrylate copolymer (Muroi, abstract and [0023]), and Casimiro discloses copolymers such as copolymers of styrene and ester of (meth)acrylic acid or mixture of said copolymer and other copolymers such as those containing monomers such as acrylic acid, (meth)acrylic acid, or an ester thereof (Casimiro, [0083]-[0092]). However, Casimiro does not expressly disclose one copolymer containing all the three monomers of styrene, acrylic acid ester and methacrylic acid ester, i.e. a copolymer of the claimed three monomers.
For this reason, the rejection of claim 1 over Muroi in view of Casimiro is withdrawn, and a new rejection is hereby presented above over Muroi in view of Weinhold.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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