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 statements (IDS) submitted on 04-APR-2024 and 20-SEP-2024 were filed before the mailing date of the first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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 1-2, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Honda et al. (US 2022/0340765 A1) in view of Kawashima et al. (US Pat. 4,972,000).
Regarding claims 1 and 2: Honda et al. teaches the basic claimed coating/ink composition comprising: a pigment (para. 135), specifically a bright/glitter pigment made of leafing aluminum (para. 139); styrene-acrylic acid resin (para. 119-122, and 229); isobutylene-maleic acid resin (para. 119); and a solvent such as ethylene glycol monobutyl ether (para. 149-150). It is submitted that ethylene glycol monobutyl ether has a boiling point of 171-172⁰C and is very soluble in water. Honda et al. also teaches that coating composition solid may be dissolved in an organic solvent and adjusted to a solid content of 10-80% (para. 149), corresponding to a solvent content of 90-20%.
Honda et al. does not teach hollow particles of 0.1-2.0 µm. However, Kawashima et al. teaches hollow particles of 0.2-2.0 µm (19:10-25 and 20:52-56). Honda et al. and Kawashima et al. are combinable because they are concerned with a similar technical difficulty, namely, pigments for coating compositions. At the time of filing, a person having ordinary skill in the art would have found it obvious to have added the hollow particles, as taught by Kawashima et al. into the composition Honda et al., since Kawashima et al. suggests that the hollow particles can improve adhesion as well as solvent and thermal resistance in paints, inks, and primers (20:30-40).
Regarding claim 4: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Specifically, the original specification suggests that when claimed ingredient amounts are met, then a viscosity of 5 to 20 mPa.s (para. 7). Therefore, the claimed effects and physical properties, ie. the viscosity of 5 to 20 mPa.s, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claims 5, 6, and 8: Honda et al. further teaches that the composition can be used by known coating methods (para. 153). As such, these know process would implicitly require the use of a loaded applicator.
Claims 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Honda et al. (US 2022/0340765 A1) in view of Kawashima et al. (US Pat. 4,972,000) as set forth above, and further evidenced by He et al. (US 2005/0187313 A1).
Regarding claim 3: Honda et al. teaches a styrene-acrylic acid resin, such as Joncryl HDP-96 (para. 119-122, and 229, also Tables 1 and 2). He et al. provides evidence that Joncryl HDP-96 has a molecular weight range of 8,500-16,500 (para. 94).
Regarding claim 7: Honda et al. further teaches that the composition can be used by known coating methods (para. 153). As such, these know process would implicitly require the use of a loaded applicator.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK EASHOO whose telephone number is (571)272-1197. The examiner can normally be reached M-F, 7am - 4pm.
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MARK EASHOO, Ph.D.
Supervisory Patent Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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