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 Objections
Claims 6 and 11 are objected to because of the following informalities:
• In claim 6, the phrase “…monomer is the at least one member selected from the group consisting of methyl methacrylate…” should be amended to read: “…monomer is [[the]] at least one member selected from the group consisting of methyl methacrylate…” (i.e., delete the word “the”).
• In claim 11, the claim should be amended as follows: “…by weight based on the total composition.”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4-10, 12-19, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarkis (US-20140087156-A1) (hereinafter referred to as “Sarkis”), with evidence from Duan et al. (US-5703158-A) (hereinafter referred to as “Duan”) as to the rejection of claims 1, 2, 4-10, 12-19, 21, and 22.
Regarding claim 1, Sarkis teaches a waterborne acrylic coating composition (see Sarkis at para. 0036, teaching a first coating composition containing a first polymer composition; also see Sarkis at para. 0037, teaching the first polymer composition may contain an acrylic emulsion polymer; also see Sarkis at para. 0081, teaching the balance of the first coating composition may be water), comprising:
• an acrylic resin having units formed from at least one (meth)acrylic unit containing monomer, wherein the acrylic resin has a plurality of reactive groups selected from hydroxyl groups, amino groups, and carboxyl groups (see Sarkis at para. 0038 and 0040, teaching the polymer may include at least one ethylenically-unsaturated monomer, such as methyl methacrylate, and a monomer comprising an organic acid group, such as methacrylic acid; also see Sarkis at para. 0132, teaching example polymers containing methyl methacrylate and methacrylic acid; thus, Sarkis reasonably suggests via their example embodiments the formation of an acrylic polymer containing both methyl methacrylate and methacrylic acid as functional groups; methacrylic acid has carboxyl groups, and thus, it necessarily follows that upon the formation of the acrylic polymer, the polymer includes a plurality of carboxyl groups);
• at least one inorganic multivalent crosslinking agent reactive with the plurality of reactive groups and, optionally, reactive with a surface coated by the waterborne acrylic coating composition (see Sarkis at para. 0072, teaching the first coating composition may include a polyvalent metal ionic crosslinker, such as zinc ammonium carbonate; given the acrylic polymer taught by Sarkis is the same as that claimed and includes carboxylic acid groups (see bullet point above), it necessarily follows that the zinc ammonium carbonate is reactive with the carboxylic acid groups; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); moreover, in general, zinc ammonium carbonate functions as a crosslinker that is reactive with carboxyl groups, as evidenced by Duan at col. 7, lines 63-67); and
• water (see Sarkis at para. 0081, teaching the balance of the first coating composition may be water).
Regarding claim 2, see Sarkis at para. 0037, teaching the emulsion polymer in the first polymer composition may be formed via an emulsion polymerization method; also see Sarkis at para. 0132, teaching the monomers as being mixed homogenously together in a single step, i.e., as a single stage polymer; thus, Sarkis reasonably teaches via their example embodiments the formation of a single stage acrylic polymer.
Regarding claims 4-6, see claim 1 rejection above; methyl methacrylate is a C1-C6 alkyl (meth)acrylate.
Regarding claims 7-10, zinc ammonium carbonate is a complexed Zn2+ salt.
Regarding claims 12-14, see Sarkis at para. 0075, teaching the first coating composition may contain an alkali soluble or dispersible resin, such as a styrene-acrylic acid resin; also see Sarkis at para. 0030 and para. 0142, teaching Joncryl B-98 as a suitable alkali-soluble resin; also see Sarkis at para. 0142, teaching Joncryl B-98 as being a 28 w/w% aqueous solution of a styrene-acrylic acid copolymer resin; thus, Joncryl B-98 is necessarily an aqueous latex comprising an acrylic copolymer containing at least one (meth)acrylic unit containing monomer (i.e., acrylic acid) and an unsaturated monomer with no (meth)acrylic unit (i.e., styrene).
Regarding claim 15, see Sarkis at para. 0064, teaching the first coating composition may include an organic solvent coalescing agent, i.e., a solvent.
Regarding claims 16-17, the limitations “is a primer composition” and “is a topcoat composition” are recitations of intended use, i.e., the composition is to be used as a primer/a topcoat composition. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111. Also see Sarkis at para. 0032.
Regarding claims 18-19, see Sarkis at para. 0031-0032, teaching the first coating composition may be applied on a substrate, and that the substrate may be wood.
Regarding claim 21, see Sarkis at para. 0123, teaching the first coating composition can be applied using a roller applicator, i.e., via roll coating.
Regarding claim 22, the claimed coated substrate of Sarkis is the same as that claimed, including the same substrate (e.g., wood, metal, plastic, ceramic, see Sarkis at para. 0031 and instant claim 19) and the same acrylic coating composition of claim 1 (see claim 1 rejection above). Further, the crosslinking agent’s ability to crosslink with functional groups on the substrate and internally are notably a property of the composition. Moreover, wood substrates contain hydroxyl groups (which are the same reactive groups as claimed in claim 1) via the cellulose components present within the wood. Since the composition and substrate of Sarkis are the same as that claimed, including the same reactive groups (e.g., hydroxyl groups for a wood substrate and carboxyl groups for the acrylic polymer) and the same multivalent metal crosslinker (e.g. a zinc crosslinking compound), it necessarily follows the coated substrate of Sarkis meets the claimed limitations. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof shifts to Applicants to demonstrate the polyvalent metal ionic crosslinker of Sarkis (e.g., zinc ammonium carbonate, see Sarkis at para. 0032) as not reacting internally with the coating composition or with the functional groups of the substrate of Sarkis (e.g., wood, metal, plastic, ceramic, see Sarkis at para. 0031).
Claims 1-6, 12-19, and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Owens et al. (US-5319018-A) (hereinafter referred to as “Owens”), with evidence from Rufus et al. (US-6410634-B1) (hereinafter referred to as “Rufus”) and Park (US-5750269-A) (hereinafter referred to as “Park”) as to the rejection of claims 11-13 only.
Regarding claim 1, Owens teaches a waterborne acrylic coating composition (see Example 18 of Owens at col. 18, teaching an example formulation containing water and Polymer 17; also see Owens; also see Owens at col. 16, lines 50-68 and col. 17, lines 1-30, teaching Polymer 17 as containing methyl methacrylate, acrylic acid, and other acrylate monomers, i.e., is an acrylic polymer), comprising:
• an acrylic resin having units formed from at least one (meth)acrylic unit containing monomer, wherein the acrylic resin has a plurality of reactive groups selected from hydroxyl groups, amino groups, and carboxyl groups (see Example 18 of Owens at col. 18, teaching an example formulation containing Polymer 17; also see Owens at col. 16, lines 50-68 and col. 17, lines 1-30, teaching Polymer 17 as containing methacrylic acid, acrylic acid, and other acrylate monomers; methacrylic acid and acrylic acid have carboxyl groups, and thus, it necessarily follows that upon the formation of the acrylic polymer, the polymer includes a plurality of carboxyl groups);
• at least one inorganic multivalent crosslinking agent reactive with the plurality of reactive groups and, optionally, reactive with a surface coated by the waterborne acrylic coating composition (see Example 18 of Owens at col. 18, teaching an example formulation containing Polymer 17; also see Owens at col. 17, lines 33-43, teaching the Polymer 17 as being crosslinked with ZnO, which is an inorganic multivalent crosslinking agent; given the acrylic polymer taught by Owens is the same as that claimed and includes carboxylic acid groups (see bullet point above), it necessarily follows that the zinc oxide is reactive with the carboxylic acid groups; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)); and
• water (see Example 18 of Owens at col. 18, teaching an example formulation containing water).
Regarding claim 2, see Owens at col. 9, lines 36-46, teaching an example, Example 1, made through a single stage polymerization method; Example 1 further contains an acrylic polymer containing a plurality of carboxylic acid groups (via methacrylic acid and acrylic acid monomers) and ZnO as an inorganic multivalent crosslinker; also see Example 12 at col. 12, lines 42-48, teaching an aqueous composition containing the polymer of Example 1; it is noted that for the claim 2 rejection, Example 1 of Owens is relied upon rather than Example 18 as shown for the claim 1 rejection above.
Regarding claim 3, see Example 18 of Owens at col. 18, teaching an example formulation containing Polymer 17; also see Owens at col. 16, lines 50-68 and col. 17, lines 1-30, teaching Polymer 17 as being formed as a multi-stage resin, in which two different monomer mixtures (M.E.#1 and M.E.#2) are sequentially added.
Regarding claims 4-6, see Example 18 of Owens at col. 18, teaching an example formulation containing Polymer 17; also see Owens at col. 16, lines 50-68 and col. 17, lines 1-30, teaching Polymer 17 as containing methyl methacrylate as a monomer.
Regarding claims 12-14, see Example 18 of Owens at col. 18, teaching an example formulation containing Acrysol 644; Acrysol 644 is an acrylic copolymer latex, as evidenced by Park at col. 8, lines 40-42 and Rufus at col. 6, lines 58-61; further, it necessarily follows that since Acrysol 644 is an acrylic copolymer latex, it contains at least one (meth)acrylic unit containing monomer and a further monomer that is either another (meth)acrylic unit containing monomer or an unsaturated monomer lacking a (meth)acrylic unit.
Regarding claim 15, see Example 18 of Owens at col. 18, teaching an example formulation containing dipropylene glycol methyl ether, i.e., a solvent.
Regarding claims 16-17, the limitations “is a primer composition” and “is a topcoat composition” are recitations of intended use, i.e., the composition is to be used as a primer/a topcoat composition. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claims 18-19, see Owens at col. 20, lines 39-42, teaching the composition may be coated on substrates such as metal, plastic, or wood.
Regarding claim 21, it is noted that the claimed limitation is considered a product-by-process limitation. It is the examiner's position that the recited limitation does not impart any distinct structural characteristics to the claimed composition. Consequently, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). see MPEP § 2113.
Regarding claim 22, the claimed coated substrate of Owens is the same as that claimed, including the same substrate (e.g., wood, metal, plastic, see Owens at col. 20, lines 39-42 and instant claim 19) and the same acrylic coating composition of claim 1 (see claim 1 rejection above). Further, the crosslinking agent’s ability to crosslink with functional groups on the substrate and internally are notably a property of the composition. Moreover, wood substrates contain hydroxyl groups (which are the same reactive groups as claimed in claim 1) via the cellulose components present within the wood. Since the composition and substrate of Owens are the same as that claimed, including the same reactive groups (e.g., hydroxyl groups for a wood substrate and carboxyl groups for the acrylic polymer) and the same multivalent metal crosslinker (e.g. a zinc crosslinking compound), it necessarily follows the coated substrate of Sarkis meets the claimed limitations. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof shifts to Applicants to demonstrate the polyvalent metal ionic crosslinker of Owens (e.g., zinc oxide) as not reacting internally with the coating composition or with the functional groups of the substrate of Owens (e.g., wood, metal, plastic).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sarkis.
Regarding claim 11, see Sarkis at para. 0073, teaching the content of the polyvalent metal ionic crosslinker to range from 0.01 to 10 wt% in the first coating composition; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sarkis, as applied to claim 1 above, and further in view of Bai et al. (US-20170009085-A1) (hereinafter referred to as “Bai”).
Regarding claim 20, while Sarkis teaches the coated substrate according to claim 18 outlined above, Sarkis fails to explicitly teach the substrate as being a member selected from the group consisting of cement and cement board.
However, Bai teaches an aqueous coating composition for a flooring surface (see Bai at para. 0003). Bai further teaches the coating composition can be applied to a variety of substrates, such as cement and concrete (see Bai at para. 0058).
Sarkis teaches their composition may be applied to a floor substrate, such as concrete (see Sarkis at para. 0002).
In this case, cement is a known material suitable for use as a substrate for an aqueous coating composition for flooring applications (see Bai at para. 0003 and 0058).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use cement as the substrate together with the coating composition of Sarkis, because combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Owens.
Regarding claims 7-10, while Owens teaches the composition according to claim 1 outlined above, Owens fails to explicitly teach the inorganic multivalent salt as being a complexed Zn2+ salt.
However, Owens broadly teaches zinc as a suitable metal crosslinking agent that may be paired with an oxide, an acetate or a basic acetate (see Owens at col. 6, lines 36-42).
In this case, both zinc oxide and zinc acetate are functional equivalents, i.e., both are suitable metal crosslinking agents taught by Owens for their coating composition (see Owens at col. 6, lines 36-42).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the zinc oxide of Example 18 of Owens with a zinc acetate (or basic zinc acetate) like that disclosed by Owens, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Zinc acetate (or basic zinc acetate) is a complexed Zn2+ salt.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Owens, as applied to claim 1 above, and further in view of Bai.
Regarding claim 20, while Owens teaches the coated substrate according to claim 18 outlined above, Owens fails to explicitly teach the substrate as being a member selected from the group consisting of cement and cement board.
However, Bai teaches an aqueous coating composition for a flooring surface (see Bai at para. 0003). Bai further teaches the coating composition can be applied to a variety of substrates, such as cement and concrete (see Bai at para. 0058).
Owens teaches their composition may be used as a floor polish or as an industrial or maintenance coating (see Owens at col. 8, lines 24-30).
In this case, cement is a known material suitable for use as a substrate for an aqueous coating composition for flooring applications (see Bai at para. 0003 and 0058).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use cement as the substrate together with the coating composition of Owens, because combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kohr et al. (US-20040138327-A1) teach a coating composition (see Kohr at Abstract).
Shaffer et al. (US-20090043043-A1) teach a cross-linked polymer (see Shaffer at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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