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 Rejections - 35 USC § 112
Claims 1-5 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.
In claim 1, given the confusing “wherein” proviso per lines 5-7, it is unclear whether a bio-cement tile coated with the recited composition, as opposed to solely the recited composition, is required.
In claim 1, line 5, it is unclear whether “a” top-coat material refers to the top-coat material per line 1.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 and 3-5 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2019/0118219 (Schmidtchen).
Schmidtchen discloses a clear protective topcoat composition for substrates comprising, inter alia:
- an acrylic resin (meets Applicant’s acrylic resin);
- xylene (meets Applicant’s xylene);
- naphtha (meets Applicant’s naphtha);
- trimethylbenzene (meets Applicant’s trimethylbenzene); and
- ethylbenzene (meets Applicant’s ethylbenzene), wherein the topcoat composition protects the substrate from weathering and mechanical stress (e.g., abstract, [0002], [0004], [0027], [0047], claims).
As to claims 1 and 3, inasmuch as Schmidtchen’s topcoat composition meets the presently claimed composition in terms of the types of materials added, it is reasonably believed that it would inherently have the same properties and capability of being applied on a surface of a bio-cement tile because the properties are intrinsically linked to the chemical identity and formulation of a composition. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112). In general, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the alternative, it would have been obvious to one having ordinary skill in the art to apply Schmidtchen’s topcoat composition onto any viable surface, inclusive of a bio-cement tile, with the reasonable expectation of success. This is particularly so given that Schmidtchen discloses both natural and synthetic substrates [0002].
As to claim 4, Schmidtchen’s discloses “clear” or “transparent” compositions
[0027], which would necessarily be colorless.
As to claim 5, Schmidtchen does not require UV curing.
Allowable Subject Matter
Claims 6-10 are allowed.
Claims 6-10 are allowed over the prior art of record in that said art neither discloses nor renders obvious the presently claimed method of applying the recited composition on a surface of a bio-cement tile. The closest prior art of record, CN 1891769 A (Yao), discloses a method of using a colored coating composition comprising applying the coating composition onto the surface of cement tiles, wherein the composition comprises an acrylic resin and a solvent which is an aromatic hydrocarbon solvent including xylene, C9 and C10 [0022]. Yao, however, neither discloses nor provides any suggestion or guidance on to combining xylene and C9 trimethylbenzene further with the additional naphtha and ethylbenzene solvents. An extensive search has failed to reveal any additional prior art that would fairly teach, suggest or provide motivation to arrive at the presently claimed subject matter.
Claim 2 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.
Yao fails to disclose, suggest or provide any motivation for using the components in the claimed contents.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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