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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on 01/07/2026 is acknowledged.
Applicant has elected to elect with traverse. Applicants provide no specific arguments related to the Restriction Requirement. Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 9-17 are directed to a non-elected invention. Applicant timely traversed the restriction requirement in the reply filed on 01/07/2026.
Claim Interpretation
For the purposes of examination, the Examiner is interpreting the term “substantially formaldehyde free” in claim 7 to refer to a concentration of less than 1000 ppm. Such an interpretation is supported in Applicant’s specification, see para. 00022-00023.
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.
(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.
Claims 1, 2, and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uehara et al. (JP-2023035717-A), with reference to the included machine translation (hereinafter referred to as “Uehara”).
Regarding claims 1 and 4, Uehara teaches a building construction composition (see Uehara at pg. 3, para. 5, teaching a coated body having a functional layer; also see Uehara at pg. 9, para. 2, teaching the functional layer may be formed via a coating composition; also see Uehara at pg. 8, para. 2, teaching the functional layer can be formed on a building) comprising:
• hydrated gypsum, anhydrous gypsum, and/or calcium carbonate (see Uehara at pg. 9, para. 2, teaching the coating composition to contain inorganic fine particles (B); also see Uehara at pg. 5, para. 7, teaching calcium carbonate as a suitable inorganic fine particles (B));
• a starch and/or polymeric binder (see Uehara at pg. 10, para. 4, teaching the coating composition to contain binder resins, such as acrylic resins); and
• a copper-containing compound, wherein the copper-containing compound is copper hydroxide (regarding claim 4) (see Uehara at pg. 9, para. 2, teaching the coating composition as containing an antibacterial agent; also see Uehara at pg. 3, para. 10, teaching the antibacterial agent may include copper (II) hydroxide, i.e., copper hydroxide).
Regarding claim 2, see Uehara at pg. 9, para. 2, teaching the functional layer may be formed via a coating composition.
Regarding claim 5, see Uehara at pg. 10, last paragraph, teaching the coating composition may contain water as a solvent.
Regarding claim 6, see Uehara at pg. 11, para. 3, teaching the coating composition may contain other components such as pigments or viscosity modifiers.
Regarding claim 7, Uehara does not necessitate the presence of formaldehyde in their composition; accordingly, Uehara necessarily teaches their composition may be free of formaldehyde.
Regarding claim 8, the claimed limitation is a property of the composition. Since the composition of Uehara is the same as that claimed, it necessarily follows that the composition of Uehara meets the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to demonstrate the claimed property as not being met by Uehara.
Claims 1, 2, and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilson et al. (US-20200120935-A1) (hereinafter referred to as “Wilson”).
Regarding claim 1, Wilson teaches a building construction composition (see Wilson at para. 0008, teaching an antimicrobial coating for a facing material for a building panel) comprising:
• hydrated gypsum, anhydrous gypsum, and/or calcium carbonate (see Wilson at para. 0024-0025, teaching the coating formulation may include a pigment, such as calcium carbonate);
• a starch and/or polymeric binder (see Wilson at para. 0037, teaching the coating formulation may contain a binder, such as an acrylic polymer); and
• a copper-containing compound (see Wilson at para. 0014 and 0021, teaching the composition as including a fungicide, such as copper pyrithione; copper pyrithione is a copper-containing compound).
Regarding claim 2, see Wilson at para. 0008, teaching the composition as being an antimicrobial coating.
Regarding claim 5, see Wilson at para. 0064, teaching the coating formulation may include a carrier, such as water.
Regarding claim 6, see Wilson at para. 0053, teaching the coating formulation may include a wetting agent which functions as a surfactant.
Regarding claim 7, Wilson does not necessitate the presence of formaldehyde in their composition; accordingly, Wilson necessarily teaches their composition may be free of formaldehyde.
Regarding claim 8, the claimed limitation is a property of the composition. Since the composition of Wilson is the same as that claimed, it necessarily follows that the composition of Wilson meets the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to Applicants to demonstrate the claimed property as not being met by Wilson.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wilson.
Regarding claim 3, Wilson teaches the composition according to claim 1 outlined above, wherein the composition comprises:
• hydrated gypsum, anhydrous gypsum and/or calcium carbonate in an amount from about 30 wt% to about 90 wt% of the composition (see Wilson at para. 0032, teaching the pigment (i.e., calcium carbonate) may be present in an amount of 65 wt% or more based on the weight of the coating formulation; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• the starch and/or polymeric binder in an amount from about 0.1 wt% to about 50 wt% of the composition (see Wilson at para. 0043, teaching the binder may be present in an amount of 20 wt% or more; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• the copper-containing compound in an amount from about 0.1 wt% to about 10 wt% of the composition (see Wilson at para. 0023, teaching the fungicide (i.e., copper pyrithione) may be present in the coating in an amount of 1 ppm or more and 10,000 ppm or less, or 0.0001 to 1 wt%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 and 6-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 6 of U.S. Patent No. US-9708220-B2 (hereinafter referred to as ‘220).
With respect to instant claims 1-3 and 6-8, although the claims at issue are not identical, they are not patentably distinct because instant claim 1 is met by claims 1 and 4 of ‘220 (the copper slag in claim 4 of ‘220 is a “copper-containing compound”); instant claim 2 is met by claim 1 of ‘220; instant claim 3 is met by claims 1 and 4 of ‘220; instant claim 6 is met by claim 6 of ‘220; instant claim 7 is met by claims 1 and 4 of ‘220 (the claims of ‘220 do not necessitate the presence of formaldehyde, and thus necessarily teach the composition as being free of formaldehyde); and instant claim 8 is met by claims 1 and 4 of ‘220 (since the composition of ‘220 is the same as that claimed, it necessarily follows that the composition demonstrates the claim 8 property).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
KR-100341935-B1 teaches an inorganic coating composition (see KR-100341935-B1 at Abstract).
Sugiyama (JP-2018008897-A), with reference to the included machine translation, teaches an industrial antibacterial, antifungal and algicidal agent (see Sugiyama at Abstract).
Lightner et al. (US-20050126430-A1) teaches a building article (see Lightner 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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