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 .
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.
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.
Claim(s) 1, 3, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3112426 A1 to Kelly et al. hereinafter “Kelly” and further in view of EP 2586835 A1 to Nungesser et al. hereinafter “Nungesser”.
Kelly is directed to a coating formulation comprising polymer encapsulated TiO2 particles [0001].
Regarding claims 1, 3 and 7, Kelly teaches a composition Paint 2 in Table 1 [0020] comprising polymer coated TiO2 particles of Example 1 [0016 – 0017] , Rhoplex HG-706 acrylic binder, surfactant, defoamer coalescent, rheology modifier Acrysol RM-2020 and rheology modifier Acrysol RM-8W. Kelly is silent as to the use of an organic matting agent hence attention is directed to Nungesser.
Nungesser is directed to thickened aqueous dispersions of large polymeric particles [0001]. Nungesser teaches the use of matting agents having a particle diameter of 0.5 to 150 microns [0020]. Therefore, it would have been obvious to one of ordinary skill to add a known additive like a matting agent to modify the surface gloss as this is a predictable variation with a reasonable expectation of success. One of ordinary skill would expect a matting agent to scatter light and lower reflection in the coating.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”).
As to claim 6, Kelly is silent as to the latex polymer particle size of the Rhoplex HG-706 acrylic binder. However, as a fine-particle, ambient-cure acrylic binder designed for high-gloss and semi-gloss coatings it would be obvious that its latex polymer particle size falls in the typical sub-micron range common for high performance coatings generally between 50nm – 300nm.
Allowable Subject Matter
Claims 2, 4 and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Prior Art of Record
US 7579081.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 7/24/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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