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
Claim 1 is objected to because of the following informalities: i) “composition [composition (C), herein after]” should instead be –composition (C)--; ii) “percent by weight [wt. %, herein after]” should instead be –wt.%--;, iii) at least one polymer [polymer (A), herein after]” should instead be –polymer (A)--. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “or/and” should instead be –and/or--. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “at least one polymer [polymer (A), herein after]” should instead be –polymer (A)--. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: i) “by using” should instead be –with--; and ii) “(C), according to claim 1, wherein” should instead be –(C) according to claim 1, wherein-- (remove the comma after (C)). Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “coating, by using the composition (C), according to claim 1,” should instead be –coating with the composition (C) according to claim 1,-- (remove the commas after ‘coating’ and (C)). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 5, 7-13 and 15-16 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.
Regarding claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ranges, and the claim also recites narrower ‘preferred’ ranges which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 5, firstly, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (see MPEP § 2173.05(d)). Secondly, the phrases “may contain” or “being able to contain” renders the claim indefinite as it is unclear whether the limitations following the phrase are part of the claimed invention, are required, or are optional.
Thirdly, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of acrylic ester, and the claim also recites n-butyl acrylate which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 7, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ranges, and the claim also recites narrower ‘preferred’ ranges which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 8, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ranges, and the claim also recites narrower ‘preferred’ ranges which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (see MPEP § 2173.05(d)).
Regarding claim 10, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (see MPEP § 2173.05(d)).
Regarding claim 11, there is a lack of antecedent basis for the “at least one crosslinking agent”. Amending to recite the --composition (C) further comprises at least one crosslinking agent-- would establish the required basis.
Regarding claim 12, there is a lack of antecedent basis for the “at least one surfactant”. Amending to recite the --composition (C) further comprises at least one surfactant-- would establish the required basis.
Regarding claim 13, there is a lack of antecedent basis for all components recited after filler. Notably claim 1, from which claim 13 depends does not recite any components outside of the aqueous dispersion of polymer (A), the redispersible polymer powder, and the filler. The claim is further indefinite as it is not clear what is meant by “ingredient (IC)” as the claim fails to define or otherwise illuminate what is meant.
Regarding claim 15, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ranges of loss of volume, and the claim also recites narrower ‘preferred’ ranges which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 16, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation of ranges of elastic recovery, and the claim also recites narrower ‘preferred’ ranges which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-10 and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hyman et al. (US PGPub 2010/0294430).
Regarding claims 1-2 and 7-8, Hyman teaches aqueous dispersions, suitable for use as joint and sealing compounds, comprising (a) at least one (meth)acrylic polymer, (b) at least one vinyl acetate polymer, (c) water, (d) optional filler, and further optional components (abstract; [0013]; [0039]).
Hyman teaches that (a) is selected from homopolymers and copolymers ([0017]) and is in the form of a polymer latex ([0021]; [0044])(instant aqueous dispersion polymer (A); instant acrylic polymer) and teaches that (b) is in the form of a redispersible polymer powder ([0025]; [0045]) (instant redispersible polymer powder).
Hyman further teaches that (c) water is present from 2-60 wt% of the dispersion, the (d) filler is present in an amount of up to 50 wt% of the dispersion ([0035]), and the sum of (a)+(b)+(d) is 40-85 wt% ([0036]), where (a) and (b) are present in a ratio range of 30:70 to 70:30 (abstract; [0032]). Hyman exemplifies compositions: Example 1 comprising ~45wt% acrylic latex, ~29wt% redispersible polymer, ~4wt% filler (aluminum silicate); and Example 2 comprising ~26wt% acrylic latex, ~16 wt% redispersible polymer, ~39wt% filler (limestone + aluminum silicate)(Table).
Regarding claim 3, Hyman teaches the compositions as set forth above and further teaches the (a) (meth)acrylic polymer includes structural units of acrylic acid, methacrylic acid, any (meth)acrylic acid esters, and/or combinations thereof ([0017]).
Regarding claims 4-6, Hyman teaches the compositions as set forth above and further teaches the (b) vinyl acetate polymer is selected from homopolymers and copolymers, preferably a copolymer comprising vinyl acetate and ethylene and optional ethylenically unsaturated comonomers ([0022]). Hyman teaches the optional comonomers are preferably present from 0-25 wt%, the vinyl acetate is 70-95 wt%, and the ethylene is 5-30 wt% ([0022]).
Regarding claims 9-10, Hyman teaches the compositions as set forth above and further teaches the (d) filler is selected from inert or reactive inorganic fillers, preferably inert fillers selected from calcium carbonate, including naturally occurring, clay, talc, gypsum, etc. ([0034]).
Regarding claim 13, Hyman teaches the compositions as set forth in claim 1 above and further teaches obtaining the composition by mixing the components ([0046]).
Regarding claim 14, Hyman teaches the compositions as set forth in claim 1 above and further teaches the compositions utilized as joint or sealing compounds ([0014]).
Regarding claims 15-16, Hyman teaches the compositions as set forth in claim 1 above and further teaches the compositions used are dried (instant cured) after application ([0055]). Hyman additionally teaches the compositions have high flexibility and high adhesion strength ([0054]) but does not specifically teach a loss of volume of less than 25.0% (claim 15) or elastic recover at 60% elongation of higher than 60.0% (claim 16). However, Hyman teaches the claimed composition, comprising the claimed components in the claimed amounts, and used in the claimed manner. It is noted that 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 17-18, Hyman teaches the composition as set forth in claim 1 above and further teaches methods of producing flexible joints comprising (i) providing a first planar substrate, (ii) abutting a second planar substrate, (iii) applying the composition to the joint, and (iv) allowing the composition to dry ([0055]; see also [0051]).
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.
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.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hyman et al. (US PGPub 2010/0294430) in view of Patel et al. (US PGPub 2009/0306255).
Regarding claim 11, Hyman teaches the compositions as set forth in claim 1 above and further invites inclusion of optional additives ([0039]).
Hyman is silent to the inclusion of crosslinking agents. However, Patel teaches similar aqueous adhesive compositions comprising the combination of water-soluble polymers, vinyl acetate water-redispersible polymers, and optional fillers and additives ([0009]; [0029]) to obtain compositions suitable for industrial applications ([0034]). Patel teaches known additives for the aqueous compositions include crosslinkers such as polyisocyanates ([0029]). Patel and Hyman are analogous art and are combinable because they are concerned with the same field of endeavor, namely aqueous compositions suitable for industrial adhesive applications. At the time of filing, a person having ordinary skill in the art would have found it obvious to include the crosslinkers of Patel in the composition of Hyman and would have been motivated to do so as Hyman invites known additives and further as Patel teaches it is known and common to include crosslinkers in the aqueous adhesive compositions ([0029]).
Regarding claim 12, Hyman teaches the compositions as set forth in claim 1 above and further invites inclusion of optional additives ([0039]).
Hyman is silent to the inclusion of surfactant(s). However, Patel teaches similar aqueous adhesive compositions comprising the combination of water-soluble polymers, vinyl acetate water-redispersible polymers, and optional fillers and additives ([0009]; [0029]) to obtain compositions suitable for industrial applications ([0034]). Patel teaches known additives for the aqueous compositions include nonionic, anionic, cationic or amphoteric surfactants ([0029]). Patel and Hyman are analogous art and are combinable because they are concerned with the same field of endeavor, namely aqueous compositions suitable for industrial adhesive applications. At the time of filing, a person having ordinary skill in the art would have found it obvious to include the surfactants of Patel in the composition of Hyman and would have been motivated to do so as Hyman invites known additives and further as Patel teaches it is known and common to include surfactants in the aqueous adhesive compositions ([0029]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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