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 without traverse of Group I (claims 1-7) in the reply filed on 6/16/2026 is acknowledged.
Groups II-III (claims 8-20) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/16/2026.
Specification
The disclosure is objected to because of the following informalities:
The specification recites “at least one resin selected from the group consisting of a styrene, a styrene-ethylene/butylene-styrene block polymer and a mixture thereof” and “Piccolastic A75 is a styrene monomer” in multiple sections [e.g., 0018, 0037 spec.]. This is misleading because styrene is a monomer, not a resin or polymer; and Piccolastic A75 is not a styrene monomer, but a polystyrene.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-7 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.
Claim 1 recites “at least one resin selected from the group consisting of a styrene, a styrene-ethylene/butylene-styrene block polymer and a mixture thereof” which renders the claim indefinite, because styrene is a monomer, not a resin or polymer. Applicant stated that “Piccolastic A75 is a styrene monomer” [0037 spec.]. This is incorrect. Piccolastic A75 is not a styrene monomer. It is a polystyrene. It is not clear if the recited “styrene” in claim 1 is a monomer or polystyrene; and it is not clear if the recited “mixture” is a mixture of styrene and styrene-ethylene/butylene-styrene block polymer or a mixture of polystyrene and styrene-ethylene/butylene-styrene block polymer. For the purpose of further examination, based on the broadest reasonable interpretation, both styrene monomer and polystyrene will be considered meeting the recited “styrene”.
Claims 2-7 are rejected likewise as depending on claim 1.
Similarly, claims 6-7 recite “between 1 and 1.5 weight percent styrene”. It is not clear if the recited “styrene” is styrene monomer or polystyrene. For the purpose of further examination, based on the broadest reasonable interpretation, both styrene monomer and polystyrene will be considered meeting the recited “styrene”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al (US 20210107044 A1).
Regarding claim 1, Suzuki teaches a coating composition comprising an undercoat layer (corresponding to the claimed base coat) and an antifouling layer bonded to the undercoat layer (corresponding to the claimed top coat) [abstract].
The undercoat layer comprises a styrene-based thermoplastic elastomer such as SEBS (styrene-ethylene-butylene-styrene block copolymer) [0060]. This reads on the claimed styrene-ethylene/butylene-styrene block polymer.
The undercoat layer comprises a styrene-based tackifier resin such as Piccolastic A75 [0072, 0095]. This reads on the claimed styrene.
The undercoat layer comprises a solvent [0056].
Regarding claims 2-5, the recited “the composition is adapted, when the base coat is applied to a substrate and allowed to dry, and the top coat is applied to the dried base coat and allowed to dry, to provide a dried coating that can be removed from the substrate by physical peeling in a single piece across at least 50 percent of the surface of the substrate” in claim 2 is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Nonetheless, Suzuki teaches that the coating film is capable of being peeled off in the shape of sheet to facilitate a coating film removal work [abstract].
The limitations in claims 3-5 are addressed the same way as above.
Allowable Subject Matter
Claims 6-7 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.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claims 6-7 are directed to a coating composition comprising: a base coat component and a top coat component, wherein the base coat component comprises at least one resin selected from the group consisting of a styrene, a styrene- ethylene/butylene-styrene block polymer and a mixture thereof, and at least one solvent for the resin, wherein the base coat composition comprises between 5 and 10 weight percent styrene- ethylene/butylene-styrene copolymer and between 1 and 1.5 weight percent styrene.
There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Suzuki et al (US 20210107044 A1). Suzuki teaches a coating composition comprising: a base coat component and a top coat component, wherein the base coat component comprises at least one resin selected from the group consisting of a styrene, a styrene- ethylene/butylene-styrene block polymer and a mixture thereof, and at least one solvent for the resin.
However, Suzuki does not teach wherein the base coat composition comprises between 5 and 10 weight percent styrene- ethylene/butylene-styrene copolymer and between 1 and 1.5 weight percent styrene.
Suzuki teaches an undercoat composition made by mixing 65% of SEBS resin and 35% of Piccolastic A75 [Inventive Example 3, 0095, Table 1]; then dissolving 80 parts of the mixture with 20 parts of toluene [Inventive Example 1, 0079]. Both the amount SEBS resin and the amount of polystyrene (Piccolastic A75) are significantly higher than the claimed range of 5-10 wt% and 1-1.5 wt%, receptively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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