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 1-14 and 16-20 in the reply filed on 11/6/25 is acknowledged. The traversal is on the ground(s) that the written opinion of the International Searching Authority found unity. This is not found persuasive because no specific argument is made regarding the basis for the restriction as outlined in the office action dated 9/29/25.
The requirement is still deemed proper and is therefore made FINAL. Claim 15 is withdrawn from consideration.
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.
Claim(s) 1-3, 5-9, 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reil et al WO 2020/232011.
Per claims 1, 6-7, 12, 14, Reil teaches a process for applying at least two coating compositions having different leveling properties (low shear viscosity) to an object to achieve low sagging, good leveling [0087] comprising a plurality of target areas (abstract), comprising first providing a first coating composition to a vertical part of the substrate (low shear viscosity of 15 to 32 Pa/s) [0072] and providing a second coating composition to a horizontal part of the substrate (low shear viscosity of 3 to 20 Pa/s) [0071], wherein horizontal and vertical parts of the substrate are considered to be different properties of the target areas. The difference in low shear viscosity corresponds to the difference between good sag resistance and good leveling properties.
Per claims 2-3, 5, Reil teaches that the coating compositions can be formed by various mixtures and combinations at various weight distributions, which would inherently and necessarily form the desired shear viscosity as intended in the prior art (see Examples 1-12). Furthermore, Reil teaches various components to the mixture that are used to control the low shear viscosity (e.g., rheology modifiers, [0041]; swelling solvents [0038]).
Per claims 8-9, Reil teaches a rheology modifier which is interpreted as the claimed SCA, which contains a polymer (alkali) [0150]. Alternatively, Reil teaches a dispersion polymer present in the film forming resin which would read on the SCA as claimed [0033]-[0034].
Per claim 13, Reil teaches curing and drying the coating [0100]-[0101].
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.
Claim(s) 4, 11, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reil et al WO 2020/232011.
Per claim 4, Reil is silent regarding the claimed process of selecting higher fraction components with desired properties to yield the desired final property. However, as discussed above in claims 2-3, Reil teaches that the coating compositions can be formed by various mixtures and combinations at various weight distributions, which would inherently and necessarily form the desired shear viscosity as intended in the prior art (see Examples 1-12). Furthermore, Reil teaches various components to the mixture that are used to control the low shear viscosity (e.g., rheology modifiers, [0041]; swelling solvents [0038]). As such, it would have been obvious to one of ordinary skill in the art to have utilized components with high sag resistance (e.g., higher viscosity at low shear rates) in order to yield the desired higher sag resistance in the final mixture with a reasonable expectation for success and predictable results.
Per claims 11 and 18-20, Reil teaches that the resin is present in at least 10 wt% of the composition [0036], which overlaps with the claimed range. 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). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success.
Allowable Subject Matter
Claims 10 and 16-17 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.
The following is a statement of reasons for the indication of allowable subject matter: Reil does not teach the claimed SCA being obtained according to one of the claimed processes and there would have been no apparent reason or motivation to have modified the prior art to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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/NATHAN T LEONG/Primary Examiner, Art Unit 1715
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