DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on April 28, 2026 is acknowledged. Claims 8-18 are withdrawn from consideration.
Claim Objections
Claim 5 is objected to because of the following informalities: it recites an “HLB value”, but does not define the acronym “HLB”. Appropriate correction is required.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6, and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/854970. Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/854970 in view of Hoshino (US Pat. No. 4,948,772). Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/85497 in view of Haraguchi (US PG Pub. No. 2012/0077911).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a coating liquid explicitly claimed to have or inherently possessing every feature of instant claims 1-3, 6, and 7.
The copending claims differ from instant claim 4 in that the copending claims do not recite a composition of the emulsion particles. However, Hoshino teaches including emulsion particles comprising a polymer (i.e. “binder resin”) and a surfactant, which may be a nonionic surfactant (i.e. “nonionic emulsifier”) such as polyoxyethylene alkyl ether, in coating compositions (col. 3, ln. 17-56; col. 4, ln. ln. 4-5). Hoshino discloses that the amount of surfactant employed is typically 0.1 to 10 wt. % based on the total weight of monomer used to make the particles (col. 4, ln. 8-10). As Hoshino makes no disclosure of there being a significant change in weight upon the monomers being polymerized to form the particles, the proportion of surfactant (i.e. nonionic emulsifier) to emulsion polymer (i.e. binder resin) is expected to be approximately the same as the proportion of surfactant to starting monomer weight. Hoshino discloses that his emulsion particles may be included as an additive for various types of coating compositions for use on various types of substrates, and that films formed from compositions including his emulsion particles show good smoothness and binding power and exhibit improvements in weight-saving, hardness, abrasion resistance, and heat resistance (col. 6, ln. 16-32). Therefore, it would have been obvious to one of ordinary skill in the art to include emulsion particles comprising a binder resin and 0.1 to 10 wt. % of polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, based on the binder resin content in the particles in the coating composition of the copending claims in order to achieve good or improved smoothness, binding power, weight-saving, hardness, abrasion resistance, and heat resistance in the coatings formed with the taught coating liquid. The instantly claimed emulsifier content is overlapped and rendered obvious by Hoshino. See MPEP 2144.05.
The copending claims differ from instant claim 5 in that the HLB value of the nonionic emulsifier is not recited. However, Haraguchi also teaches an aqueous coating material that may include polyoxyethylene alkyl ether a nonionic surfactant and discloses that the HLB value of the surfactant is preferably 16, 17, or even 18 or more in order to achieve a coating with good stain resistance and to provide a surface with higher hydrophilicity (par. 51, 53). Therefore, it would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkyl ether having an HLB of 16, 17, or even 18 or more as the surfactant (i.e. nonionic emulsifier) in the emulsion particles of the copending claims order to produce coatings having surfaces with good stain resistance and higher hydrophilicity. The instantly claimed HLB range is overlapped and rendered obvious by Haraguchi. See MPEP 2144.05.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7 of copending Application No. 18/854971. Claims 4 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7 of copending Application No. 18/854971 in view of Hoshino. Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7 of copending Application No. 18/854971 in view of Haraguchi. Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7 of copending Application No. 18/854971 in view of Togasaki (WO 2021/153764 A1), cited herein according to US PG Pub. No. 2023/0114711, which is an English language translation,
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a coating liquid explicitly claimed to have or inherently possessing every feature of instant claims 1-3.
The copending claims differ from instant claims 4 and 6 in that the copending claims do not recite a composition of the emulsion particles. However, Hoshino teaches including emulsion particles comprising a polymer (i.e. “binder resin”) and a surfactant, which may be a nonionic surfactant (i.e. “nonionic emulsifier”) such as polyoxyethylene alkyl ether, in coating compositions (col. 3, ln. 17-56; col. 4, ln. ln. 4-5). Hoshino discloses that the amount of surfactant employed is typically 0.1 to 10 wt. % based on the total weight of monomer used to make the particles (col. 4, ln. 8-10). As Hoshino makes no disclosure of there being a significant change in weight upon the monomers being polymerized to form the particles, the proportion of surfactant (i.e. nonionic emulsifier) to emulsion polymer (i.e. binder resin) is expected to be approximately the same as the proportion of surfactant to starting monomer weight. Hoshino discloses that his emulsion particles may be included as an additive for various types of coating compositions for use on various types of substrates, and that films formed from compositions including his emulsion particles show good smoothness and binding power and exhibit improvements in weight-saving, hardness, abrasion resistance, and heat resistance (col. 6, ln. 16-32). Therefore, it would have been obvious to one of ordinary skill in the art to include emulsion particles comprising a binder resin and 0.1 to 10 wt. % of polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, based on the binder resin content in the particles in the coating composition of the copending claims in order to achieve good or improved smoothness, binding power, weight-saving, hardness, abrasion resistance, and heat resistance in the coatings formed with the taught coating liquid. The instantly claimed emulsifier content is overlapped and rendered obvious by Hoshino. See MPEP 2144.05.
The copending claims differ from instant claim 5 in that the HLB value of the nonionic emulsifier is not recited. However, Haraguchi also teaches an aqueous coating material that may include polyoxyethylene alkyl ether a nonionic surfactant and discloses that the HLB value of the surfactant is preferably 16, 17, or even 18 or more in order to achieve a coating with good stain resistance and to provide a surface with higher hydrophilicity (par. 51, 53). Therefore, it would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkyl ether having an HLB of 16, 17, or even 18 or more as the surfactant (i.e. nonionic emulsifier) in the emulsion particles of the copending claims order to produce coatings having surfaces with good stain resistance and higher hydrophilicity. The instantly claimed HLB range is overlapped and rendered obvious by Haraguchi. See MPEP 2144.05.
The copending claims differ from claim 7 in that the hydrophobic group on the water-soluble polymer is not disclosed. However, Togasaki teaches a very similar coating composition and discloses that it is preferable for the water-soluble polymer to have a hydrophobic group including an alkyl chain having 6 to 26 carbon atoms (par. 138). Therefore, it would have been obvious to one of ordinary skill in the art to configure the water-soluble polymer of the copending claims to have a hydrophobic group including an alkyl chain having 6 to 26 carbon atoms because Togasaki teaches doing so to be preferable for such coating compositions.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6, and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 19/318380 in view of Hoshino. Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 19/318380 in view of Hoshino and further in view of Haraguchi.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a coating liquid explicitly claimed to have, rendering obvious due to overlapping numerical ranges (see MPEP 2144.05) or inherently possessing every feature of instant claims 1, 4, 6, and 7 with the exception of the copending claims not reciting emulsion particles of the claimed composition. However, Hoshino teaches including emulsion particles comprising a polymer (i.e. “binder resin”) and a surfactant, which may be a nonionic surfactant (i.e. “nonionic emulsifier”) such as polyoxyethylene alkyl ether, in coating compositions (col. 3, ln. 17-56; col. 4, ln. ln. 4-5). Hoshino discloses that the amount of surfactant employed is typically 0.1 to 10 wt. % based on the total weight of monomer used to make the particles (col. 4, ln. 8-10). As Hoshino makes no disclosure of there being a significant change in weight upon the monomers being polymerized to form the particles, the proportion of surfactant (i.e. nonionic emulsifier) to emulsion polymer (i.e. binder resin) is expected to be approximately the same as the proportion of surfactant to starting monomer weight. Hoshino discloses that his emulsion particles may be included as an additive for various types of coating compositions for use on various types of substrates, and that films formed from compositions including his emulsion particles show good smoothness and binding power and exhibit improvements in weight-saving, hardness, abrasion resistance, and heat resistance (col. 6, ln. 16-32). Therefore, it would have been obvious to one of ordinary skill in the art to include emulsion particles comprising a binder resin and 0.1 to 10 wt. % of polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, based on the binder resin content in the particles in the coating composition of the copending claims in order to achieve good or improved smoothness, binding power, weight-saving, hardness, abrasion resistance, and heat resistance in the coatings formed with the taught coating liquid. The instantly claimed emulsifier content is overlapped and rendered obvious by Hoshino. See MPEP 2144.05.
The copending claims differ from instant claim 5 in that the HLB value of the nonionic emulsifier is not recited. However, Haraguchi also teaches an aqueous coating material that may include polyoxyethylene alkyl ether a nonionic surfactant and discloses that the HLB value of the surfactant is preferably 16, 17, or even 18 or more in order to achieve a coating with good stain resistance and to provide a surface with higher hydrophilicity (par. 51, 53). Therefore, it would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkyl ether having an HLB of 16, 17, or even 18 or more as the surfactant (i.e. nonionic emulsifier) in the emulsion particles of the copending claims order to produce coatings having surfaces with good stain resistance and higher hydrophilicity. The instantly claimed HLB range is overlapped and rendered obvious by Haraguchi. See MPEP 2144.05.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,435,236 in view of Hoshino. Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,435,236 in view of Hoshino and further in view of Haraguchi.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim recites a coating liquid explicitly claimed to have or inherently possessing every feature of instant claims 1, 4, 6, and 7 with the exception of the copending claims not reciting emulsion particles of the claimed composition. However, Hoshino teaches including emulsion particles comprising a polymer (i.e. “binder resin”) and a surfactant, which may be a nonionic surfactant (i.e. “nonionic emulsifier”) such as polyoxyethylene alkyl ether, in coating compositions (col. 3, ln. 17-56; col. 4, ln. ln. 4-5). Hoshino discloses that the amount of surfactant employed is typically 0.1 to 10 wt. % based on the total weight of monomer used to make the particles (col. 4, ln. 8-10). As Hoshino makes no disclosure of there being a significant change in weight upon the monomers being polymerized to form the particles, the proportion of surfactant (i.e. nonionic emulsifier) to emulsion polymer (i.e. binder resin) is expected to be approximately the same as the proportion of surfactant to starting monomer weight. Hoshino discloses that his emulsion particles may be included as an additive for various types of coating compositions for use on various types of substrates, and that films formed from compositions including his emulsion particles show good smoothness and binding power and exhibit improvements in weight-saving, hardness, abrasion resistance, and heat resistance (col. 6, ln. 16-32). Therefore, it would have been obvious to one of ordinary skill in the art to include emulsion particles comprising a binder resin and 0.1 to 10 wt. % of polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, based on the binder resin content in the particles in the coating composition of the patented claim in order to achieve good or improved smoothness, binding power, weight-saving, hardness, abrasion resistance, and heat resistance in the coatings formed with the taught coating liquid. The instantly claimed emulsifier content is overlapped and rendered obvious by Hoshino. See MPEP 2144.05.
The patented claim differs from instant claim 5 in that the HLB value of the nonionic emulsifier is not recited. However, Haraguchi also teaches an aqueous coating material that may include polyoxyethylene alkyl ether a nonionic surfactant and discloses that the HLB value of the surfactant is preferably 16, 17, or even 18 or more in order to achieve a coating with good stain resistance and to provide a surface with higher hydrophilicity (par. 51, 53). Therefore, it would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkyl ether having an HLB of 16, 17, or even 18 or more as the surfactant (i.e. nonionic emulsifier) in the emulsion particles of the patented claim order to produce coatings having surfaces with good stain resistance and higher hydrophilicity. The instantly claimed HLB range is overlapped and rendered obvious by Haraguchi. See MPEP 2144.05.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Togasaki (WO 2021/153764 A1), cited herein according to US PG Pub. No. 2023/0114711, which is an English language translation, in view of Hoshino (US Pat. No. 4,948,772).
Regarding claims 1 and 6, Togasaki teaches a coating liquid comprising aerogel particles, a water-soluble polymer having a hydrophobic group, and an liquid medium (Abstract).
The teachings of Togasaki differ from the current invention in that his coating liquid is not explicitly disclosed to include emulsion particles comprising a binder resin and a nonionic emulsifier. However, Togasaki does disclose that the coating liquid may include an additive, such as an emulsion resin and surfactant (par. 168, 171), exemplifies forming an emulsion with aerogel particles and an acrylic resin (par. 193, 195, 198, etc.), and teaches that polyoxyethylene alkyl ether, is a type of nonionic surfactant that can be used in aerogel production (par. 95). Togasaki also teaches that his coating may be applied to a variety of different support materials (par. 182).
Hoshino further teaches including emulsion particles comprising a polymer (i.e. “binder resin”), which may be an acrylic polymer, and a surfactant, which may be a nonionic surfactant such as polyoxyethylene alkyl ether, in coating compositions (col. 3, ln. 17-56; col. 4, ln. ln. 4-5). Hoshino discloses that his emulsion particles may be included in an additive for various types of coating compositions for use on various types of substrates, and that films formed from compositions including his emulsion particles show good smoothness and binding power and exhibit improvements in weight-saving, hardness, abrasion resistance, and heat resistance (col. 6, ln. 16-32). Therefore, it would have been obvious to one of ordinary skill in the art to include emulsion particles comprising a binder resin, such as an acrylic polymer, and polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, as taught by Hoshino, in Togasaki’s coating composition because Togasaki teaches that additives such as emulsifiers and surfactants may be used in his composition and already demonstrates that he considers acrylic and polyoxyethylene alkyl ether to be appropriate materials for use in producing his product, and in order to achieve good or improved smoothness, binding power, weight-saving, hardness, abrasion resistance, and heat resistance in the coatings formed with the taught coating liquid.
Regarding claims 2 and 3, at least some of the aerogel particles in Togasaki’s coating liquid form aggregates having an average diameter that is 2 to 40 times the average diameter of the aerogel particles (par. 9).
Regarding claim 4, Hoshino discloses that the amount of surfactant employed is typically 0.1 to 10 wt. % based on the total weight of monomer used to make the particles (col. 4, ln. 8-10). As Hoshino makes no disclosure of there being a significant change in weight upon the monomers being polymerized to form the particles, the proportion of surfactant (i.e. nonionic emulsifier) to emulsion polymer (i.e. binder resin) is expected to be approximately the same as the proportion of surfactant to starting monomer weight. Therefore, the instantly claimed emulsifier to binder resin content is overlapped and rendered obvious by Hoshino’s teachings. See MPEP 2144.05.
Regarding claim 7, the water-soluble polymer in Togasaki’s coating liquid preferably includes a alkyl group having 6 to 26 carbon atoms (par. 138).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Togasaki and Hoshino, as applied to claim 1 above, and further in view of Haraguchi (US PG Pub. No. 2012/0077911).
Regarding claim 5, the teachings of the cited prior art differ from the current invention in that neither teaches an HLB value of an emulsifier. However, as discussed above, it would have been obvious to include Hoshino’s emulsion particles, which comprise polyoxyethylene alkyl ether as a surfactant (i.e. nonionic emulsifier), in Togasaki’s coating composition. Togasaki further teaches that the liquid medium in his coating composition is preferably an aqueous solvent containing water (par. 152). Haraguchi also teaches an aqueous coating material that may include polyoxyethylene alkyl ether as a nonionic surfactant and discloses that the HLB value of the surfactant is preferably 16, 17, or even 18 or more in order to achieve a coating with good stain resistance and to provide a surface with higher hydrophilicity (par. 51, 53). Therefore, it would have been obvious to one of ordinary skill in the art to select a polyoxyethylene alkyl ether having an HLB of 16, 17, or even 18 or more as the surfactant (i.e. nonionic emulsifier) in the emulsion particles of the prior art in order to produce coatings having surfaces with good stain resistance and higher hydrophilicity. The instantly claimed HLB range is overlapped and rendered obvious by Haraguchi. See MPEP 2144.05.
Conclusion
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights