DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-7 in the reply filed on July 9, 2026 is acknowledged. Claims 8-18 are withdrawn from consideration.
Claim Objections
Claim 6 is objected to because of the following informalities: it recites a “Tg” value without defining what “Tg” means in the claim, which is improper. 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 1-5 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 7 of copending Application No. 18/854969. Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of copending Application No. 18/854969, as applied to claim 1, and further in view of Koketsu (JP 2011-012216A), the text of which is cited herein according to 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 1-5 and 7, with the exception of the copending claims not reciting maximum chloride or sulfate ion contents. However, the composition of the copending claims is presumed to be free of chloride and sulfate ions (i.e. and to have contents of less than 50 ppm) because no chloride and sulfate ions are recited to be present. Additionally, the claim requirement that the recited composition contains less than 50 ppm of each of chloride and sulfate ions is effectively a requirement that the composition is pure, which does not distinguish the claimed invention over the product of the copending claims because it is prima facie obvious to purify products that are otherwise taught or rendered obvious. See MPEP 2144.04 VII. As such, it would have been obvious to one of ordinary skill in the art to create a pure coating composition that only includes components that are intentionally added so that the composition only behaves as intended when such components were selected to be part of that composition.
Claim 6 differs from the copending claims because the copending claims do not recite a binder resin glass transition temperature, Tg. However, Koketsu teaches that polymeric emulsion particles (i.e. particles that are substantially all-“binder resin”) for coating compositions should have a Tg in the range of -80 to 0 °C so that an emulsion composition can be obtained that yields a dry film with excellent tackiness, adhesion, and low-temperature properties (par. 37). Therefore, it would have been obvious to one of ordinary skill in the art to configure the binder resin of the emulsion particles in the copending claims to have a Tg in the range of -80 to 0 °C in order to produce a dry coating having excellent tackiness, adhesion, and low-temperature properties.
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, 6, and 7 of copending Application No. 18/854971. Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 5, and 7 of copending Application No. 18/854971, as applied to claim 1, and further in view of Hoshino (US Pat. No. 4,948,772).
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 1-4, 6, and 7, with the exception of the copending claims not reciting maximum chloride or sulfate ion contents.
However, the composition of the co-pending claims is presumed to be free of chloride and sulfate ions (i.e. and to have contents of less than 50 ppm) because no chloride and sulfate ions are recited to be present. Additionally, the claim requirement that the recited composition contains less than 50 ppm of each of chloride and sulfate ions is effectively a requirement that the composition is pure, which does not distinguish the claimed invention over the prior art because it is prima facie obvious to purify products that are otherwise taught or rendered obvious. See MPEP 2144.04 VII.
The copending claims differ from instant claim 5 in that the copending claims do not recite what nonionic emulsifier is included in 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 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 polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, 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. As such, it would have been obvious to one of ordinary skill in the art to create a pure coating composition that only includes components that are intentionally added so that the composition only behaves as intended when such components were selected to be part of that composition.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 5, 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 6 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, as applied to claim 1, and further in view of Koketsu.
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 exceptions of the patented claim not reciting maximum chloride or sulfate ion contents or emulsion particles of the claimed composition. However, the composition of the co-pending claims is presumed to be free of chloride and sulfate ions (i.e. and to have contents of less than 50 ppm) because no chloride and sulfate ions are recited to be present. Additionally, the claim requirement that the recited composition contains less than 50 ppm of each of chloride and sulfate ions is effectively a requirement that the composition is pure, which does not distinguish the claimed invention over the prior art because it is prima facie obvious to purify products that are otherwise taught, or rendered obvious. See MPEP 2144.04 VII.
With respect to the recited emulsion particles and their composition, it is noted that 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 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 polyoxyethylene alkyl ether as a nonionic surfactant, or emulsifier, in the coating composition of the patented 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. As such, it would have been obvious to one of ordinary skill in the art to create a pure coating composition that only includes components that are intentionally added so that the composition only behaves as intended when such components were selected to be part of that composition.
Claim 6 differs from the patented claim because the patented claim does not recite a binder resin glass transition temperature, Tg. However, Koketsu teaches that polymeric emulsion particles (i.e. the particles are substantially all-“binder resin”) for coating compositions should have a Tg in the range of -80 to 0 °C so that an emulsion composition can be obtained that yields a dry film with excellent tackiness, adhesion, and low-temperature properties (par. 37). Therefore, it would have been obvious to one of ordinary skill in the art to configure the binder resin of the emulsion particles of the patented claim and Hoshino to have a Tg in the range of -80 to 0 °C in order to achieve a dry coating having excellent tackiness, adhesion, and low-temperature properties.
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 1-5 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, 4, and 5, 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.
Although neither of Togasaki or Hoshino teach maximum contents of chloride or sulfate ions in their composition or emulsion particles, which might be considered a difference from the current invention, neither of Togasaki or Hoshino require that chloride or sulfate ions be present or introduced into a composition. For example, and as discussed above, Togasaki and Hoshino each teach using a nonionic surfactant, which does not include chloride or sulfate ions, in their composition(s). Togasaki further teaches a number of different options for each component of his composition, with each set of options including compounds that do not have chloride or sulfate moieties (par. 28, 32, 36, 41, 44, 95, 105, 157, etc.). Hoshino, similarly, teaches a number of acrylate monomers that do not include chloride or sulfate moieties that may be used in his emulsion particles (col. 3, ln. 29-48; col. 4, ln. 40-65). As such, it would have been obvious to one or ordinary skill in the art to make a coating liquid comprising any of the options for the various components disclosed by Togasaki and Hoshino, including making a coating liquid that only comprises components that are free of (i.e. and contain less than 50 ppm) chloride and sulfate ions because Togasaki and Hoshino teach each of such components to be appropriate. Such a composition, which has been made with components that are not explicitly disclosed to include chloride or sulfate ions, is presumed to be free of chloride and sulfate ions because they have not been disclosed to be present. Furthermore, the claim requirement that the recited composition contains less than 50 ppm of each of chloride and sulfate ions is effectively a requirement that the composition is pure, which does not distinguish the claimed invention over the prior art because it is prima facie obvious to purify products that are otherwise taught, or rendered obvious, by the prior art. See MPEP 2144.04 VII. As such, it would have been obvious to one of ordinary skill in the art to create a pure coating composition that only includes components that are intentionally added so that the composition only behaves as intended when such components were selected to be part of that composition.
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 7, the water-soluble polymer in Togasaki’s coating liquid preferably includes a alkyl group having 6 to 26 carbon atoms (par. 138).
Claim 6 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 Koketsu (JP 2011-012216A), the text of which is cited herein according to an English language translation.
Regarding claim 6, the teachings of Togasaki and Hoshino differ from the current invention in that neither discloses emulsion particles containing a binder resin having a Tg of 10 °C or lower. However, as discussed above, Hoshino teaches using various monomers in his emulsion particles that may have a Tg of less than 0 °C. Although Hoshino expresses a preference for an emulsion particle binder with a higher Tg, Hoshino also discloses that the taught Tg range is merely preferable when his emulsion particles are used in a thermal recording material and further discloses that any combination of his taught monomers may be used to form his emulsion particles, which he also teaches may be used in a variety of different compositions and for a variety of different uses (col. 1, ln. 9-15; col. 5, ln. 13-21; col. 6, ln. 28-32). Koketsu further teaches polymeric emulsion particles (i.e. which are substantially all-“binder”) similar in composition to Hoshino’s that are to be used in various applications, including as interior and exterior coatings for buildings, among many others (Abstract, par. 59). Koketsu teaches that the polymer emulsion particles should have a Tg in the range of -80 to 0 °C so that an emulsion composition can be obtained that yields a dry film with excellent tackiness, adhesion, and low-temperature properties (par. 37). Therefore, it would have been obvious to one of ordinary skill in the art to configure the emulsion particles in the product of Togasaki and Hoshino to have a Tg in the range of -80 to 0 °C in order to achieve a dry coating having excellent tackiness, adhesion, and low-temperature properties. As Hoshino’s emulsion particles are at least 90 wt. % “binder”, including up to about 99 % binder (col. 4, ln.8-10), the binder in emulsion particles having a Tg of -80 to 0 °C is also expected to have a Tg in the range of -80 to 0 °C. Additionally, it would have been obvious to one of ordinary skill in the art to configure the binder in the prior art emulsion particles to have a Tg in the range of -80 to 0 °C because the particles are primarily “binder” and in order to achieve the beneficial effects disclosed by Koketsu, as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights