DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Preliminary Amendment
2. The preliminary amendment submitted on November 20, 2024 has been entered in the above-identified application. Claims 3-6, 8, 1012, 14, 18, and 21 are amended. Claims 1-21 are pending and under consideration.
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.
3. Claims 1-21 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 a coating composition, comprising “at least one non-aqueous dispersion (NAD) acrylic alkyd polymer, at least one non-aqueous dispersion (NAD) acrylic alkyd polymer, or combinations thereof” however, it is unclear if the coating composition, comprising “at least one non-aqueous dispersion (NAD) acrylic alkyd polymer, at least one non-aqueous dispersion (NAD) acrylic alkyd polymer” is reciting one or two polymers. For purposes of examination, the Examiner is interpretaing claim 1 as reciting one non-aqueous dispersion (NAD) acrylic alkyd polymer in combination with the at least one siloxane.
Claim 7 is missing a comma between “cyclopentasiloxane” and “cyclcohexsiloxane.”
Appropriate correction or clarification is required.
Claim Rejections - 35 USC § 103
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 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.
4. Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over McDaniel (US 2004/0109853 A1).
McDaniel discloses compositions (equivalent to the coating composition of the claimed invention) and methods for their use as components of surface treatments such as coatings. In some embodiments, the coating comprises a paint, a lacquer, a varnish, a shellac, a stain, a water repellent coating, or a combination thereof. In general, the coating comprises a binder, a liquid component, a colorant, an additive, or a combination thereof. In many embodiments, the coating comprises a solvent borne coating and the binder comprises an oil-based binder. In particular aspects, the oil-based binder comprises an oil, an alkyd, an oleoresinous binder, a fatty acid epoxide ester, or a combination thereof. In additional embodiments, the coating comprises an acrylic binder, an alkyd resin, a polyester binder, or a combination thereof. In additional embodiments, the binder comprises a silicone binder. In general aspects, the liquid component comprises a solvent, a thinner, a diluent, a plasticizer, or a combination thereof. In general embodiments, the coating comprises an additive such as an accelerator, an adhesion promoter, an antifoamer, anti-insect additive, an antioxidant, an antiskinning agent, a buffer, a catalyst, a coalescing agent, a corrosion inhibitor, a defoamer, a dehydrator, a dispersant, a drier, electrical additive, an emulsifier, a filler, a flame/fire retardant, a flatting agent, a flow control agent, a gloss aid, a leveling agent, a marproofing agent, a preservative, a silicone additive, a slip agent, a surfactant, a light stabilizer, a rheological control agent, a wetting additive, or a combination thereof (meeting the limitations of claim 14). The coatings can be applied to a substrate. (meeting the limitations of claim 18). Different coating compositions are described by McDaniel as examples of coatings with varying sets of properties. In certain embodiments, the coating is a nonaqueous dispersion ("NAD") lacquer, wherein the content of solvent is not sufficient to fully dissolve the thermoplastic binder. In certain aspects, a lacquer may comprise an additional binder (e.g., an alkyd), a colorant, a plasticizer, or a combination thereof (equivalent to the non-aqueous dispersion (NAD) acrylic alkyd polymer of the claimed invention) and may be used as a wood-coating designed to color or protect a wood surface (meeting the limitations of claims 15 and 17-21). In certain embodiments, the binder can comprise an alkyd resin comprising a polyester prepared from a polyol, a fatty acid, and a polybasic ("polyfunctional") organic acid or acid anhydride. Additional, various chemical moieties may be incorporated in an alkyd to modify a property. Examples of such moieties include an acrylic, and examples of polyol can include bisphenols (equivalent to the hyperbranched polyol of the claimed invention as recited in claims 8-11). In specific aspects, a silicone modified alkyd coating may comprise an additional binder capable of cross-linking with the silicone moiety (e.g., a melamine formaldehyde resin). In specific facets, a silicone modified alkyd coating may be selected as a coil coating, an architectural coating, a metal coating, an exterior coating, or a combination thereof. The silicone binder ("silicone") is a binder molecule based on silicone. Examples of a silicone binder include a polydimethyllsiloxane and a methyltriacetoxy silane, a methyltrimethoxysilane, a methyltricyclorhexylaminosilane, a fluorosilicone, a trifluoropropyl methyl polysiloxane, or a combination thereof (equivalent to the siloxane of the claimed invention and meeting the limitations of claims 5-7). See Abstract and paragraphs 0021, 0046-0058, 0068-0070, 0079, 0082, 0100, 0296-0298, 0308-0329, 0389-0428, 0487, 0545-0550).
With regards to the combination of the components of the coating, the concentration limitations, the volatile organic compound content, and the Tg of the components as recited in claims 2, 3, 4, 13, and 16, the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties, particularly given that McDaniel states that the selection of specific coating compositions can be made to obtain suitable set of properties for a particular use.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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, CALLIE SHOSHO can be reached at 571-272-1123. 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.
/SHEEBA AHMED/ Primary Examiner, Art Unit 1787
Prosecution Insights