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 .
Response to Arguments
Applicant's arguments filed 7/21/2024 have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious to utilize the low titanium dioxide coating of Gittins to the thermoplastic composite structure of Kunal. It is argued that the Kunal teaches high melt flow index resins using fiver reinforced polymer core for automotive parts and not the wall covering of the instant application.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The claims only require that the material comprises a non-woven base veil with randomly orientated fibers. Gittins teaches all of the claimed requirements for the actual composition, and the Kunal reference is merely brought in to show that the treating of a different base substrate is known in the art. The fact that the intended use is an automotive part is immaterial as long as it reads on the required limitation of a non-woven base with randomly oriented fibers.
Applicant further argues that the instant application has the benefits of maintaining opacity and whiteness while improving glue penetration. They even argue that the instant specification provides identifies this as a problem.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., opacity, whiteness, penetration, and intended use of a wall covering) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is noted that if these limitations were to be present in the independent claim the arguments would be found to be persuasive and the rejections as currently written would be withdrawn.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Gittins et al, US Patent Publication 20110168057 in view of Kunal et al, US Patent Publication 2014/0051310.
Regarding claims 1-24, Gittins discloses a formulation for a fibrous non-woven facing material, wherein the formulation comprises:
(i) a binder (coating vehicle [0007]);
(ii) a filler (GCC [0021]); and
(iii) an extender (kaolin [0020]);
wherein a median particle size, d50, of the extender is equal to or less than 3.5 µm less than 2 and smaller [0020]), and wherein the extender has a non-spherical morphology (teaches the use of "equivalent spherical diameter implying a non-spherical morphology [0016]);
wherein a median particle size, d50, of the filler is equal to or less than 3.0 µm (less than 0.5 microns [0021]) and a d90 equal to or less than 6.0 µm (less than 5 [0021]);
and wherein the formulation comprises less than 13 wt% titanium dioxide on a dry solids basis (Abstract) in the claimed ratios (see Table with example and [0026- 0029]).
It is also noted that the same materials being utilizing in the coating formation the refractive index of the formulation and produce would also hold the same values. (see In re Best).
Gittins is silent to the value of a d10 measurement, but does teach d50 values that are less than the claimed amount [0021].
While it is not explicitly stated, it is obvious to one of ordinary skill in the art at the time of the invention that if the d50 value is less than 1 micron, then the d10 value would also have to be less than 1 micron.
Gittens teaches that the formulation is utilized to coat a substrate, but is merely silent as to what the substrate is.
In the same field of endeavor of making a coated material for composite uses, Kunal teaches that the surface layer of the product can be a veil made up of a non- woven construction that is then coated of impregnated with the finder and other additives [0061 and 0081].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the formulation of Gittins on the veil substrate of Kunal for the benefit of utilizing a known components (the formulation) on a known substrate (non-woven material) to arrive at a predictable end result in a conventional manner.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
