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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/15/2025 and 12/20/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 20220363937 A1), herein Hughes.
In regards to claim 1, Hughes teaches a coated building panel comprising a fibrous substrate and a coating applied to the panel surface [Abstract, Claims 1 and 12, 0003]. The coating comprises a binder composition, an antimicrobial composition, stabilization composition comprising; a silicate compound (i.e., a thickening agent) ; and a surfactant having an HLB value between about 10 and about 14 [0004, Claim 1]. The HLB range overlaps the claimed range. Hughes further teaches the binder includes a carrier such as a latex polymer [0023]. Hughes further teaches the binder includes pigments [0023, 0035]. The antimicrobial composition comprises quaternary ammonium compounds, and wherein the quaternary ammonium compounds is present in an amount ranging from about 0.1 wt. % to about 10.0 wt. % based on the total weight of the coating [Claim 6, 0052, 0061].
While Hughes does not teach a singular example of the instantly claimed coated panel, Hughes teaches conventionally known coated panels comprised of the claimed coating comprising a latex polymer, pigments, thickening agent, surfactant composition and antimicrobial composition. Accordingly, this it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine these features as this is considered a conventionally known combination of features known to form a coated panel and one would have had a reasonable expectation of success.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In regards to claims 2-3, Hughes further teaches the ammonium compound is didecyl dimethyl ammonium chloride [0062].
In regards to claim 6, Hughes teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073].
Hughes differs from claim 6 by teaching polysorbate 81 and polysorbate 85 in a list of possible surfactants, such that it cannot be said that their combination is not anticipated.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have employed any of the surfactants taught by Hughes, including polysorbate 81 and polysorbate 85. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Claims 6-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 20220363937 A1), herein Hughes, as applied to claim 1 above, and further in view of Shi et al. (CN112852204A), herein Shi.
In regards to claims 6-7 and 9, Hughes further teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073]. Hughes does not expressly teach that two different monooleates are used, however Hughes does teach that one or more of the surfactants may be used together in order to have a HLB in the desired range [0072]. Hughes does not teach the combination of a polysorbate and a second sorbitan monooleate
Shi teaches a slow-release long-acting antibacterial polymer coating [lines 13-18]. Shi teaches the coating comprises a combination of Span 80 (i.e., sorbitan monooleate) and Tween 80 (i.e., polysorbate 80) as surfactants [lines 126-128] . Preferably, Span 80 and Tween 80 are compounded as emulsifiers [lines 126-128].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the combination of Span 80 and Tween 80 in the surfactant composition of Hughes as taught by Shi. One would have been motivated to do so as Shi teaches the combination is a conventionally known combination of surfactants for a polymer coating that one would have had a reasonable expectation of success. Additionally, the motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Modified Hughes does not teach the ratio of the Span 80 and Tween 80, However it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the ratios of two surfactants such that the HLB is within the range taught by Hughes. Thus, the ratio are expected to overlap the claimed ranges.
Claims 24-26, 37, 39, 43-47, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 20220363937 A1), herein Hughes, in view of Hughes et al. (US 20210062012 A1), herein Hughes’21.
In regards to claims 24-26, Hughes teaches a coated building panel comprising a fibrous substrate and a coating applied to the panel surface [Abstract, Claims 1 and 12, 0003]. The coating comprises a binder composition, an antimicrobial composition, stabilization composition comprising; a silicate compound (i.e., a thickening agent) ; and a surfactant having an HLB value between about 10 and about 14 [0004, Claim 1]. The HLB overlaps the claimed range. Hughes further teaches the binder includes a carrier such as a latex polymer [0023]. Hughes further teaches the binder includes pigments which include titanium dioxide and calcium carbonate [0023, 0035, 0080]. The antimicrobial composition comprises quaternary ammonium compounds, and wherein the quaternary ammonium compounds is present in an amount ranging from about 0.1 wt. % to about 10.0 wt. % based on the total weight of the coating [Claim 6, 0052, 0061]. This overlaps the claimed range. Hughes further teaches the ammonium compound is didecyl dimethyl ammonium chloride [0062]. Hughes teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073].
Hughes differs from claim 24 by teaching polysorbate 81 and polysorbate 85 in a list of possible surfactants, such that it cannot be said that their combination is not anticipated.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have employed any of the surfactants taught by Hughes, including polysorbate 81 and polysorbate 85. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Hughes does not expressly teach the thickening agent is laponite.
Hughes’21 teaches a coating for a building panel [Abstract]. Hughes’21 teaches the coating comprises laponite [Abstract, 0004]. Hughes’21 teaches that the addition of the laponite leads to an improvement in pencil hardness, crosshatch adhesion, and water repellency in addition to its thickening ability [0093].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have employed the laponite of Hughes’21 as the thickening agent of Hughes. One would have been motivated to do so based on the improvement in pencil hardness, crosshatch adhesion, and water repellency of the coating as a result of the addition.
In regards to claim 37, Hughes teaches the panel is an acoustic ceiling panel [0025].
In regards to claim 39, Hughes teaches the ammonium compound is didecyl dimethyl ammonium chloride [0062]. No other ammonium compound is required and thus the didecyl dimethyl ammonium chloride is the only one present [0062, 0090].
In regards to claims 43-45 and 47, Hughes teaches a coating composition for a building panel [Abstract, Claims 1 and 12, 0003]. The coating comprises a binder composition, an antimicrobial composition, stabilization composition comprising; a silicate compound (i.e., a thickening agent) ; and a surfactant having an HLB value between about 10 and about 14 [0004, Claim 1]. The HLB range overlaps the claimed range. Hughes further teaches the binder includes a carrier such as a latex polymer and water (i.e. a liquid carrier) [0023, claim 24]. Hughes further teaches the binder includes pigments which include titanium dioxide and calcium carbonate [0023, 0035, 0080]. The antimicrobial composition comprises quaternary ammonium compounds, and wherein the quaternary ammonium compounds is present in an amount ranging from about 0.1 wt. % to about 10.0 wt. % based on the total weight of the coating [Claims 6 and 18, 0052, 0061]. This overlaps the claimed ranges of claims 43 and 47. Hughes further teaches the ammonium compound is didecyl dimethyl ammonium chloride [0062].
Hughes does not expressly teach the thickening agent is laponite.
Hughes’21 teaches a coating for a building panel [Abstract]. Hughes’21 teaches the coating comprises laponite [Abstract, 0004]. Hughes’21 teaches that the addition of the laponite leads to an improvement in pencil hardness, crosshatch adhesion, and water repellency in addition to its thickening ability [0093].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have employed the laponite of Hughes’21 as the thickening agent of Hughes. One would have been motivated to do so based on the improvement in pencil hardness, crosshatch adhesion, and water repellency of the coating as a result of the addition.
In regards to claim 46, Hughes teaches the ammonium compound is didecyl dimethyl ammonium chloride [0062]. No other ammonium compound is required and thus the didecyl dimethyl ammonium chloride is the only one present [0062, 0090].
In regards to claim 49, Hughes teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073].
Hughes differs from claim 6 by teaching polysorbate 81 and polysorbate 85 in a list of possible surfactants, such that it cannot be said that their combination is not anticipated.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have employed any of the surfactants taught by Hughes, including polysorbate 81 and polysorbate 85. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 20220363937 A1), herein Hughes, in view of Hughes et al. (US 20210062012 A1), herein Hughes’21, as applied to claim 24 above, and in further view of Shi et al. (CN112852204A), herein Shi.
In regards to claim 28, Hughes further teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073]. Hughes does not expressly teach that two different monooleates are used, however Hughes does teach that one or more of the surfactants may be used together in order to have a HLB in the desired range [0072]. Hughes does not teach the combination of a polysorbate and a second sorbitan monooleate
Shi teaches a slow-release long-acting antibacterial polymer coating [lines 13-18]. Shi teaches the coating comprises a combination of Span 80 (i.e., sorbitan monooleate) and Tween 80 (i.e., polysorbate 80) as surfactants [lines 126-128] . Preferably, Span 80 and Tween 80 are compounded as emulsifiers [lines 126-128].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the combination of Span 80 and Tween 80 in the surfactant composition of Hughes as taught by Shi. One would have been motivated to do so as Shi teaches the combination is a conventionally known combination of surfactants for a polymer coating that one would have had a reasonable expectation of success. Additionally, the motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Claims 49-50 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 20220363937 A1), herein Hughes, in view of Hughes et al. (US 20210062012 A1), herein Hughes’21, as applied to claim 43 above, and in further view of Shi et al. (CN112852204A), herein Shi.
In regards to claim 49-50 and 52, Hughes further teaches the surfactant composition comprises polysorbate 81 or polysorbate 85 which are each a different type of polyethylene sorbitan monooleate [0073]. Hughes does not expressly teach that two different monooleates are used, however Hughes does teach that one or more of the surfactants may be used together in order to have a HLB in the desired range [0072].
Hughes does not teach the combination of a polysorbate and a second sorbitan monooleate
Shi teaches a slow-release long-acting antibacterial polymer coating [lines 13-18]. Shi teaches the coating comprises a combination of Span 80 (i.e., sorbitan monooleate) and Tween 80 (i.e., polysorbate 80) as surfactants [lines 126-128] . Preferably, Span 80 and Tween 80 are used [lines 126-128].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the combination of Span 80 and Tween 80 in the surfactant composition of Hughes as taught by Shi. One would have been motivated to do so as Shi teaches the combination is a conventionally known combination of surfactants for a polymer coating that one would have had a reasonable expectation of success. Additionally, the motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Modified Hughes does not teach the ratio of the Span 80 and Tween 80, However it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have adjusted the ratios of two surfactants such that the HLB is within the range taught by Hughes. Thus, the ratio are expected to overlap the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784
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