Patent Application 18314575 - Coating to Cool a Surface by Passive Radiative - Rejection

Patent Application 18314575 - Coating to Cool a Surface by Passive Radiative

Title: Coating to Cool a Surface by Passive Radiative Cooling

Application Information

• Invention Title: Coating to Cool a Surface by Passive Radiative Cooling
• Application Number: 18314575
• Submission Date: 2025-05-21T00:00:00.000Z
• Effective Filing Date: 2023-05-09T00:00:00.000Z
• Filing Date: 2023-05-09T00:00:00.000Z
• National Class: 428
• National Sub-Class: 422000
• Examiner Employee Number: 76138
• Art Unit: 1787
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 1
• 103 Rejections: 2

Cited Patents

The following patents were cited in the rejection:

• US 0064094🔗
• US 0141162🔗
• US 0057224🔗

Office Action Text

    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 .
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.  

Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 15 April 2025 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 April 2025.

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 § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Claims 1-7 are rejected under 35 U.S.C. 112(a) as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without a substrate, which is critical or essential to the practice of the invention but not included in the claims. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). All the description of apparatus in the specification (e.g., paragraphs 0021, 0058, Figures 1A through 1D) relate to a coating on a substrate. While claims 1-7 are directed to apparatus, the claims recited only the composition from which the coating is formed without reciting the required substrate on which the coating is formed to create the apparatus.

Claim Rejections - 35 USC § 112(b)
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.


Claims 1-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The phrase “providing one or more properties including a reflectance of or greater than 55% in a wavelength range of 0.3 to 2.5 microns and a first thermal emissivity peak value greater than 0.85 at a first wavelength in a range of 8 to 13 microns” renders claim 1 (as well as claims 2-7 due to their dependency from claim 1) indefinite because it is unclear if the one or more properties provided are the reflectance and/or the thermal emissivity peak value or if the reflectance and thermal emissivity peak value are two properties included in a larger group of properties. This rejection may be overcome by replacing the phrase “one or more properties including” with the phrase --one or more properties selected from--.
The phrase “about 80% by parts” in claim 4 renders the claim indefinite because it is unclear if the amount is to be measured by weight, volume, etc.
The phrase “about 15% by parts” in claim 5 renders the claim indefinite because it is unclear if the amount is to be measured by weight, volume, etc.

Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Claims 6 and 7 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Claim 6 requires the styrene based copolymer of claim 5 to be formed by one or more of a surfactant, a medium, a plurality of monomer, and an initiator. However, since all copolymers must necessarily be formed of a plurality of monomers, claim 6 does not further limit claim 5.
Claim 7 requires the plurality of monomers of claim 6 to comprise at least one of a styrene, an acrylate, or a methacrylic acid. However, since all styrene based copolymers must necessarily include styrene monomer, claim 7 does not further limit claim 6.

Claim Interpretation
For the purpose of examination, the elected apparatus is understood to comprise a coating formed from the radiative cooling material of the claims on a substrate (see paragraph 0021 on page 7 of the specification and page 3 of the Office action mailed 10 April 2025). Additionally, since one of ordinary skill in the art would expect the coating of the apparatus to be solid, one of ordinary skill in the art would expect the coating of the apparatus to be devoid of the medium providing viscosity for application onto the surface.

Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –

(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.


Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Story et al. (US 2012/0057224).
	Story is directed to a cured film having a solar reflection of greater than 75% at 0.25 to 2.5 mm formed on a metal substrate from a coating composition comprising a resin and pigment (paragraph 0010). In the embodiment of Example 1, the comprising comprises a resin A (a siliconized polyester resin), cross-linking agent B (hexamethoxymethyl melamine), solvent C (diethylene glycol monobutyl ether acetate solvent), and base D (a combination of polyester resins, colored pigments, and a hydrocarbon fluid) (Table 1 and paragraphs 0064-0067).
	Resin A, formed of a non-styrene material, reads on the polymer of claim 1. Base D, comprising the siliconized polyester polymer, reads on the binder of claim 1. Solvent C reads on the medium of claim 1.

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.

Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Story et al. (US 2012/0057224) in view of Egusa et al. (US 2006/0141162).
	Story teaches all the limitations of claim 4, as outlined above, except that the reference is silent as to the size of the colored pigments in base D, a component that is about 81% of the composition from which the coating is formed.
	Egusa is directed to pigment dispersions comprising a coloring pigment dispersed in a medium (paragraph 0002). Egusa teaches that using coloring pigments with a small diameter forms coating films with a clear hue and high gloss (paragraph 0004). Suitable diameters for the coloring pigments is 200 nm or smaller (paragraph 0010).
	It would have been obvious to one of ordinary skill in the art at the time of invention to use colored pigments having a diameter of 200 nm or smaller in base D of Story to provide the resulting coating with a clear hue and high gloss.

Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Story et al. (US 2012/0057224) in view of Wojtysiak et al. (US 2005/0064094).
	Story teach all the limitations of claims 5-7, as outlined above, except for the use of a styrene copolymer as about 15% of the material from which the coating is formed. However, Story et al. do teach that other polymers, such as acrylic resins, may be used in the coating composition (paragraph 0029).
	Wojtysiak is directed to a surface coating having radiative cooling properties (paragraph 0001). The coating comprises a binder that may be an acrylic resin or a styrene acrylic (paragraph 0023).
	It would have been obvious to one of ordinary skill in the art to use a styrene acrylic as the acrylic resin of Story since Wojtysiak shows that styrene acrylic resins are known in the art to be used as binders in cooling coatings and functionally equivalent to other acrylic resins.
	Additionally, it would have required no more than routine experimentation and ordinary skill to determine a workable amount for the acrylic resin in the coating composition. Such routine experimentation would be expected to result in values satisfying the limitation of claim 5 since the coating resulting from the application of the composition is used for the same purpose as the instant invention (i.e., a cooling, thermally reflective, coating). Moreover, since one of ordinary skill in the art would expect the cured coating to contain no more than a residual amount of solvent (i.e., medium providing viscosity for the coating), the concentration of resin in the solvent containing composition is not related to the concentration of resin in the cured coating as the addition of more (or less) solvent to a particular composition would alter the concentration of resin in the composition but would not be expected to alter the concentration of resin in the cured coating.

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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-9 of U.S. Patent No. 10,584,250. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-3 represent a genus of which the inventions described by claims 1-5 and 7-9 of U.S. Patent No. 10,584,250 are species since the apparatus recited in the claims of U.S. Patent No. 10,584,250 is required to have both reflectance and thermal emissivity while the coating of the instant claims need only exhibit one of these properties. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Additionally, it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims - e.g., claims 3 and 4 such that two or more of the first, second, and third materials comprise polymers that read on the binder and polymer of the instant claims - with the independent claim to yield coating exhibiting the benefits conveyed by the limitations of the dependent claims.

Claims 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-9 of U.S. Patent No. 10,584,250 in view of Wojtysiak et al. (US 2005/0064094).
	Claims 1-5 and 7-9 of U.S. Patent No. 10,584,250 recite or suggest all the limitations of claims 5-7, as outlined above, except for the use of a styrene acrylic polymer. However, claims 5, 7, and 8 recite the use of acrylic polymers for second or fourth components.
	Wojtysiak is directed to a surface coating having radiative cooling properties (paragraph 0001). The coating comprises a binder that may be an acrylic resin or a styrene acrylic (paragraph 0023).
	It would have been obvious to one of ordinary skill in the art to use a styrene acrylic in place of the acrylic resin claimed by U.S. Patent No. 10,584,250 since Wojtysiak shows that styrene acrylic resins are known in the art to be used as binders in cooling coatings and functionally equivalent to other acrylic resins.
	Additionally, it would have required no more than routine experimentation and ordinary skill to determine a workable amount for the acrylic resin in the coating composition. Such routine experimentation would be expected to result in values satisfying the limitation of claim 5 since the coating resulting from the application of the composition is used for the same purpose as the instant invention (i.e., a cooling, thermally reflective, coating). Moreover, since one of ordinary skill in the art would expect the cured coating to contain no more than a residual amount of solvent (i.e., medium providing viscosity for the coating), the concentration of resin in the solvent containing composition is not related to the concentration of resin in the cured coating as the addition of more (or less) solvent to a particular composition would alter the concentration of resin in the composition but would not be expected to alter the concentration of resin in the cured coating.

Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-9 of U.S. Patent No. 11,084,944. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-3 represent a genus of which the inventions described by claims 1-5 and 7-9 of U.S. Patent No. 11,084,944 are species since the apparatus recited in the claims of U.S. Patent No. 11,084,944 is required to have both reflectance and thermal emissivity while the coating of the instant claims need only exhibit one of these properties. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Additionally, it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims - e.g., claims 3 and 4 such that two or more of the first, second, and third materials comprise polymers that read on the binder and polymer of the instant claims - with the independent claim to yield coating exhibiting the benefits conveyed by the limitations of the dependent claims.


Claims 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-9 of U.S. Patent No. 11,084,944 in view of Wojtysiak et al. (US 2005/0064094).
	Claims 1-5 and 7-9 of U.S. Patent No. 11,084,944 recite or suggest all the limitations of claims 5-7, as outlined above, except for the use of a styrene acrylic polymer. However, claims 5, 7, and 8 recite the use of acrylic polymers for second or fourth components.
	Wojtysiak is directed to a surface coating having radiative cooling properties (paragraph 0001). The coating comprises a binder that may be an acrylic resin or a styrene acrylic (paragraph 0023).
	It would have been obvious to one of ordinary skill in the art to use a styrene acrylic in place of the acrylic resin claimed by U.S. Patent No. 11,084,944 since Wojtysiak shows that styrene acrylic resins are known in the art to be used as binders in cooling coatings and functionally equivalent to other acrylic resins.
	Additionally, it would have required no more than routine experimentation and ordinary skill to determine a workable amount for the acrylic resin in the coating composition. Such routine experimentation would be expected to result in values satisfying the limitation of claim 5 since the coating resulting from the application of the composition is used for the same purpose as the instant invention (i.e., a cooling, thermally reflective, coating). Moreover, since one of ordinary skill in the art would expect the cured coating to contain no more than a residual amount of solvent (i.e., medium providing viscosity for the coating), the concentration of resin in the solvent containing composition is not related to the concentration of resin in the cured coating as the addition of more (or less) solvent to a particular composition would alter the concentration of resin in the composition but would not be expected to alter the concentration of resin in the cured coating.

Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, and 11 of U.S. Patent No. 11,667,795. Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-3 represent a genus of which the inventions described by claims 1-3, 7, and 11 of U.S. Patent No. 11,667,795 are species since the apparatus recited in the claims of U.S. Patent No. 11,667,795 is required to have both reflectance and thermal emissivity while the coating of the instant claims need only exhibit one of these properties. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Additionally, it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims - e.g., claim 11 with the resulting binders reading on the binder and polymer of instant claim 1 - with the independent claim to yield coating exhibiting the benefits conveyed by the limitations of the dependent claims.

Claims 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, and 11 of U.S. Patent No. 11,667,795 in view of Wojtysiak et al. (US 2005/0064094).
	Claims 1-3, 7, and 11 of U.S. Patent No. 11,667,795 recite or suggest all the limitations of claims 5-7, as outlined above, except for the use of a styrene acrylic polymer.
	Wojtysiak is directed to a surface coating having radiative cooling properties (paragraph 0001). The coating comprises a binder that may be a styrene acrylic (paragraph 0023).
	It would have been obvious to one of ordinary skill in the art to use a styrene acrylic as one of the binders claimed by U.S. Patent No. 11,084,944 since Wojtysiak shows that styrene acrylic resins are known in the art to be used as binders in cooling coatings.
	Additionally, it would have required no more than routine experimentation and ordinary skill to determine a workable amount for the acrylic resin in the coating composition. Such routine experimentation would be expected to result in values satisfying the limitation of claim 5 since the coating resulting from the application of the composition is used for the same purpose as the instant invention (i.e., a cooling, thermally reflective, coating). Moreover, since one of ordinary skill in the art would expect the cured coating to contain no more than a residual amount of solvent (i.e., medium providing viscosity for the coating), the concentration of resin in the solvent containing composition is not related to the concentration of resin in the cured coating as the addition of more (or less) solvent to a particular composition would alter the concentration of resin in the composition but would not be expected to alter the concentration of resin in the cured coating.


Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787