DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 10/14/25, claims 1, 11-13, 15- 16, 18, 22-26 and 28-29 are currently pending in the application, with 12-13, 15-16, 18 and 22- 26 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 11 and 28, 29 are rejected under 35 U.S.C. 103 as being unpatentable over Wata et al. (JP 2012-025820 A, machine translation), in view of Sako et al. (US 6,300,395 B1) (references of record).
Regarding claims 1, 28, 29, Wata teaches a hydrophilic treatment agent composition, comprising an acrylic resin (A) obtained by copolymerizing (al) 10-90 wt.% of a zwitterionic monomer having a betaine structure, (a2) a hydroxy group-containing polymerizable unsaturated monomer, such as 2-hydroxyethyl (meth)acrylate (i.e., HEMA/HEA), hydroxypropyl (meth)acrylate and hydroxybutyl (meth)acrylate, and (a3) other polymerizable unsaturated monomer, such as 2-(meth)acryloxyethy] acid phosphate, wherein said (a1) to (a3) constitute the essential structural units of the acrylic resin (A) (reads on a copolymer). Disclosed (a1) monomers include sulfobetaine monomers, such as dimethyl-(2-methacryloyloxyethyl ester) (2-sulfonatoethyl)aminium and dimethyl-(2-methacryloyloxyethyl ester)(3-sulfonatopropyl)aminium, wherein dimethyl(2-methacryloyloxyethyl ester)(3-sulfonatopropyl)aminium represents methacryloyloxyethyl ester-N,N-dimethyl-N-(3-sulfopropyl)ammonium betaine (reads on sulfobetaine monomer SPE). Additionally, disclosed acrylic resin (A) may have a hydroxyl value of 20-200 mg KOH/g (Overview, claims, [0011]-[0043], [0119], [0023], Examples).
Wata is silent on an acrylic resin consisting of units (A) vinyl phosphonic acid in claimed amount, and (B) a hydroxy group-containing monomer and a betaine monomer within the claimed molar ratio, wherein (C) said acrylic resin (A) is not a biocide, as in the claimed invention.
At the outset, itis noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
Regarding (B), Wata teaches an acrylic resin having a hydroxyl value of 20-200 mgKOH/g. With 2-hydroxylethyl(meth)acrylate as hydroxy group-containing monomer (a2), the calculated amount of (a2) monomer capable of providing for the disclosed hydroxyl value is the in the range of 4.64-46 wt.%, based on the total wt. of the acrylic resin consisting of (a1), (a2) and (a3) monomer units.
Regarding (A), in a related field of endeavor, Sako teaches a hydrophilization treatment agent comprising a polymeric component (a) comprising repeat units of a hydrophilic functional group-containing monomer, such as acid phosphoethyl methacrylate, vinyl phosphonic acid etc., i.e., functional equivalence thereof (col. 4-5, bridging paragraph).
Given the teaching in Sako on functional equivalence of acid phosphoethyl methacrylate and vinyl phosphonic acid, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an acrylic resin (A) of repeating units (al) 10-90 wt.% of a zwitterionic monomer having a betaine structure, such as methacryloyloxyethyl ester-N,N-dimethyl-N-(3-sulfopropyl)ammonium betaine and (a2) 4.64-46 wt.% 2-hydroxylethyl(meth)acrylate, with the balance, i.e., up to 85.36 wt.% being (a3), such as vinylphosphonic acid, in lieu of 2-(meth)acryloxyethyl acid phosphate. A skilled artisan would have found it obvious to substitute phosphoethyl methacrylate with vinyl phosphonic acid, based on their art equivalence from Sako’s teachings. Additionally, based on the wt.% ranges of (a1), (a2) and (a3), the calculated mol% of sum of 2-hydroxylethyl(meth)acrylate and vinyl phosphonic acid, and of methacryloyloxyethyl ester-N,N-dimethyl-N-(3-sulfopropyl)ammonium betaine fall within the claimed ranges.
Regarding (C), for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare the copolymer of instant claim 1 by combining the cited references that teach all the claimed monomers in claimed amounts. It is further noted that the original specification does not identify any feature that results in the claimed effect or physical property outside of the presence of the claimed monomers in claimed amounts. Therefore, it would have been obvious to a skilled artisan to reasonably expect an acrylic copolymer of overlapping scope resulting from the combination to be non-biocidal, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 11, Wata teaches a wt. average molecular weight of the acrylic resin (A) as preferably ranging from 2,000 to 300,000 [0044].
Response to Arguments
Applicant’s arguments dated 10/14/25 regarding the claim rejections and applied art have been duly considered.
Applicant argues that Wata teaches crosslinkable hydrophilization treatment compositions that include an acrylic resin with units of (al)-a betaine, (a2)-a monomer with crosslinking reactive groups (carboxy/hydroxy) and (a3)-a methacrylate such as HEMA, that Wata teaches (a2)-a monomer with crosslinking reactive groups (carboxy/hydroxy) to adjust the hydrophilicity of the acrylic resin (A), that Wata’s (a3) monomers include phosphoric acid/phosphate (H3PO4/PO4) group-containing monomers, without any suggestion on phosphonic acid groups (H3PO3) as a suitable equivalent. Referring to Sako as recognizing both phosphate/phosphoric acid and phosphonic groups as equivalents, Applicant argues that there is no motivation for a person of ordinary skill in the art to switch phosphorous group containing species altogether and include Sako's vinyl phosphonic acid for Wata's (a3) monomer that should include a phosphoric acid group, that a person of ordinary skill in the art would understand that phosphoric acid and phosphonic acid being structurally different, and will have different reactivity in polymer systems as in the art of Sako.
In response, as discussed in the office action dated 7/14/25 and herein above, Wata teaches a hydrophilic treatment agent composition comprising an acrylic resin (A) obtained by copolymerizing 10-90 wt.% of a zwitterionic monomer having a betaine structure, (a2) a hydroxy group-containing polymerizable unsaturated monomer, such as 2-hydroxyethyl (meth)acrylate (i.e., HEMA/HEA), , and (a3) other polymerizable unsaturated monomer, such as 2-(meth)acryloxyethy] acid phosphate, wherein said (a1) to (a3) constitute the essential structural units of the acrylic resin (A) (reads on copolymer). That is, Wata’s acrylic resin (A) may consist of units (a1) to (a3).
Although Wata is silent on a resin including vinyl phosphonic acid units as in the claimed invention, Examiner has relied upon Sako in a related field of endeavor, for its teaching on hydrophilization treatment agent comprising a polymeric component, and equivalence of phosphoethyl methacrylate and vinyl phosphonic acid monomers as hydrophilic functional group-containing monomers. Thus, given that Wata is also drawn to crosslinkable hydrophilization treatment compositions and is open to units of phosphoethyl methacrylate, it would have been obvious to a skilled artisan to substitute Wata’s phosphoethyl methacrylate with Sako’s vinyl phosphonic acid monomers, based on their art recognized equivalence, absent evidence to the contrary. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Additionally, Wata teaches that the other polymerizable unsaturated monomer (a3), such as 2-(meth)acryloxyethyl acid phosphate based, is in addition to monomer (a2) to adjust the hydrophilicity of the resin. Recognizing that Wata teaches phosphate monomers and not phosphonic acid monomers, Examiner has relied on the secondary reference to Sako to teach in substituting an equivalent of 2-(meth)acryloxyethyl acid phosphate that Wata is open to, with vinyl phosphonic acid. While Applicant argues that the reactivity of phosphoric acid and phosphonic acid (monomers) to differ because for their different structure, Examiner maintains that an analogous art teaches them to be equivalent and interchangeable, and there is no evidence on record that such as substitution would render Wata unsuitable for it’s intended purpose. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Applicant further argues that Wata requires 10-90 wt.% of monomer (a1) but does not specify the amounts of (a2) and (a3), without a suggestion on using 5 to 10 mol% of (a3). Referring to Examiner’s calculation on mol% of (a1)-(a3) in the rejection, Applicant argues that ordinary skill in the art would recognize that by increasing the (a2) to 40 wt% would yield a mgKOH/g value of 197 mgKOH/g, that Wata teaches that both the acid value and the hydroxyl value should not exceed 200 mgKOH/g as as doing so would cause the water resistance of the cured coating film after baking to be insufficient, and conclude that 40 wt% of the (a2) methacrylate monomer would nearly exceed the limit of Wata that a person of ordinary skill would not have been motivated to add another monomer with more hydroxyl groups, such as vinyl phosphonic acid, to 40 wt% of the (a2) monomer since it would exceed the limit taught in Wata.
In response, as an initial matter, it is noted that Wata teaches 20-200 as a preferred range [0043]. It is noted that Wata teaches 10-90 wt.% of a zwitterionic monomer having a betaine structure, and a skilled artisan would infer (a2), based on the prescribed hydroxyl value, at 4.64-46 wt.% 2-hydroxylethyl(meth)acrylate, with the balance, i.e., up to 85.36 wt.% being (a3), such as that of vinylphosphonic acid in lieu of 2-(meth)acryloxyethyl acid phosphate per Sako’s teachings, based on the essential monomers (a1)-a(3) taught in Wata.
Although Examiner had provided calculations for one specific example based on specific amounts of (a1)-(a3), given the teaching on a broad range for the amount of zwitterionic monomer in Wata, a skilled artisan would have found it obvious to provide for an acrylic resin consisting of greater amounts of betaine monomer than that relied in the calculations, lower amounts of 2-hydroxylethylmethacrylate (HEMA) to provide for a hydroxyl value of 20-200, with the remainder being vinyl phosphonic acid (VPA), including those having 5-10 mol% vinyl phosphonic acid as in the claimed invention. For instance, a skilled would have found it obvious to prepare for an acrylic resin consisting of 84.2 wt.% methacryloyloxyethyl ester-N,N-dimethyl-N-(3-sulfopropyl)ammonium betaine (mol. wt. 279.35, 68 mol %), 11.74 wt.%HEMA (mol. wt. 130.14, 25 mol%) and 4.07 wt.% VPA (mol. 106.02, 7 mol%), which would fall within the scope component amounts of the claimed invention.
Applicant further argues that with the instantly claimed components in claimed amounts, the copolymer may be applied as thin layers and without crosslinking, and when deposited as films on substrates, the copolymer as claimed, can reduce biofilm adhesion, an effect that is not demonstrated when a homopolymer of zwitterionic SPE is used, as seen in at least Comparative Examples 12 and 15, that the ability of biofilm reduction of the copolymer is linked to specific monomers as claimed and within specific amounts of copolymers including 10 mol% VPA in Examples 1-5 and the respective copolymer's ability to reduce biofilms in Examples 6-11, 13 and 16. Contrasting this to Wata, Applicant notes that Wata is directed to cross-linked coatings in rather thick layers - 0.3-5 g/m2, preferably 0.5-3 g/m2; and the examples using 1 g/m2, that in the present application, however, there is no need to crosslink the coating, and it may be applied in much thinner layers, from 0.0001 to 100 mg/m2, typically from 0.001 to 50 mg/m2.
In response, as an initial matter, comparison against homopolymer of zwitterionic SPE is not reasonably representative of the close prior art of record to Wata, as Wata teaches an acrylic resin (A) obtained by copolymerizing (al) 10-90 wt.% of a zwitterionic monomer having a betaine structure, (a2) a hydroxy group-containing polymerizable unsaturated monomer, and (a3) other polymerizable unsaturated monomer. Even so, it is noted that claim 1 is drawn to a copolymer, which copolymer is obviated by cited combination of references for reasons stated above. The data of Examples 1-5 in the disclosure rely on specific monomer components, and more importantly, on copolymers with 10 mol% VPA units. It is not clear why the limited data on the copolymers of Examples 1-5 would be considered reasonably representative of claim 1 that is of a broader scope. In other words, the data on record is not commensurate in scope with the claim language to overcome the rejections of record.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762