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 .
Status of Application
Claims 1, 26, 27, 30 and 33 are pending. Claims 26, 27, 30 and 33 are withdrawn. Claim 1 is presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive. Applicant argues that Chu lists benzyl acrylate as only one possibility in a laundry list of possible monomers and only exemplifies the use of ethylenediamine. Applicant further notes that ethylenediamine and benzyl acrylate are fundamentally different compounds and there is no teaching or suggestion in Chu of which parameters to modify.
However, the Examiner notes that Coulson’s formula for the monomer is inclusive of benzyl acrylate, though it is not explicitly disclosed. Furthermore, as Chu teaches benzyl acrylate as a monomer in a similar process, it would have been within the level of one of ordinary skill to substitute benzyl acrylate for the monomer of Coulson which formula is inclusive of benzyl acrylate as one would expect that this modification could be made with a reasonable expectation of success and a predictable result of providing a nanocoating. Therefore, the Examiner maintains that the substitution of benzyl acrylate as disclosed by Chu for Coulson’s monomer would be obvious.
Applicant further argues that the prior art would not motivate one to arrive at the claimed ratio with any reasonable expectation of predictable results or success. However, the Examiner disagrees and notes that as outlined above the combination of Coulson in view of Chu make obvious a plasma comprising benzyl acrylate and divinyl adipate. Furthermore, the concentration of the divinyl adipate and correspondingly its volume ratio with the monomer is a result-effective variable as adjusting the ratio will adjust the water repellency of the coating (see Coulson at Example 3, page 20 and Figure 4). Furthermore, Coulson makes clear that the ratio will need to be adjusted and optimized for a given monomer and different chamber sizes (see Example 3, page 20). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for volume ratio, thereby meeting the limitations of the claims.
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.
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.
1. Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coulson et al. (WO 2016/198857) in view of Chu et al. (WO 02064654, of which reference is made to the previously provided English translation).
Regarding claim 1, Coulson teaches a method of forming an electrically resistive (Field of the invention section) polymeric nanocoating (abstract and page 3, lines 12-16) comprising exposing a substrate to a plasma (abstract) comprising a monomer having the formula
PNG
media_image1.png
384
514
media_image1.png
Greyscale
(page 10 and note that this structure may not include fluorine atoms and may include a monocyclic aryl group as R1, R2 or R4) and a crosslinker which can be divinyl adipate (abstract and page 9) to form the nanocoating on the substrate (abstract). Coulson additionally teaches that the crosslinker can have a structure including an aryl group and a carbonyl (see Crosslinker section, page 5). Coulson fails to explicitly teach the monomer being benzyl acrylate and the volume ratio of benzyl acrylate (monomer) to divinyl adipate (crosslinker) being approximately 9:1.
First, Coulson’s formulas are inclusive of compounds containing no fluorine atoms and comprising a monocyclic aromatic moiety as noted above. Additionally, Chu teaches utilizing benzyl acrylate as a monomer (bottom of page 8) in plasma polymerization processes (page 8) for forming polymeric coatings on a surface (page 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Coulson’s process by substituting benzyl acrylate for Coulson’s acrylate and aryl functional monomer. One would have been motivated to make this modification as one could have substituted one aryl functional acrylate monomer for another with a reasonable expectation of success (particularly given that Chu teaches the benzyl acrylate monomer can be used in a similar plasma polymerization process), and the predictable result of providing a crosslinked polymeric coating on a substrate.
Second, the concentration of the divinyl adipate and correspondingly its volume ratio with the monomer is a result-effective variable as adjusting the ratio will adjust the water repellency of the coating (see Coulson at Example 3, page 20 and Figure 4). Furthermore, Coulson makes clear that this ratio will need to be adjusted and optimized for a given monomer and different chamber sizes (see Example 3, page 20). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for volume ratio of benzyl acrylate to divinyl adipate through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Conclusion
Claims 1, 26, 27, 30 and 33 are pending.
Claims 26, 27, 30 and 33 are withdrawn.
Claim 1 is rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. 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.
/ROBERT S WALTERS JR/
January 18, 2026Primary Examiner, Art Unit 1717