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 Claims 26, 27, 30 and 33 are withdrawn.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.
Response to Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive. Applicant argues that the plasma-polymerized benzyl acrylate in combination with DVA provides unexpectedly high and repeatable barrier performance at 500 nm thickness on PCB substrates. However, Applicant has not provided a declaration and evidence to support this position. Additionally, the Examiner notes that Coulson teaches that their process yields a barrier layer with good protective properties. Furthermore, Applicant argues that Coulson requires an aliphatic group and fluorine atoms to achieve this performance. However, the Examiner disagrees and notes that Coulson teaches the monomer having the formula
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(page 10 and note that this structure may not include fluorine atoms and may include a monocyclic aryl group as R1, R2 or R4). Therefore, Coulson appears to includes aromatic monomers without fluorine atoms in the genus of monomers used in the process.
Applicant argues that a person having ordinary skill in the art in the field of protective coatings for electronics would not look towards Chu. However, the Examiner disagrees and 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 argues that the graft polymerization of Chu is fundamentally different from the plasma deposition process used in Coulson. However, the Examiner notes that Coulson’s monomer structure is actually inclusive of benzyl acrylate and the fact that benzyl acrylate can be grafted using a plasma would provide one with ordinary skill in the art a motivation to select benzyl acrylate as Coulson’s monomer from the broader genus disclosed by Coulson’s formula.
Applicant argues that one would not look towards benzyl acrylate in Chu as there is no teaching that this monomer specifically could provide a coating suitable for protecting electronic devices. However, as noted above, Coulson’s genus of monomer is inclusive of benzyl acrylate and one would expect that benzyl acrylate which meets the limitations of Coulson’s monomer would be applicable in Coulson’s process. Therefore, the Examiner maintains there would be motivation to look towards other known plasma polymerizable monomers which meet the formula as disclosed by Coulson for use in Coulson’s process with the expectation that they would provide similar results.
Applicant further argues that a skilled person would not regard benzyl acrylate as an obvious substitute for aliphatic acrylate monomers of Coulson. However, as noted above, Coulson’s formula includes aromatic monomers, where the R substituents may be monocyclic aromatic groups. Therefore, the Examiner disagrees, and maintains that Coulson teaches that aromatic monomers may be used, and it would be reasonable to consider benzyl acrylate as a monomer.
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
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(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.
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.
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/ROBERT S WALTERS JR/
May 26, 2026Primary Examiner, Art Unit 1717
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