DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 12/12/2025.
3. Claims 1-7, 10-22 are pending. Claims 1-7,10-11 are under examination on the merits. Claims 1-7, 10-11 are amended. Claims 8-9 are cancelled. Claims 12-22 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-7,10-11 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 1-7, 10-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “at least one water soluble polymer selected from a group consisting of polyester or poly(2-ethyl-2-oxazoline)”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “at least one water soluble polyester polymer” or matter claimed. The limitation of “polyester or poly(2-ethyl-2-oxazoline)” is redundant since poly(2-ethyl-2-oxazoline) is thermoplastic polyester and is indistinguishable from polyester polymer. Thus, claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2-7, 10-11 being depended on claim 1 are rejected as well.
For the purpose of examination against the prior art, claim 1 is construed to recite “at least one water soluble polymer selected from a group consisting of PET (Polyethylene Terephthalate) polyester and poly(2-ethyl-2-oxazoline)”.
8. Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 10 recites the limitation " the styrene sulfonate polymer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination against the prior art, claim 10 is construed to recite “the styrene sulfonate monomer”.
9. Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 11 recites “wherein said rinse aid comprises the styrene sulfonate monomer, lithium styrene sulfonate”, wherein applicant fails to articulate by sufficiently distinct functional language, applicants regards as those which will facilitate “the styrene sulfonate monomer” or matter claimed. The limitation of “the styrene sulfonate monomer, lithium styrene sulfonate” is redundant since lithium styrene sulfonate is the salt of lithium styrene sulfonate (i.e., the alkali forms as inorganic are represented as lithium). Thus, claim 11 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
For the purpose of examination against the prior art, claim 11 is construed to recite “
wherein the styrene sulfonate monomer is lithium styrene sulfonate”.
Claim Rejections - 35 USC § 112
10. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], 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.
11. Claim 5 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent from for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 5, as written, depends on claim 1, which recites “the at least one water soluble polymer comprises a mixture of the polyester and the poly(2-ethyl-2-oxazoline)”, however, based on the content of the claim 1, the at least one water soluble polymer selected from a group consisting of polyester or poly(2-ethyl-2-oxazoline). Thus, claim 5 as being of improper dependent form for failing to further limit the subject matter of a previous claim 1.
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 1-5, 7,10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tadano et al. (US Pub. No. 2019/0006295 A1, hereinafter “’295”) in view of John Cleaon Moore (US Pat. No. 10,002,758 B2, hereinafter “’758”), and Leonardo Guglielmetti (US Pat. No. 5,332,861, hereinafter “’861”).
Regarding claim 1: ‘295 teaches a composition useful as a thermal resistant water washable protective coating in laser machining (Page 1, [0001], said composition comprising from about 12% by weight of a water soluble ultraviolet light absorbing compound such as an anthraquinone type or a distyrylbiphenyl derivative (Page 2, [0037]; Page 3, [0067], Example 5; Page 5, Claim 1), and from about 88% by weight of the water-soluble adhesive comprising a blend of polyvinyl alcohol and poly-N-vinyl acetamide (Page 3, [0067], Example 5; Page 5, Claim 1) dissolved in water, said ultraviolet light absorbing compound and the at least one water soluble polymer percentages by weight being based upon the total weight of the solids taken as 100% by weight. ’295 does not expressly teach i) at least one water soluble polymer selected from a group consisting of polyester or poly(2-ethyl-2-oxazoline), wherein the at least one water soluble polymer is thermoplastic with a thermal viscosity at 200° C of greater than 50,000 centipoise, and ii) said distyrylbiphenyl is disodium distyrylbiphenyl disulfonate, wherein said water soluble ultraviolet light absorbing compound has a melting point greater than 250° C.
Referring to i), ‘758 teaches a composition of matter that operates as a rinsable primer by applying and curing as a thin coating onto a substrate underlying a functional coating, whereby upon its removal, the temporary functional coating is removed and a high degree of cleanliness is achieved (Col. 3, lines 40-45). ‘758 teaches the rinsable primer composition of comprise a mixture of: (a) one or more species which upon their application and curing exhibits a sufficiently different polarity to that of the temporary functional coating such that mixing between the layers are minimized and is demonstrated to directly improve removal performance, (b) one or more members from the groups consisting of alcohols, amides, esters, ethers, glycol ether esters, glycol ethers, glycols, ketones, lactates, sulfoxides, or water, and, (c) one or more surface active agents providing sufficient wetting of the substrate without the production of foam to a level which prohibits sufficient tool performance (Col. 3, lines 45-61; Col. 4, lines 8-48). Some of the Examples include the water soluble polymer polyester such as Aquazole 500 (homopolymer of 2-ethyl oxazoline and MW @ 500,000 g/m) with a thermal viscosity at 200° C of greater than 50,000 centipoise (Col. 9, lines 12-48, Table 1) with benefit of providing superior protective films for electronic substrates that can be easily cleaned prior to subsequent manufacturing processes (Col. 3, lines 40-45).
Referring to ii), ’861 teaches the synthesis of disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C (Col. 7, lines 17-25), wherein the distyrylbiphenyl compounds obtained are usually used for the fluorescent whitening of textile material, such as cotton, polyamide and wool, or for the fluorescent whitening of paper or they can be incorporated in liquid and solid detergents, application liquors or coating compositions (Col. 4, lines 63-67).
In an analogous art of the composition useful as a thermal resistant water washable protective coating in laser machining, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the water soluble polymer by ‘295, so as to include at least one water soluble polymer and said water soluble polymer is thermoplastic with a thermal viscosity at 200° C of greater than 50,000 centipoise comprising poly-2-ethyl-2-oxazoline as taught by ‘758, and would have been motivated to do so with reasonable expectation that this would result in providing superior protective films for electronic substrates that can be easily cleaned prior to subsequent manufacturing processes as suggested by ‘758 (Col. 3, lines 40-45).
In an analogous art of the composition useful as a thermal resistant water washable protective coating in laser machining, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the distyrylbiphenyl derivative by ‘295, so as to include disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C as taught by ‘861, and would have been motivated to do so with reasonable expectation that this would result in providing to use preferred components with superior thermal stability in the protective coating compositions as suggested by ‘861 (Col. 4, lines 63-67).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
water soluble ultraviolet light absorbing compound such as distyrylbiphenyl compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claims 2,7: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph above and is incorporated herein by reference. ‘758 teaches a composition of matter that operates as a rinsable primer by applying and curing as a thin coating onto a substrate underlying a functional coating, whereby upon its removal, the temporary functional coating is removed and a high degree of cleanliness is achieved (Col. 3, lines 40-45). ‘758 teaches the thermal resistant water washable protective coating also comprises a rinse aid such as sulfonated polystyrene (Col. 4, lines 38-40) in the amount of about 0.01 to about 5.0 wt % being based upon the total weight of the solids taken as 100% by weight (Col. 4, lines 1-2) with benefit of providing certain performance values of interest in coating and cleaning practices in manufacturing (Col. 4, lines 8-48).
In an analogous art of a composition useful as a thermal resistant water washable protective coating in laser machining, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the composition by ‘295, so as to include a rinse aid as taught by ‘758, and would have been motivated to do so with reasonable expectation that this would result in providing
certain performance values of interest in coating and cleaning practices in manufacturing as suggested by ‘758 (Col. 4, lines 8-48).
Regarding claim 3: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph above and is incorporated herein by reference. ‘295 teaches the composition (Page 1, [0001], wherein the weight % of the water soluble ultraviolet light absorbing compound that has a melting point greater than 250° C is 12% within the range of 8-40% being based upon the total weight of the solids taken as 100% by weight (Page 2, [0037]; Page 3, [0067], Example 5; Page 5, Claim 1). ’861 teaches the synthesis of disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C (Col. 7, lines 17-25).
Regarding claim 4: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph above and is incorporated herein by reference.‘295 teaches the composition (Page 1, [0001], wherein the weight % of the water soluble ultraviolet light absorbing compound that has a melting point greater than 250° C is 12% within the range of 10-30% being based upon the total weight of the solids taken as 100% by weight (Page 2, [0037]; Page 3, [0067], Example 5; Page 5, Claim 1). ’861 teaches the synthesis of disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C (Col. 7, lines 17-25).
Regarding claim 5: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph above and is incorporated herein by reference. ‘758 teaches the at least one water soluble polymer comprises a mixture of the polyester and the poly(2-ethyl-2-oxazoline) (Col. 4, lines 24-26; Col. 4, lines 38-42).
14. Claims 2, 6-7, 10-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over Claims 1-5, 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tadano et al. (US Pub. No. 2019/0006295 A1, hereinafter “’295”) in view of John Cleaon Moore (US Pat. No. 10,002,758 B2, hereinafter “’758”), and Leonardo Guglielmetti (US Pat. No. 5,332,861, hereinafter “’861”) as applied to claim 1 above, and further in view of Moore et al. (US Pat. No. 9,790,407, hereinafter “’407”).
Regarding claims 2,7,10-11: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph 13 above and is incorporated herein by reference. ‘758 teaches the thermal resistant water washable protective coating also comprises a rinse aid such as sulfonated polystyrene (Col. 4, lines 38-40) in the amount of about 0.01 to about 5.0 wt % being based upon the total weight of the solids taken as 100% by weight (Col. 4, lines 1-2) with benefit of providing certain performance values of interest in coating and cleaning practices in manufacturing (Col. 4, lines 8-48). ‘295 in view of ‘758 and ‘861 does not expressly teach said rinse aid comprises lithium styrene sulfonate.
However, ‘407 teaches compositions and methods are described for a temporary coating and adhesive with adjustable acidity for use in coating work units as a planarization coating over high topography and also for affixing thin units onto a carrier whereby such compositions provide sufficient properties to support a manufacturing process, and upon completion (Col. 1, lines 14-27). ‘407 teaches to test various additives to an acrylic system that has a carboxylic acid present for detergent soluble coating and adhesive systems (Col. 20, lines 60-63). To this several additives are inserted to the mixture, including: lithium styrene sulfonate identical to the instant rinse aid polymer with molecular weight in the range of from 10,000 to 1,000,000 g/mol (se US Pub. No. 2022/0145098 A1, Page 7, [0047]; Page 8, [0056, Table 1) in the amount of about 1-10% by weight (Col. 21, lines 1-2; Col. 21, lines 12-35, Table 3) with benefit of providing to reduce cracking and bubbling during exposure to harsh environmental conditions (Col. 21, lines 11-34, Table 3).
In an analogous art of a composition useful as a thermal resistant water washable protective coating in laser machining, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the composition by ‘295, so as to include said rinse aid comprises lithium styrene sulfonate as taught by ‘407, and would have been motivated to do so with reasonable expectation that this would result in providing to reduce cracking and bubbling during exposure to harsh environmental conditions as suggested by ‘407 (Col. 21, lines 11-34, Table 3).
Regarding claim 6: The disclosure of ‘295 in view of ‘758 and ‘861 is adequately set forth in paragraph 13 above and is incorporated herein by reference. ‘758 teaches a process of achieving clean substrates when using a temporary functional coating (top layer) comprising, (a) applying a rinsable primer composition (bottom layer) and curing to the substrate, (b) applying a temporary functional coating (top layer) over said rinsable primer composition (bottom layer) and completing the process for the purpose of said temporary functional coating (top layer), (c) cleaning and removal of the temporary functional coating (top layer) from the substrate using a sufficient chemical reagent, and (d) rinsing with a rinsing agent sufficient to remove the rinsable primer composition (bottom layer) and the temporary functional coating (Col. 11, lines 20-34, Claim 1), wherein the thickness of the rinsable primer composition is 10 µm or less (i.e., overlapping ranges; Col. 11, lines 49-50, Claim 3). ‘407 teaches the composition is configured to form a coating when applied by spin coating (Col. 1, lines 43-53).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate thickness coating by spin-coating of a known material based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07).
It has been held that the recitation that an element is "configured to” performing a function is not a positive limitation but only requires the ability to so perform.
Response to Arguments
15. Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that ‘295 in view of ‘758 does not teach the water soluble ultraviolet light absorbing compound has a melting point greater than 250° C.
The examiner respectfully disagrees. The new rejection is based on the combination of 295 in view of ‘758 and ‘861. ’861 teaches the synthesis of disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C (Col. 7, lines 17-25), wherein the distyrylbiphenyl compounds obtained are usually used for the fluorescent whitening of textile material, such as cotton, polyamide and wool, or for the fluorescent whitening of paper or they can be incorporated in liquid and solid detergents, application liquors or coating compositions (Col. 4, lines 63-67). It is submitted that the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two water soluble ultraviolet light absorbing compound such as distyrylbiphenyl compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
In response to the Applicant’s argument that ‘861contains no disclosure of incorporating disodium distyrylbiphenyl disulfonate as a water soluble light absorbing compound.
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is noted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). In this case, nevertheless, the combination of 295 in view of ‘758 and ‘861 is deemed to teach a composition useful as a thermal resistant water washable protective coating in laser machining as the recited claimed. ‘295 teaches a composition useful as a thermal resistant water washable protective coating in laser machining (Page 1, [0001], said composition comprising from about 12% by weight of a water soluble ultraviolet light absorbing compound such as an anthraquinone type or a distyrylbiphenyl derivative (Page 2, [0037]; Page 3, [0067], Example 5; Page 5, Claim 1). ’295 does not expressly teach said distyrylbiphenyl is disodium distyrylbiphenyl disulfonate, wherein said water soluble ultraviolet light absorbing compound has a melting point greater than 250° C.
However, ’861 teaches the synthesis of disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C (Col. 7, lines 17-25), wherein the distyrylbiphenyl compounds obtained are usually used for the fluorescent whitening of textile material, such as cotton, polyamide and wool, or for the fluorescent whitening of paper or they can be incorporated in liquid and solid detergents, application liquors or coating compositions (Col. 4, lines 63-67).
In an analogous art of the composition useful as a thermal resistant water washable protective coating in laser machining, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the distyrylbiphenyl derivative by ‘295, so as to include disodium distyrylbiphenyl disulfonate having a melting point greater than 300° C as taught by ‘861, and would have been motivated to do so with reasonable expectation that this would result in providing to use preferred components with superior thermal stability in the protective coating compositions as suggested by ‘861 (Col. 4, lines 63-67). Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two water soluble ultraviolet light absorbing compound such as distyrylbiphenyl compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product and show the product is actually different from and unexpectedly better than teachings of the references.
16. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Examiner Information
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
12/31/2025
bijan.ahvazi@uspto.gov