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 .
In view of the Appeal Brief filed on 5/4/26, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748 .
Claim Rejections - 35 USC § 112
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.
Claims 8-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "the monomers (a) and (b)". There is insufficient antecedent basis for this limitation in the claim. Claim 8 depends on claim 7. Claim 7 recites “the fluorine-free polymer further comprises an acrylic monomer having a hydrophilic group (b)”. This does not recite or define "the monomer (b)". The examiner notes the syntax of the limitation points to (b) as a “hydrophilic group” like the later claim 10. Claim 9 depends from claim 8.
(NEW GROUNDS OF REJECTION)
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1,4-6, 11, 15, and 20 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over RUFFNER JR (US 20110027601 A1).
For claim 1, RUFFNER JR teaches a polymeric barrier coating for general liquid resistance in paper [0058]. The examiner notes the preamble statement adds no patentable weight to the application. RUFFNER JR does not teach the use of fluorine polymer. This teaches the limitation of “a fluorine-free polymer”. RUFFNER JR teaches an example where clay filler is used with a binder at 53.6% [0072]. This filler composition value is within the instant claim range of “at least one type of particles selected from inorganic particles or organic particles [0019], wherein an amount of the particles (2) is 50.0 to 99.9% by weight, based on the total weight of the fluorine-free polymer (1) and the particles (2)”.
It would be obvious to one skilled at the time of invention to simple substitute the stearyl (meth)acrylate of RUFFNER JR as an alternate to the other listed binder polymer, SBR, taught by RUFFNER JR to produce the same oil resistant effect in paper. One would be motivated to try based on the stearyl (meth)acrylate being listed as an alternative binder without any indication of preference or disapproval.
RUFFNER JR teaches the use of stearyl methacrylate as a binder [0034]. The structure of stearyl methacrylate matches the structure of the instant claim. The examiner notes the stearyl methacrylate is used as a lone polymer meaning the structure is made of only stearyl methacrylate repeating units that being 100%. This value is within the range of the instant range of “30% by weight or more, based on the fluorine-free polymer”. This also teaches the limitation of “The acrylic monomer having a long chain hydrocarbon group (a) is a monomer represented by the formula: CH2=C(X1)-C(=O)-Y1”. The top CH3 in the second position corresponds to the (X1) function and the single bonded oxygen (-O-) attached to the third carbon from the left below corresponds to the (Y1) function of the instant claim. The following carbon atom chain has 17 carbon atoms in total and corresponds to the (R1) function of the instant formula”.
For claim 4, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the use of stearyl methacrylate [0034] which has a hydrogen atom attached to the second carbon atom from the left below corresponds to the (X1) function. This teaches the limitation, “wherein, in the acrylic monomer having a long-chain hydrocarbon group (a), X is a hydrogen atom or a methyl group”.
For claim 5, RUFFNER JR teach the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the use of C1-C18 alkyl methacrylate [0034]. As shown below the square block below meets the CH2=C(X1)-C(=O)-Y1 portion of the instant claim 1 formula, where the hydrogen atom attached to the second carbon atom from the left below corresponds to the (X1) function and the single bonded oxygen (-O-) attached to the third carbon from the left below corresponds to the (Y1) function of the instant claim. The following portion to the left of the block, the oleyl functional group, contains 18 carbon atoms. This abuts the instant claim range of “wherein, in the acrylic monomer having a long-chain hydrocarbon group (a), the long-chain hydrocarbon group has 18 or more carbon atoms”.
For claim 6, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the use of stearyl methacrylate [0034]. This polymer meets the limitation of the instant claim 1. The square block below meets the CH2=C(X4)-C(=O)-Y2-R2 portion of the instant formula, where the hydrogen atom attached to the second carbon atom from the left below corresponds to the (X4) function and the single bonded oxygen (-O-) attached to the third carbon from the left below corresponds to the (Y2) function of the instant claim. The following carbon atom chain has 7 carbon atoms in total and corresponds to the (R2) function of the instant formula.
This structure meets the structure of (a1) of the instant claim “wherein the acrylic monomer having a long-chain hydrocarbon group (a) is: (al) an acrylic monomer represented by formula: CH2=C(-X4)-C(=O)-Y2-R2 wherein R is a hydrocarbon group having 7 to 40 carbon atoms, X4 is a hydrogen atom, a monovalent organic group, or a halogen atom, and Y2 is -O- or -NH-“. The examiner understands that the inclusion of the “or” function allows for either (a1) or (a2) to satisfy the limitation of the instant claim making all limitations met by the stearyl (meth)acrylate taught by RUFFNER JR.
For claim 11, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the inorganic particles are made of at least one selected from calcium carbonate, talc, kaolin, clay [0072], mica, aluminum hydroxide, barium sulfate, calcium silicate, calcium sulfate, silica, zinc carbonate, zinc oxide, titanium oxide, bentonite, and white carbon, and the organic particles are made of at least one selected from polysaccharides and thermoplastic resins [0052].
For claim 15, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the polymer coating is water-based [0036].
For claim 20, RUFFNER JR teaches the paper oil resistant agent according to claim 1, as above. RUFFNER JR teaches the fluorine- free polymer (1) is selected from an acrylic polymer [0034] , polyester polymer, polyether polymer, or urethane polymer.
Claims 7-9, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over RUFFNER JR (US 20110027601 A1) as evidenced by pubchem.com (https://pubchem.ncbi.nlm.nih.gov/compound/N-_2-Hydroxyethyl_methacrylamide) and pubchem.com (https://pubchem.ncbi.nlm.nih.gov/compound/Acrylamide#section=2D-Structure).
For claim 7, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the use of hydroxyethyl methacrylate as an alternative to stearyl methacrylate [0034]. The examiner understands the structure of the polymer meets the instant claim and create a product with waterproofing properties. This meets the limitation of the instant claim of “the fluorine-free polymer further comprises an acrylic monomer having a hydrophilic group (b)”.
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The structure above meets the (b3) formula, CH2=CX2C(=O)-NH-(RO)n-X3, of the instant claim, where the hydrogen atom attached to the Oxygen on the left corresponds to the (X3) function and the single bonded oxygen (-O-) attached to the first two carbons (which form a 2 carbon alkylene group) from the left corresponds to the (RO)n function of the instant claim. The following NH correspond to the NH group of the instant formula and the final groups correspond to the CH2=CX2C(=O)- portion of the formula. This formula meets the instant claim “wherein the acrylic monomer having a hydrophilic group (b) is at least one oxyalkylene (meth)acrylate represented by formula: CH2=CX2C(=O)-O-(RO)n-X3 (b 1) CH2=CX2C(=O)-O-(RO)~-C(=O)CX2=CH2 (b2), or CH2=CX2C(=O)-NH-(RO)n-X3 (b3) wherein X2 is a hydrogen atom or a methyl group, X3 is a hydrogen atom or an unsaturated or saturated hydrocarbon group having 1 to 22 carbon atoms, R each is independently an alkylene group having 2 to 6 carbon atoms, and n is an integer of 1 to 90”. The examiner understands that the inclusion of the “or” function allows for either (b1), (b2) or (b3) to satisfy the limitation of the instant claim making all limitations met by the hydroxyethyl(meth)acrylamide taught by RUFFNER JR.
For claim 8, RUFFNER JR teaches the paper oil-resistant agent according to claim 7, as above. RUFFNER JR teaches the use of acrylamide groups as lone polymer or copolymer [0034]. The hydroxyethyl (meth)acrylamide structure has olefinic carbon-carbon double bonding and can have an anion donating group in the amino group (NH2) as shown below [0034]. This group is meant to be used in conjunction with polymer a and b [0034].
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This teaches the limitation of the instant claim “wherein the fluorine-free polymer further comprises a repeating unit formed from (c) a monomer having an olefinic carbon-carbon double bond and having an anion donating group or a cation donating group, other than the monomers (a) and (b)”.
For claim 9, RUFFNER teaches the paper oil-resistant agent according to claim 8, as above. RUFFNER JR teaches the use of acrylamide groups as lone polymer or copolymer [0034]. The hydroxyethyl (meth)acrylamide structure has olefinic carbon-carbon double bonding and can have an anion donating group in the amino group (NH2) as shown below [0034]. This teaches the limitation of the instant claim “wherein the anion donating group is a carboxyl group, or the cation donating group is an amino group”.
For claim 13, RUFFNER JR teaches the paper oil-resistant agent according to claim 7, as above. RUFFNER JR teaches the use of starch [0046] and calcium carbonate [0031] in combination as filler. This teaches the limitation of “wherein the inorganic particles are calcium carbonate and the organic particles are starch”.
For claim 14, RUFFNER JR teaches the paper oil-resistant agent according to claim 7, as above. RUFFNER JR teaches the use of starch [0046] and calcium carbonate in combination [0031]. This teaches the limitation of “wherein the particles (2) comprises the organic particles”.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over RUFFNER JR (US 20110027601 A1) in view of NII (WO 2011070800 A1 ESPACENET machine translation).
For claim 10, RUFFNER JR teaches the paper oil-resistant agent according to claim 7, as above. RUFFNER JR teaches the polymer chain can be used as homopolymer or as a copolymer [0034]. RUFFNER JR does not teach the polymer amount in the instant claim. NII teaches a barrier compound that uses copolymer with an acrylamide base similar to RUFFNER JR [page 31 and 33] and polyoxyalkylene-modified vinyl alcohol polymer (POA) [page 4]. NII also teaches the base monomer unit, POA, is 50 parts by weight or less of the total chain polymer [page 28]. This range overlaps the range of both claim limitations for (a) and (b). This teaches the limitation, “wherein an amount of the repeating unit formed from the acrylic monomer having a long-chain hydrocarbon group (a) is 30 to 90% by weight, based on the fluorine-free polymer, and an amount of the repeating unit formed from the acrylic monomer having a hydrophilic group (b) is 5 to 70% by weight, based on the fluorine free polymer”. NII also teaches the advantage of the amount of base repeating units is an increase in hydrophobicity [page 28].
It would be obvious to one skilled in the arts to try the degree of polymerization of NII to produce an effective barrier product. One would be motivated based on the improved hydrophobicity as taught by NII.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over RUFFNER JR (US 20110027601 A1) as evidenced by KIM et al (https://www.sciencedirect.com/science/article/pii/S0733521012001658).
For claim 12, RUFFNER JR teaches the paper oil-resistant agent according to claim 1, as above. RUFFNER JR teaches the use of starch in solution [0046]. The examiner understands starch is organic polysaccharide. The organic starch particles are generally insoluble in water until heating in water at 174°C, as evidenced by KIM et al (Thermal dissolution of maize starches in aqueous medium - ScienceDirect). This teaches the limitation of “wherein the organic particles are insoluble in water at 40°C.
Claims 21 are rejected under 35 U.S.C. 103 as being unpatentable over RUFFNER JR (US 20110027601 A1) in view of MONCLA (US 20080295985 A1).
For claim 21, RUFFNER JR teaches the paper oil resistant agent according to claim 1, as above. RUFFNER JR teaches the use of filler but does not teach a filler in the amount of the instant claim. MONCLA teaches an amount of the particles (2) is 60 to 99.9% by weight, based on the total weight of the fluorine-free polymer (1) and the particles (2). MONCLA teaches a filler is used in combination with the polymer to create a dispersion [0065]. The solid [0066] filler is used in an amount greater than about 50 to 250 parts per hundred of the polymer by weight [0065]. This range encompasses that of the instant claim, 60 to 99.9%. See 2144.05.
[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)
MONCLA teaches the advantage of the invention is the product increased stability [0069]. It would be obvious to one skilled in the arts to substitute the composition amount from MONCLA into the RUFFNER JR composition to make a better barrier. One would be motivated to combine the art based on The improved product stability as taught by MONCLA.
Response to Arguments
The following grounds of rejection have been withdrawn by the examiner: 103 rejection over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2 machine translation from Espacenet), and JOGIKALMATH (US 20140224443 A1).
Applicant argues the amended claims 7 and 8 overcome the previous rejection under 35 U.S.C. 112(b)
Applicant's arguments filed 5/4/2026 have been fully considered but they are not persuasive. The amended claim 8 changes dependency to claim 7. Claim 8 recites “the monomers (a) and (b)”. Amended claim 7 recites “the fluorine-free polymer further comprises an acrylic monomer having a hydrophilic group (b)”. The amended claim 7 does not recite “a monomer (b)”. The dependent claim 1, which claim 7 depends, does not recite “a monomer (b)” either.
Applicant argues that prior art, MONCLA and KOTANI, do not teach the polymer base unit composition of the instant application.
Applicant’s arguments, see page 11 section 2, filed 5/4/2026, with respect to the rejection(s) of claim(s) 1, 4-15, 20 and 21 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of RUTHER (US 20110027601 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abbas Rashid whose telephone number is (571)270-7457. The examiner can normally be reached 9 AM to 5 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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