DETAILED ACTION
The communication dated 8/15/2025 has been entered and fully considered. Claims 16-19 remain withdrawn. Claims 1, 7, 8, 10 are amended. Claims 2 and 3 are cancelled. Claims 1, 4-15 and 20-21 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Applicant argues that prior art does not teach the amount of polymer (a) of the amended claim 1.
Applicant's arguments filed 8/15/2025 have been fully considered but they are not persuasive. MONCLA teaches a paper oil-resistant agent which is added to interior of paper by an internal treatment [0003 and 0058], comprising: (1) a fluorine-free polymer and (2) at least one type of particles selected from inorganic particles or organic particles [0019], wherein an amount of the particles (2) is 45.0 to 99.9% by weight, based on the total weight of the fluorine-free polymer (1) and the particles (2). Specifically, 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 overlaps that of the instant claim, 45 to 99.9%. See 2144.05.
MONCLA teaches the fluorine-free polymer (1) is an acrylic polymer (repeating acrylic monomers) [0055]. MONCLA does not teach the structure of the instant claim. KOTANI also teaches the use of uv curable polymer to make paper [0113] oil resistant [0003]. KOTANI teaches the polymer used can be heptadecyl (meth)acrylate [0022]. This polymer meets the limitation of the instant claim 1. The square block below meets the CH2=C(X1)-C(=O)-Y1 portion of the instant 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 carbon atom chain has 7 carbon atoms in total and corresponds to the (R1) function of the instant formula.
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It would be obvious to one skilled at the time of invention to simple substitute the heptadecyl (meth)acrylate of KOTANI for the simple acrylic polymer taught by MONCLA to produce the same oil resistant effect in paper. One would be motivated to combine the art based on the common use of acrylic polymer and the guaranteed result as taught by KOTANI.
Regarding the amount of monomer, KOTANI teaches heptadecyl (meth)acrylate [0022], with the structure of the instant claim 1 monomer (a), is used as the main chain of the (meth)acrylic polymer (I) copolymer [0026] from polymerization [0024]. KOTANI further teaches the (meth)acrylic polymer (I) is used at a composition of 30 to 95 parts by weight based on the 100% weight [0040]. This range is within the range of the instant claim range of “30% by weight or more, based on the fluorine-free polymer”.
Applicant argues that the composition of prior art teaches a blend and does not teach a copolymer of polymer (a) and (b).
Regarding the use of copolymer, KOTANI teaches heptadecyl (meth)acrylate [0022], with the structure of the instant claim 1 monomer (a), is used as the main chain of the (meth)acrylic polymer (I) copolymer [0026] from polymerization [0024]. KOTANI specifically teaches the backbone may be used as a copolymer [0026].
Applicant argues that prior art cannot be combined as they are directed to different fields based on their different crosslink chemistry/mechanism.
In response to applicant's argument that MONCLA with KOTANI is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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).
In this case, MONCLA teaches the use of ethyl methacrylate as a base polymer for a papermaking additive [0045]. MONCLA teaches the dispersion is cured (heated) [0075]. KOTANI teaches the use of ethyl (meth) acrylate as the base polymer [0022] for a UV curable papermaking additive [0104 and 0113]. KOTANI further teaches the polymer curing is accelerated by heating [0049]. The examiner notes the prior art have common composition (ethyl methacrylate), field of use (papermaking), and method of use (heat curing). It would be obvious to one skilled in the arts at the time of invention to modify the structure of MONCLA with the polymer composition of KOTANI to improve the papermaking additive. One would be motivated by the common composition, field of use and the added benefit of accelerated curing as taught by KOTANI.
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 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 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 1. Claim 1 does not recite or define "the monomer (b)".
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.
Claims 1, 4, 6, 11, 15, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2 machine translation from Espacenet) as evidenced by pubchem.com (https://pubchem.ncbi.nlm.nih.gov/compound/Heptadecyl-methacrylate).
For claim 1, MONCLA teaches a paper oil-resistant agent which is added to interior of paper by an internal treatment [0003 and 0058], comprising: (1) a fluorine-free polymer and (2) at least one type of particles selected from inorganic particles or organic particles [0019], wherein an amount of the particles (2) is 45.0 to 99.9% by weight, based on the total weight of the fluorine-free polymer (1) and the particles (2). Specifically, 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 overlaps that of the instant claim, 45 to 99.9%. See 2144.05.
MONCLA teaches the fluorine-free polymer (1) is an acrylic polymer (repeating acrylic monomers) [0055]. MONCLA does not teach the structure of the instant claim. MONCLA teaches the use of ethyl methacrylate as a base polymer for a papermaking additive [0045]. MONCLA teaches the dispersion is cured (heated) [0075]. KOTANI teaches the use of ethyl (meth) acrylate as the base polymer [0022] for a UV curable papermaking additive [0104 and 0113]. KOTANI further teaches the polymer curing is accelerated by heating [0049]. KOTANI also teaches the use of uv curable polymer to make paper [0113] oil resistant [0003]. KOTANI teaches the polymer used can be heptadecyl (meth)acrylate [0022]. This polymer meets the limitation of the instant claim 1. The square block below meets the CH2=C(X1)-C(=O)-Y1 portion of the instant 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 carbon atom chain has 7 carbon atoms in total and corresponds to the (R1) function of the instant formula.
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Regarding the amount of monomer, KOTANI teaches heptadecyl (meth)acrylate [0022], with the structure of the instant claim 1 monomer (a), is used as the main chain of the (meth)acrylic polymer (I) copolymer [0026] from polymerization [0024]. KOTANI further teaches the (meth)acrylic polymer (I) is used at a composition of 30 to 95 parts by weight based on the 100% weight [0040]. This range is within the range of the instant claim range of “30% by weight or more, based on the fluorine-free polymer”.
It would be obvious to one skilled at the time of invention to simple substitute the heptadecyl (meth)acrylate of KOTANI for the simple acrylic polymer taught by MONCLA to produce the same oil resistant effect in paper. One would be motivated by the common composition, field of use and the added benefit of accelerated curing as taught by KOTANI.
For claim 4, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. KOTANI teaches heptadecyl (meth)acrylate 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 6, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. KOTANI teaches the polymer used can be heptadecyl (meth)acrylate [0022]. 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.
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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 heptadecyl (meth)acrylate taught by KOTANI.
For claim 11, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. MONCLA teaches the inorganic particles are made of at least one selected from calcium carbonate, talc, kaolin, clay [0062], 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, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. MONCLA teaches the composition further comprises a liquid medium which is water [0015] or a mixture of water and an organic solvent.
For claim 20, MONCLA and KOTANI teach the paper oil resistant agent according to claim 1, as above. MONCLA teaches the fluorine- free polymer (1) is selected from an acrylic polymer (EAA) [0055] , polyester polymer, polyether polymer, or urethane polymer.
For claim 21, MONCLA and KOTANI teach the paper oil resistant agent according to claim 1, as above. 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)
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2) as evidenced by pubchem.com (https://pubchem.ncbi.nlm.nih.gov/compound/Oleyl-methacrylate).
For claim 5, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. KOTANI teaches the use of (meth) oleyl acrylate [0022]. 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 teaches the instant limitation “wherein, in the acrylic monomer having a long-chain hydrocarbon group (a), the long-chain hydrocarbon group has 18 or more carbon atoms”.
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Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2) as evidenced by pubchem.com (https://pubchem.ncbi.nlm.nih.gov/compound/N-_2-Hydroxyethyl_methacrylamide).
For claim 7, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. KOTANI teaches the use of hydroxyethyl(meth)acrylamide which is an oxyalkylene (meth)acrylate [0022] alone or in combination as a copolymer [0026]. The examiner notes the use as copolymer meets the single molecular structure of the instant claim. KOTANI also teaches the polymer is used in waterproof applications [0144]. The examiner understands the structure of the copolymer 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 KOTANI.
For claim 10, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 7, as above. KOTANI teaches the polymer combination can use a combination of plasticizers and methacrylic polymer at 1 to 50 parts by weight methacrylic polymer (equivalent to 1 to 50% weight) [0096]. KOTANI also teaches the plasticizer can be a methacrylic polymer [0095]. By this the polymer group (a) or (b) can be used as plasticizer while the alternative group, either (a) or (b) could be used as the main methacrylic polymer with a 50% mixture of either. This value is within 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”.
Claim 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2) 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 8, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 7, as above. KOTANI teaches the use of acrylamide groups with another copolymer [0080]. The acrylamide structure has olefinic carbon-carbon double bonding and an anion donating group in the amino group (NH2) as shown below. This group is meant to be used in conjunction with polymer a and b [0023 and 0080].
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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, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 8, as above. KOTANI teaches the use of acrylamide groups with another copolymer [0080]. The acrylamide structure has olefinic carbon-carbon double bonding and an anion donating group in the amino group (NH2) as above. 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”.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) in view of KOTANI (JP 6927761 B2) as evidenced by chembk.com (https://www.chembk.com/en/chem/Aluminum%20hydroxide).
For claim 12, MONCLA teaches the paper oil-resistant agent according to claim 1, as above. The organic particles are insoluble in water at 40°C. MONCLA teaches the use of metal hydroxides including aluminum hydroxide. Aluminum hydroxide is insoluble as evidenced by chembk.com (https://www.chembk.com/en/chem/Aluminum%20hydroxide).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over MONCLA (US 20080295985 A1) and KOTANI (JP 6927761 B2) in view of JOGIKALMATH (US 20140224443 A1).
For claim 13, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. The inorganic particles are calcium carbonate [0062], and the organic particles are starch. MONCLA does not teach the organic particle as starch. JOGIKALMATH teaches a papermaking additive [abstract]. The papermaking additive includes starch as a filler [0012]. It would be obvious to skilled in the arts at the time of invention to substitute the starch filler of JOGIKALMATH for the papermaking filler of MONCLA. One would be motivated based on the common field of endeavor, papermaking with additives, and the successful use of starch as a papermaking additive and filler by JOGIKALMATH.
For claim 14, MONCLA and KOTANI teach the paper oil-resistant agent according to claim 1, as above. MONCLA in view of JOGIKALMATH teach the particles (2) comprises the organic particles (starch) [0155]. MONCLA does not teach the organic particle as starch. JOGIKALMATH teaches a papermaking additive [abstract]. The papermaking additive includes starch as a filler [0012]. It would be obvious to skilled in the arts at the time of invention to substitute the starch filler of JOGIKALMATH for the papermaking filler of MONCLA. One would be motivated based on the common field of endeavor, papermaking with additives, and the successful use of starch as a papermaking additive and filler by JOGIKALMATH.
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 STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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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