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 .
This Office action is in response to the amendment filed 7/13/2026. Claims 1-20 are amended; claims 11-13 are withdrawn from consideration as being drawn to non-elected invention, and claim 21 is cancelled. Accordingly, claims 1-20 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-10 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al (US 2020/0270439).
Regarding claims 1-5, Hara et al disclose a fluorinated copolymer dispersion excellent in water-and-oil repellency (i.e., reads on water and oil repellent composition in present claim 1). The fluorinated copolymer comprises an aqueous medium and fluorinated copolymer dispersed in the aqueous medium (i.e., reads on aqueous medium and fluorinated polymer dispersed in the aqueous medium in present claim 1). The fluorinated copolymer has units based on monomer “a” represented by CH2=CH-Rf (Rf is a C1-8 perfluoroalkyl group) (i.e., reads on fluoroolefin of formula 1, wherein Rf is a C1-8 perfluoroalkyl group in present claim 1 and Rf is a C1-6 perfluoroalkyl group in present claim 3) and monomer “b” copolymerizable with monomer “a” . The monomer unit “a” is present in amounts of 20 to 60 mol% (abstract) which overlaps with the amount of units based on fluoroolefin in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. See example 1 (Table 2), wherein the fluorinated copolymer comprises 130g of C6OLF (i.e., CH2=CH(CF2)5CH3, see paragraph 0171) and 65 g of AcV (i.e., vinyl acetate, see paragraph 0174) which reads on the vinyl carboxylate having C1 alkyl group in present claims 1 and 4). It is noted that C6OLF and AcV have a molecular weight of 346.1 g/mole and 86.1 g/mole, respectively. Hence, in example 1, C6OLF and AcV are present in amounts of about 33 mol% (i.e., reads on mol% of fluoroolefin in present claim 1) and about 67 mol%, respectively. The dispersion further comprises a non-fluorinated surfactant (paragraph 0014) which reads on the surfactant in present claim 1.
Hara et al fail to disclose a fluorinated copolymer comprising unit of formula 2; and the amounts of vinyl carboxylate and linear vinyl carboxylate of formula 2.
However, Hara et al in the general disclosure teach that monomer “b” is preferably a compound represented by CH2=CH-Q from a view point that it is easily copolymerizable with “a” (paragraph 0040). As compound represented by CH2=CH-Q, a carboxylic acid vinyl ester is preferred (paragraph 0043). Examples of carboxylic acid vinyl ester include vinyl acetate and vinyl stearate (paragraph 0045). As monomers b1, form a view point that it is possible to obtain an article excellent in oil repellency, vinyl acetate and vinyl stearate are preferred (paragraph 0052). Therefore, in light of the teachings in general disclosure of Hara et al, it would have been obvious to one skilled in art prior to the filing of present application to include a combination of vinyl stearate (i.e., reads on linear vinyl carboxylate of formula 2, where R1 is C16 alkyl group in present claims 1 and 4) and vinyl acetate (i.e., reads on vinyl carboxylate in present claims 1 and 4) in equal amounts (such as 33.5 mol% in example 1, which reads on the amount of vinyl carboxylate and linear vinyl carboxylate of formula 2 in present claims 1, 2 and amount of linear vinyl carboxylate based on sum of units based on linear vinyl carboxylate and vinyl carboxylate in present claim 5), because of the functional equivalence of both these carboxylate esters to aid in the fluoropolymer exhibiting excellent oil repellency, absent evidence to the contrary.
Regarding claims 6 and 7, Hara et al teach that as copolymer A, copolymer having units based on monomer (b1) and units based on monomer (b2) are preferred (paragraph 0055). Examples of preferred monomer “b2” include 2-hydroxyethyl (meth)acrylate as Tg of copolymer tends to be low and film forming property tends to be good (paragraph 0056). The proportion of units based on monomer “b2” is less than 20 mol% (paragraph 0061) which reads on the crosslinkable monomer and overlaps with its amount in present claim 6, and the reactive group is hydroxy group in present claim 7. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 8, examples of monomer “b2” include perfluoroalkyl(alkyl vinyl ether) (paragraph 0055) which reads on the vinyl ether in present claim 8.
Regarding claim 9, see 8a to 8d above.
Regarding claim 10, see example 1 (Table 2) wherein the copolymer does not include any haloolefin or derivative thereof other than the fluoroolefin of formula 1.
Regarding claim 14, Hara et al teach an article treated with fluorinated copolymer dispersion (paragraph 0019).
Regarding claims 15-16, Hara et al teach that mass average molecular weight of the copolymer is preferably at least 30,000 (paragraph 0065).
Regarding claims 17-20, preferred examples of monomer “b1” include vinyl acetate (i.e., reads on vinyl carboxylate in present claims 19 and 20) and vinyl stearate (i.e., reads on linear vinyl carboxylate in present claims 17 and 18) from a view point that it is possible to obtain an article excellent in oil repellency (paragraph 0052).
Response to Arguments
The rejections under 35 U.S.C. 112(b) and 103 as set forth in paragraphs 5, 7 and 12, of Office action mailed 2/11/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 10 below).
Applicant's arguments and Declaration under 37 CFR 1.132, filed 7/13/2026, have been fully considered but they are not persuasive. Specifically, general thrust of applicant argument is that there is a showing of unexpected, improved results with respect to water and oil repellency when the amount of units based on linear vinyl carboxylate and vinyl carboxylate in the fluorinated polymer fall within the claimed range (see examples 1, 2, A1 and A2 of Declaration).
In response, it is the Office’s position that showing of unexpected results is not commensurate with scope of present claims. Specifically, fluorinated polymer comprises fluoroolefin, linear vinyl carboxylate and vinyl carboxylate in amounts of 20 to 35 mol%, 30 to 70 mol% and 5 to 50 mol%, respectively, while the showing of unexpected results is for a fluorinated polymer comprising fluoroolefin of formula I in amounts of 22 to 33 mol% wherein Rf is a C6 perfluoroalkyl group, linear vinyl carboxylate of formula II in amounts of 32 to 59 mol% wherein R1 is a linear alkyl group having C15 to C17 alkyl group; and 9 to 30 mol% of vinyl carboxylate having C1-4 alkyl group (see examples 1-10 and 18-19 in originally filed disclosure).
Conclusion
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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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