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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/8/2025 has been entered. Claim 1 is amended, claims 11-13 are withdrawn from consideration as being drawn to non-elected invention; and claim 21 is added. Accordingly, claims 1-21 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 and 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “fluorinated polymer is dispersed in the aqueous medium”. There is support for the “polymer dispersion comprising a polymer (A), an aqueous medium and a surfactant” (page 5, lines 24-25), but not a dispersion comprising only an aqueous medium and fluorinated polymer. The aqueous medium includes water or water in combination with a water miscible organic solvent.
Claims 2-10 and 14-20 are subsumed by this rejection because of dependence either directly or indirectly on independent claim 1.
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 1-10 and 14-21 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.
The preamble of present claims 1-10 and 14-21 recite “water/oil repellent composition”. The claim does not set forth with reasonable clarity whether the slash in the term “water/oil” is inclusive of both “water repellent and oil repellent” or exclusive such as “water repellent” or “oil repellent”. Therefore, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claims 1, 2, 5, 6, and 9 recite “ratio of units” followed by a range in terms of mol%. Ratios are mathematical expressions in the form of A:B. In contrast, units of percent (i.e., mol%) are not ratios. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. For examining purposes, the term “ratio” is interpreted as “amount”.
Claims 3-4, 7-8, 10-14 and 15-21 are subsumed by this rejection because of the dependence either directly or indirectly on any of the claims 1-2, 5-6 and 9.
Claim 10 recites limitation "the fluoroolefin or a derivative thereof" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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 14-21 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/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 ratio 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.
Hara et al fail to disclose a fluorinated copolymer comprising unit of formula 2; and the amounts of vinyl carboxylate and linear viny 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 claim 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 12a to 12d above.
Regarding claim 10, see example 1 (Table 2) wherein the copolymer does not include any haloolefin other than the fluoroolefin or derivative thereof.
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).
Regarding claim 21, Hara et al teach that the dispersion further comprises a non-fluorinated surfactant (paragraph 0014).
Response to Arguments
The objections and rejections under 35 U.S.C. 103 as set forth in paragraphs 4 and 9, of office action mailed 5/15/2025, are withdrawn in view of amendments, applicant arguments and Declaration filed under 37 CFR 1.132.
Conclusion
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.
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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