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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/15/2025 has been entered.
Response to Amendment
The amendment filed on 12/15/2025 has been entered. Claim(s) 1 and 7 is/are currently amended. claim 8 is canceled. Claim(s) 1-7 is/are pending and is/are under examination in this office action.
Response to Arguments
The Declaration under 37 CFR 1.132 filed 12/15/2025 is insufficient to overcome the rejection of claims 1-7 based upon 35 U.S.C. 103 as set forth in the last Office action because the data provided in this Declaration is the same as the data provided in the Declaration of 10/20/2025, which was addressed in the 10/27/2025 Advisory Action.
The Declarant explained the test ratings in more detail. However, the evaluated results are still subjective ratings. The examiner cannot determine the result without objective experimental data. For instance, hydrophilic durability is rated on a scale of 1-4. But those values relate to a range of water contact angles. Example 1 in the declaration has a value of 4 and Example 2 has a value of 3. There’s no way to know if the result is significant (for instance, 0° for Ex. 1 and 40° for Ex. 2) or insignificant (for instance, 30° for Ex. 1 and 30.01° for Ex. 2).
In addition, the example data is not reasonably commensurate in scope with the claim. For example, the example only employs one EVOH (A1) and one radical polymer (A2); whereas the claim covers a wide variety of (A1) and (A2). Similarly, the example only employs one (b1) and one (b2); whereas the claim covers a wide variety of (b1) and (b2). The example only employ one diamine-type polyetheramine, i.e., Jeffamine ED-600, with molecular weight of 600. However, claim 1 recites polyetheramine (C) having molecular weight of 600-2003; and R6, R7 and R8 in formula (IV-2) vary considerably, allowing a wide variety of polyetheramine (C). Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
Applicant's argument, filed on 12/15/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Umeda does not disclose the structure of the polyetheramine (C) of claim 1.
In response, Umeda in view of Huntsman 1 teaches the polyetheramine (C) of claim 1 as stated in the 103 rejection.
Applicant argued that Huntsman fails to disclose the water droplet removal properties and improvement in dispersibility, which are technical effects exerted by claim 1. Therefore, the technical effects of claim 1 could not have been expected from Huntsman.
In response, the water droplet removal properties and improvement in dispersibility are not part of the claim limitation. Even if they are incorporated into the claim, they are properties of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
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 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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umeda et al (US 20180134910 A1) in view of Huntsman (“Jeffamine Polyetheramine”, 2017, herein after referred to as Huntsman 1) and Takoh et al (US 5804611 A). Huntsman (“Jeffamine ED-2003 Polyetheramine”, 2007, herein after referred to as Huntsman 2) is used as an evidentiary reference.
Regarding claims 1 and 7, Umeda teaches a hydrophilization agent used for coatings on heat exchanger including an aqueous resin dispersion (D) comprising an ethylene-vinyl alcohol copolymer (A) and a radical polymer (B) having a structural unit derived from a radical-polymerizable carboxylic acid monomer (B1-1), wherein the content of the radical polymer (B) is 10-80 mass % relative to the total content of the ethylene-vinyl alcohol copolymer (A) and the radical polymer (B) [abstract]. The content of the ethylene structural unit in the EVOH (A) is preferably 24 to 44 mol % [0028]. The radical-polymerizable carboxylic acid monomer (B1-1) includes itaconic acid, acrylic acid and methacrylic acid [0031].
The examiner submits that the ethylene-vinyl alcohol copolymer (A) reads on the claimed ethylene-vinyl alcohol copolymer (A1); the radical polymer (B) having a structural unit derived from a radical-polymerizable carboxylic acid monomer (B1-1) reads on the claimed radical polymer (A2) having a structural unit derived from a radically polymerizable carboxylic acid monomer (A2-1).
The ethylene content of 24-44 mol% overlaps the claimed range of 25-44 mol%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The mass ratio of (A)/(B) is 0.25 to 9, as calculated by the examiner based on the content of the radical polymer (B) is 10-80 mass % relative to the total content of the ethylene-vinyl alcohol copolymer (A) and the radical polymer (B), overlapping the claimed mass ratio of (A1)/(A2) of 0.43 to 2.33. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The dispersion also comprises hydrophilic compound (E) [0019] including cross-linkable microparticles [0051], which reads on the claimed crosslinkable fine particles (B). The cross-linkable microparticles (E) comprises N-methylolacrylamide as the main monomer [0053-0054] which reads on the claimed (b1).
Umeda does not teach that the crosslinkable microparticles are a copolymer of the claimed (b1), (b2) and (b3).
In the same field of endeavor, Takoh teaches a composition used for hydrophilization, which comprises: (A) a compound having a polyoxyalkylene chain, and (B) hydrophilic crosslinked polymer fine particles made of a copolymer composed of: (a) a hydrophilic monomer having a polymerizable double bond and a polyoxyalkylene chain, (b) a (meth)acrylamide type monomer, (c) a crosslinkable unsaturated monomer, (d) a carboxyl group-containing polymerizable unsaturated monomer, and (e) a monomer having one polymerizable unsaturated group in the molecule, other than the monomers (a), (b), (c) and (d). Said composition can form a hydrophilic film superior in retention of hydrophilicity on the surfaces of heat exchanger fins [abstract]. Examples of (c) a crosslinkable unsaturated monomer include N-methylolacrylamide [C7L4-13].
The examiner submits that the (a) a hydrophilic monomer having a polymerizable double bond and a polyoxyalkylene chain reads on the claimed (b2). The (b) a (meth)acrylamide type monomer reads on the claimed (b3). The (c) N-methylolacrylamide reads on the claimed (b1).
It would have been obvious to one of ordinary skill in the art at the time of filing to select Takoh’s (B) hydrophilic crosslinked polymer fine particles as the cross-linkable microparticles (E) in Umeda’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Umeda teaches a composition comprising 50 parts of resin dispersion (corresponding to the claimed (A)) and 40 parts of crosslinkable microparticles (corresponding to the claimed (B)) [Table 2, Example 51]. Thus, the ratio of (B)/(A) is 40/50=0.8, falling within the claimed ratio of (B)/(A) of 0.11 to 1.43.
Umeda teaches that the hydrophilic compound (E) can include a combination of the cross-linkable microparticles and polyalkylene ether (PAE) [0053]. It would have been obvious to one of ordinary skill in the art at the time of filing to combine Umeda's crosslinkable microparticle and a polyalkylene ether as hydrophilic compound (E), as the two are recognized as equivalents suitable for the same purpose. See MPEP 2144.06.
Umeda does not teach a hydrophilic polyalkylene ether having the claimed structure represented by Formula (IV-2): NH2-R6-O-(R7-O)n-R8-NH2.
Huntsman 1 teaches that Jeffamine ED-series diamines are polyether diamines based predominantly on a PEG (i.e. polyalkylene ether) backbone. PEG imparts complete water solubility, and the products are used to impart hydrophilicity. ED-2003 is specifically identified for use in water-based coatings [p. 4 “Jeffamine ED Series diamines”].
It would have been obvious to one of ordinary skill in the art at the time of filing to select Jeffamine ED-2003 for use as the hydrophilic compound (E) in Umeda's composition, as Huntsman demonstrates this product to have the required polyalkylene ether structure, recognizes that the product is used to impart hydrophilicity, and suggests its use in aqueous coatings. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
As evidenced by Huntsman 2, Jeffamine ED-2003 Polyetheramine has molecular weight of 2000 and has the following structure:
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The examiner submits that Jeffamine ED-2300 reads on the claimed polyetheramine (C) represented by Formula (IV-2), as evidenced by the applicant (Formula (V) [0077-0078, spec.]), wherein R6=R8=C3H6, R7 is a combination of C2H4 and C3H6 (see [0073, spec.]), and n=x+y+z=45, falling within the claimed range of n=1 to 100.
Umeda teaches a composition comprising 50 parts of resin dispersion (corresponding to the claimed (A)), 40 parts of crosslinkable microparticles (corresponding to the claimed (B)), and 10 parts of PEG [Table 2, Example 51].
It would have been obvious to one of ordinary skill in the art at the time of filing to combine 10 parts of Jeffamine ED-2300 with 50 parts of (A) and 40 parts of (B) since these amounts are shown to be suitable for compositionally similar examples.
Therefore, the ratio of (C)/((A)+(B)) in the composition of Umeda in view of Huntsman is 10/(50+40)=0.11, as calculated by the examiner, which is sufficiently close to the claimed lower limit of 0.15 that one of ordinary skill in the art would prima facie expect a hydrophilization agent based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Regarding claim 2, Umeda teaches that the radical polymer (B) may further have a structural unit derived from a radically polymerizable sulfonic acid monomer (B1-2) [0011], which reads on the claimed (A2-2).
Regarding claim 3, Umeda teaches that the composition comprises a hydrophilic compound (C) including polyvinylpyrrolidone (PVP) [0038-0039].
The PVP reads on the claimed (A3) as evidenced by the applicant [0038, 0040 spec.].
Regarding claim 4, Umeda teaches that the hydrophilic compound (E) includes a combination of the cross-linkable microparticles and PAE [0053] as stated above. Umeda teaches that the hydrophilic compound (E) may also include a combination of cross-linkable microparticles, PAE, and polyvinyl alcohol (PVA) [0053]. PVA reads on the claimed hydrophilic compound (D) as evidenced by the applicant [0081-0082, spec.].
Umeda teaches that the amount of (E) is 70 mass % or less relative to the total amount of the aqueous resin dispersion (D), the hydrophilic compound (E), and the cross-linking agent (F) [0019]. Since the cross-linkable microparticles, PAE, and PVA are recognized as equivalents as (E), the amount of cross-linkable microparticles, PAE, and PVA can be 23% (70/3) or less each; and the amount of the aqueous resin dispersion (D) can be 30% or more. Thus, the ratio of the mass of PVA to the total mass of the aqueous resin dispersion (D), cross-linkable microparticles, and PAE can be 23/(30+23+23)=0.3
Umeda teaches 10 parts of PAE in Example 51, leading to a ratio of (C)/((A)+(B)) = 10/(50+40) =0.11 as stated above. Since PVA is recognized as equivalent as PAE, it would have been obvious to use 10 parts of PVA, leading to a ratio of PVA/(aqueous dispersion + cross-linkable microparticles + PAE) = 10/(50+40+10) = 0.1, meeting the claimed 0.14 or less.
Regarding claim 5, Umeda teaches that the composition comprises a cross-linking agent (F); and the content of the cross-linking agent (F) being 2 mass% relative to the total amount of the aqueous resin dispersion (D), the hydrophilic compound (E), and the cross-linking agent (F) [Table 2 Example 47], which meets the claimed ratio of 0.10 (10 mass%) or less for the claimed cross-linking agent (E).
Regarding claim 6, Umeda teaches performing a (co)polymerization reaction in a solution containing the EVOH (A) to obtain the radical polymer (B) [0042].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762