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 communication responds to the application and amended claim set filed March 18/2022. Claims 1-19 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18, in the reply filed on August 11, 2025 is acknowledged. Claims 1-18 are under examination.
Priority
This application claims priority to provisional 63/162,785, filed March 18, 2021.
Claim Objections
Claims 16-18 are objected to because of the following informalities:
Regarding claim 1, Applicant states in the preamble “A composition for an aqueous color solution..”. However, Claims 16-18 recite in the preamble “The system..” . Appropriate correction is required.
Claim 17 recites “ with an organic, or amphipathic, solvent”. Claim 17 should read “ with an
organic or amphipathic solvent”. Appropriate correction is required.
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 1-18 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 pre-AIA the applicant regards as the invention.
In line 3 of Claim 1, the limitation “at least one solvent, comprising an organic solvent and water, wherein water, comprises at least 10%, by weight” causes confusion. It is unclear if only one solvent can be present, or a mixture of organic solvent and water is required. It is noted that the specification at p.21, paragraph [0074] seems to refer to additional solvents as cosolvents when the composition includes more than one solvent. For purposes of examination, examiner is interpreting the solvent is at least one. (i.e. water).
Claim 1 recites the limitation “at least one solvent ”. Claims 3 recites the limitation "wherein the solvent further". The claim 3 is considered indefinite without the “at least one” language preceding the limitation in all dependent claims. The claims should be amended to recite " wherein the at least one solvent further ". Claim 4-13, 15 and 17 are rejected as being dependent on a rejected base claim.
Claim 7 recites the trademark “SAIB-100 “. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe digestate and, accordingly, the identification/description is indefinite.
Claim 11 recites the limitation “at least one swelling agent ”. Claim 12 recites the limitation " wherein the swelling agent ". The claim 12 is considered indefinite without the “at least one” language preceding the limitation in all dependent claims. The claims should be amended to recite " wherein the at least one swelling agent ".
Claim 14 recites ” The composition of claim 33”, which causes confusion because it is not clear if the applicant means “33” to be “3”. For purposes of examination, Claim 14 is interpreted to depend on claim 3.
Claims 2-18 are rejected as being dependent on a rejected base claim.
Claim Analysis
Summary of Claim 1:
A composition for an aqueous color solution comprising:
at least one block copolymer; and
at least one solvent, comprising an organic solvent and water,
wherein water, comprises at least 10%, by weight, of the entire composition.
Claim Interpretation
It is noted that “the system” of claims 16-18 is interpreted as “the composition”.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Destarac et al. (US PG Pub 6,506,837 B2, as listed on the IDS dated 9/19/2022) .
Regarding claim 1, Destarac et al. teach a viscoelastic gel (composition) comprising water and a block copolymer, wherein the block copolymer is at a concentration of between 0.1 % and 10 wt.% (col.1 :37-38, claims 1 and 9, col.9: 44-45), which implies water is present in the composition in an amount of at least 10%, as required by the instant claim. Destarac et al. further teach the use of the block copolymer in aqueous and organic media (col 8:10-16), which implies the solvent is water and an organic solvent, thereby reading on the at least one block copolymer and at least one solvent. The statement "for an aqueous color solution" is considered to be an intention to use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and /n re Otto, 136 USPQ 458, 459 (CCPA 1963). Destarac et al. teach a substantially identical composition as the claimed invention, therefore the composition of Destarac is inherently suitable for use as an aqueous color solution.
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.
Claim 1-5, 11-13, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ryan et al. (WO 2020/180427 A2, as listed on the IDS dated 9/19/2022) .
Regarding claims 1 and 2, Ryan et al. teach a photonic coating (composition for color) comprising a solvent, a pigment and a brush block copolymer (BBCP), (claim 16), wherein the solvent includes water or an organic solvent (p.12:33-34) or combination thereof to provide a “solvent system” (p.14:1-9).
Ryan et al. are silent on the amount of water in the composition.
However, Ryan et al. do teach the brush block copolymer and 80% of organic solvent can be used in the composition together (table 1, p.25). It would have been obvious to substitute the organic solvent for water as the solvent used in the examples because Ryan et al. specifically teach that the organic solvent can be substituted for water or a combination thereof to provide a solvent system (p.12:33-34), thereby reading on the at least 10% by weight of water in the composition.
Regarding claim 3-5, Ryan et al. teach the solvent can be methanol, ethanol, acetone, tetrahydrofuran, as disclosed in the instant specification [0078] thereby reading on the claimed amphipathic solvents as recited in the instant claims.
Regarding claim 11 and 12, Ryan et al. teach the composition further comprises a lineal polymer additive such as a poly (meth)acrylate, polylactic acid or polystyrene or combination thereof (p.17:9-13), which are disclosed in the instant specification as swelling agents [0081], thereby reading on the swelling agent as recited in the instant claims.
Regarding claim 13, Ryan et al. teach the composition comprises an organic or inorganic additive that absorbs ultra violet A or B light (280-400nm), thereby reading on the additive consisting of UV absorbers .
Regarding claim 15, Ryan et al. teach a method for forming a photonic coating composition comprising : a)combining a solvent, where the solvent can include water and an amphipathic solvent (see rejection of claims 1 and 3), a pigment and a brush copolymer to form a mixture; b) applying a layer of the mixture to a substrate; c) drying the layer to form a film, where the film forms the photonic coating in the substrate (p.3:24-25; p.4:1-18). Ryan et al. further teach self – assembly is a process in which a disordered system of pre-existing components forms an organized structure of pattern because of specific, local interactions among the components themselves, without external direction (p.14:15-24), which implies in the method described above, the brush block copolymer and additives are initially in solid state (disordered system), upon the addition of the solvent, a solution is formed in which the brush block copolymer chains self-assemble (p.1:1-5; p.14:17-21) to form a functional photonic crystal composition capable of producing color when upon drying to form a film (p.14:21-23), as required by the instant claim.
Regarding claim 17, Ryan et al. teach the solvent includes water or an organic solvent (p.12:33-34) or combination thereof to provide a “solvent system” (p.14:1-9).
Ryan et al. fails to teach an embodiment where the precursor dry state is initially mixed with an organic or amphipathic solvent.
However, Ryan et al. teach the combination of organic solvents, amphipathic solvent and water with sufficient specificity that one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to try mixing the brush block copolymer with the organic or amphipathic solvent as the teaching represents a finite number of identified, predictable combinations KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claims 6-7, 14, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ryan et al. (WO 2020/180427 A2, as listed on the IDS dated 9/19/2022) in view of Butler et al. (US 2010/0040741 A1, as listed in the IDS dated 7/30/2022).
Ryan et al. teach the composition according to claim 3 as set forth above and incorporated herein by reference. Ryan et al. teach brush block copolymer (BBCP) that self-assemble in solution into ordered phases (p.14:15-23 and p.3:24-25 and p.4:1-3)) to obtain a coating.
Regarding claims 6-7, Ryan et al. are silent on the co-binder as recited in the instant claims.
However, Butler et al. teach a colorant composition [0031] comprising monodisperse particles, at least a curing agent, at least one initiator and a solvent (abstract, [0061]), wherein the monodisperse particles form a photonic crystal ([0042],[0045]) that diffract light having a wavelength in a range that corresponds to the wavelength of visible light [(0010],[0018]). Butler et al. further teach that curing agents are crosslinkable resins (which correspond to the co-binder) with good mechanical, adhesive and toughness properties as well as good resistance to environmental degradation ([0079],[0080]). Butler et al. offer the motivation of incorporating the curing agent (co-binder) into the composition of Ryan et al. to improve the stability and temperature resistance of the self-assembled photonic crystal ([0003], [0005]-[0007]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to incorporate the co-binder taught by Butler et al. on the composition of Ryan et al., thereby arriving at the claimed invention.
Regarding claim 14, Ryan et al. are silent on the surfactant as recited in the instant claims.
However, Butler et al. teach the addition of flow agents including surfactants. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a surfactant to improve the uniform formation of the film and prevent defects in the photonic crystal structure (i.e. during spray coating or slot die coating as taught by Ryan et al. (abstract, claim 22) .
Regarding claim 16, Ryan et al. in view of Butler et al. teach the composition comprising at least one brush block copolymer, at least one solvent comprising water and an amphipathic solvent (see rejection of claims 1 -3), a co-binder and a surfactant (see rejections of claims 6-7). As discussed previously in the rejection of claim 15, it is noted that the disclosure of Ryan et al. (p.3:24-25; p.4:1-18, p.14:15-24) implies the brush block copolymer and the additives are in a dry state (solid) before the solvent is added, as required by the instant claim.
Regarding claim 18, Ryan et al. in view of Butler teach the composition comprising at least one brush block copolymer, at least one solvent comprising water and an amphipathic solvent and a surfactant (see rejection of claims 1-3 and 14), wherein the content of the brush block copolymer is about 2.5% to about 50 wt.%. in the mixture (claim 19). It is noted that the term “concentrated” in a photonic composition is interpreted as 30-70 wt.%, (see Butler et al. [0021]). Therefore, Ryan et al. are considered to encompass a concentrated formulation (when the bbcp’s content is from about 30 wt. to about 50 wt.%), as required by the instant claim.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ryan et al. (WO 2020/180427 A2) in view of Butler et al. (US 2010/0040741 A1) as set forth above for claims 6-7, and further in view of Guimont et al. (US2018/0192758 A1, as listed in the IDS dated 7/30/2022).
Ryan et al. in view of Butler et al. teach the composition according to claims 6-7 as set forth above and incorporated herein by reference.
Ryan et al. in view of Butler et al. are silent on the sucrose acetate iso-butyrate and the sucrose benzoate as the claimed co- binder.
However, Guimont et al. teach a nail varnish that includes a plurality of photonic particles and at least one block copolymer that can self-assemble into a colloidal crystal to provide a structured colored coating (abstract, [0024], [0025]), wherein structured color refers to color produced by microscopically structured surfaces fine enough to interfere with incident white light, without the use of pigments or dyes. The color results from interference effects, which is created by a range of photonic mechanisms including photonic crystals [0017]. The composition comprises a solvent [0050] and a suitable film forming agents including sucrose acetate iso-butyrate, polyvinyl alcohols [0059] and optional modifying resins including sucrose benzoate, sucrose acetate iso-butyrate [0061] . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the film sucrose acetate iso-butyrate , polyvinyl alcohol and the sucrose benzoate as taught by Guimont et al. to improve the stability, adhesion and mechanical properties of the photonic solution as a coating.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4 of copending Application No. 19/000,439 in view of Ryan et al. (WO 2020/180427 A).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 and 4 of copending Application ‘439 recites a composition for a printable photonic crystal forming ink solution with the scope of the instant claims 1-2 claimed solution comprising at least one block copolymer and at least one solvent, in which the at least one solvent includes water. It is noted that a composition for a printable photonic crystal forming ink solution reads on the aqueous solution capable of producing color.
The difference between the claims of the copending Application ‘439 and the present claims is the claimed brush block copolymer.
However, Ryan et al. teach brush block copolymers self-assembly rapidly under accessible conditions (ambient or slightly elevated temperature, atmospheric pressure) and the BBCP allows for modification of the optical features of the photonic crystal materials (p.2:1-9; p.2: 15-31). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated at least one brush block copolymer as the block copolymer of the copending application ‘439 to obtain low-cost and tunable photonic crystals.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763