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 .
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.
Status of Claims
Claims 1-2, 10-11 and 17-19 are pending and under examination. Claim 19 is new.
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.
Claims 1-2, 10-11 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Iso et al. (WO2015/119256, published 08/13/2015). Note that this reference is not an English document. Therefore, the cited passages are from the counterpart, Patent No. 10640732B2.
With respect to claims 1-2, Iso teaches a lens solution which exhibit high hydrophilization performance that contains a polymer having 2.5% to 95 by mass of the repeating unit (A) and 2.5% to 95% by mass of the repeating unit B (i.e., hydrophilic repeating units, see abstract and col. 14, lines 15-25) and hydrophobic repeating units that has one more repeating unit (C-2) having the hydrophobic formula as claimed in the instant formula (7) (see col. 14, lines 40-65), which would contain at least 1% of hydrophobic repeating units. Iso teaches the repeating unit A is preferably one or more selected from a repeating unit having a polyoxyalkylene group in a side chain and having the end of the side chain formed from a hydrogen atom or an alkyl group having 1 to 4 carbon atoms (A-1) and a repeating unit represented by formula (5) (A-4) (see co. 3, lines 5-15). Iso teaches the repeating unit (A-1) having the formula as claimed in the instant formula (2) wherein n represents 2 to 100 as an average value (see col. 5, lines 25-46) and the repeating unit A-4 having the formula as claimed in instant formula (6) (see col. 4, lines 1-15). Hence, it would read on the hydrophilic repeating units (A) comprising formulas (2) and (6). Iso further teaches hydrophobic repeating units wherein it is preferable that the polymer has one more repeating unit (C-2) having the hydrophobic formula as claimed in the instant formula (7) (see col. 14, lines 40-65). Iso teaches the average molecular weight of the polymer is preferably 10,000 to 500,000 (see col. 18, lines 15-16), which would read on the polymer has a weight average molecular weight of at least 3,000. Iso teaches, for example, mass ratio of [((A)+(B)):(C)] is preferably 60:40 to 99:1, more preferably 70:30 to 99:1 (see col. 17, lines 55-6).
The recitations of “for adding to latex particle” (claim 1) and “for surface treatment of latex particle” (claim 2) are directed to the intended use of the solutions. The intended use must result in a structural difference between the claimed solutions and the prior art’s solution to patentably distinguish the claimed solutions. If the chemical structures of the prior art read on the structures of the claimed product, then it is capable of performing the intended use.
Even though the chemical structures disclosed in Iso contain the instant formulas and the polymer having hydrophilic repeating units and hydrophobic repeating units and 2.5% to 95% contents of repeating units by mass in the polymer, the reference does not explicitly teach the claimed percentage ranges with the respected formulas (2), (6), and (7).
However, 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 used a polymer containing formulas (2), (6), and (7) with the claimed ranges because Iso teaches that the ranges are modifiable with the disclosure’s hydrophilic and hydrophobic repeating units such as 60:40 to 99:1 and 70:30 to 99:1 to exhibit hydrophilization performance. Because individually these formulas are recognized as either hydrophobic or hydrophilic repeating units in the polymer of Iso’s disclosure, it would have been obvious to have combined these formulas with the modifiable ratios to produce a solution for hydrophilization performance.
Additionally, it has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value for a result effective variable in exhibiting surface hydrophilization performance through polymers containing hydrophilic and hydrophobic moieties. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation” Application of Aller, 220 F.2d 454, 456, 105 USPQ 233, 235-236 (C.C.P.A. 1955). “No invention is involved in discovering optimum ranges of a process by routine experimentation.” Id. at 458, 105 USPQ at 236-237. The “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” Since applicant has not disclosed that the concentrations recited in the claims are for any particular purpose or solve any stated problem. Iso discloses a solution that exhibits high hydrophilization performance through a polymer having percentage ranges by mass of repeating units of hydrophilic and hydrophobic groups (see abstract). Thus, it would have been obvious for the person of ordinary skill to discover the optimum effective amount by mass of any hydrophilic and hydrophobic groups in a polymer for a particular surface hydrophilization performance.
With respect to claims 10 and 19, Iso teaches a weight average molecular weight of the polymer is preferably 10,000 to 500,000. However, Iso does not explicitly teach the claimed weight average molecular weight. Because the claimed ranges overlap with the ranges disclosed by the prior art, a prima facie case of obviousness exists.
With respect to claim 11, Iso teaches water-solubility of the polymer is 20:80 (see col., 17, 45-55).
With respect to claims 17-18, Iso teaches a weight average molecular weight of the polymer is preferably 10,000 to 500,000. However, Iso does not explicitly teach the claimed weight average molecular weight. Because the claimed ranges overlap with the ranges disclosed by the prior art, a prima facie case of obviousness exists.
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, 10-11 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-7, 10, and 15-20 of U.S. Patent No. 10640732B2 in view of Iso et al. (WO2015/119256, published 08/13/2015) Note that this reference is not an English document. Therefore, the passages cited are from the counterpart, Patent No. 10640732B2.
With respect to instant claims 1-2, Patent claim 2 recites a solution comprising a polymer having 2.5% to 95% by mass of the following repeating unit (A) and 2.5% to 95% by mass of the following repeating unit (B): (A) a hydrophilic repeating unit; and (B) a repeating unit having a polyoxyalkylene group in a side chain and having the end of the side chain formed from an alkyl group having 5 to 30 carbon atoms, an alkanoyl group having 5 to 30 carbon atoms, or an aryl group wherein the repeating unit B is represented by formula (10) which would read on the instant claimed formula (2). Patent claim 3 recites wherein the polymer further comprises 40% by mass or less of a repeating unit (C) wherein the repeating unit (C) is formula (II) which would read on the instant claimed formula (7). However, the Patent does not explicitly recite a polymer having together the claimed formulas (2), (6) and (7) and the claimed ranges.
Note that the recitations of “for adding to latex particle” (claim 1) and “for surface treatment of latex particle” (claim 2) are directed to the intended use of the solutions. The intended use must result in a structural difference between the claimed solutions and the prior art’s solution to patentably distinguish the claimed solutions. If the chemical structures of the prior art read on the structures of the claimed product, then it is capable of performing the intended use.
Iso has been discussed above. It would have been obvious to the person at the time of filing to have incorporated formulas (10) and (11) as recited in the Patent (i.e., instant claimed formulas 2 and 7, respectively) with formula (5) (i.e., instant claimed formula 6) of Iso because the Patent recites that a solution containing a polymer containing chemical structures of hydrophilic repeating units and polyoxyalkylene hydrophilic repeating units and Iso teaches that a hydrophilic repeating units may be formula (5) with polyoxyalkylene hydrophilic groups. Additionally, it would have been obvious to have produced a polymer having the instant claimed formulas (2), (6), and (7) because the Patent recites using the formula 11 as the hydrophobic repeating units of the polymer. The person would have a reasonable expectation of success incorporating the instant claimed formulas to produce a polymer because it has been well understood by the recited Patent and Iso to formulate a polymer with these hydrophilic and hydrophobic repeating units.
The claimed additive and surface treatment agent contain a polymer having percentage ranges of 60% to 99% for hydrophilic repeating units and 1% to 40% for hydrophobic repeating units, which overlaps with the Patent and Iso’s ranges in a solution containing a polymer that requires hydrophilic and hydrophobic repeating units to exhibit high hydrophilization performance and the ranges are 2.5% to 95% contents of hydrophilic units. Because the claimed ranges overlap with the ranges disclosed by the prior art, a prima facie case of obviousness exists.
Additionally, it has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value for a result effective variable in exhibiting surface hydrophilization performance. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation” Application of Aller, 220 F.2d 454, 456, 105 USPQ 233, 235-236 (C.C.P.A. 1955). “No invention is involved in discovering optimum ranges of a process by routine experimentation.” Id. at 458, 105 USPQ at 236-237. The “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” Since applicant has not disclosed that the concentrations recited in the claims are for any particular purpose or solve any stated problem. Iso discloses a solution that exhibits high hydrophilization performance through a polymer having percentage ranges by mass of repeating units of hydrophilic and hydrophobic groups (see abstract). Thus, it would have been obvious for the person of ordinary skill to discover the optimum effective amount by mass of hydrophilic and hydrophobic groups of a polymer for a particular surface hydrophilization performance.
With respect to claims 10 and 17-19, the Patent does not explicitly recite the polymer having the claimed ranges of a weight average molecular weights. Iso teaches a weight average molecular weight of the polymer is preferably 10,000 to 500,000. However, it would have been obvious to have produced the polymer of the recited Patent with a weight average molecular weight of 10,000 as taught by Iso because Iso teaches it is preferable to produce a polymer containing hydrophilic and hydrophobic units within a range of 10,000 to 500,000 to exhibit surface hydrophilization performance.
With respect to claim 11, Patent claim 4 recites a water-soluble polymer.
Response to Arguments
Applicant’s arguments filed 08/22/2025 have been fully considered. The previous 35 U.S.C. 103 rejection over Efe and Peppas has been withdrawn. However, in light of new prior art above, the allowable subject matter indicated in the previous Office Action dated 06/02/2025 is hereby withdrawn. In view of new prior art reference, new grounds of rejections are made (see above).
Note that even though Iso teaches a lens and contact lens solution, the instant recitations of “for adding to latex particle” (instant claim 1) and “for surface treatment of latex particle” (instant claim 2) are directed to the intended use of the solutions. The intended use must result in a structural difference between the claimed solutions and the prior art’s solution to patentably distinguish the claimed solutions. If the chemical structures of the prior art read on the structures of the claimed product, then it is capable of performing the intended use.
Conclusion
No claim is allowed.
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/N.P.N/Examiner, Art Unit 1678
/GREGORY S EMCH/Supervisory Patent Examiner, Art Unit 1678