DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claims 3, 5-8, 10-14, 16-17, 19, 22-26, 28-31 are pending. Applicant’s previous election of Group II, and the following species, still applies and no claims are currently withdrawn.
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Response to Amendment
Applicant’s amendment of 04/30/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Examiner’s Note
“Permanent Marker Removal with Water Test Method” and “Abrasion Test Method” are provided with controlling definitions in [0163]-[0165] and [0172]-[0173], respectively, of the present PGPub.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
If this application currently names joint inventors: in considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 3, 5-8, 10, 17, 19, 22-25, 29, and 31 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamazaki et al. (WO 2009/119690, see Applicant’s provided translation from the parent application), in view of Tanaka et al. (U.S. 2008/0176085) in view of Matsumoto et al. (U.S. 4,256,492) in view of Keller (U.S. 5,855,442).
Regarding claims 3, 5-8, 10, 17, 19, 22-25, 29 and 31, Yamazaki teaches a hydrophilic soil resistant coating provided on a substrate, e.g., plastic as in the elected species and claim 10, comprising a zwitterionic silane compound that renders the elected silane compound obvious (i.e., the third compound of claim 5 and as in claims 6-8, as explained below), as well as tetralkoxysilane compounds and nanosilica as in claim 3 at amounts that overlap claims 22-24 and 29, with the coating being applied to various types of articles, e.g., a signboard, which is a type of board, as in claim 25 (dry erase properties being addressed below) ([0010], [0012], [0021]-[0022], [0027], [0105]-[0108], [0117]-[0118], [0123]-[0126], [0148]). All the ingredients required in the composition of Yamazaki ([0012]) are involved in the condensation reaction (i.e., the polymers B-1 and B-2 have silane coupling groups that condense with the presently claimed a, b, and c ingredients and the catalyst C is for the condensation reaction and may have isopropylate groups, [0101], which will condense with the other ingredients) and therefore the final coating consists of the condensation reaction product of those ingredients, as in claim 31 (it is noted that claim 31 includes “comprising” after “consisting”).
The fourth and fifth compounds in [0021] of Yamazaki correspond to the elected species except that there are alkoxy groups on the silicon atom instead of hydroxyl groups and there are only three CH2 groups between the nitrogen and sulfonate group instead of four CH2 groups.
However, alkoxy groups become hydroxyl groups (as in Applicant’s elected species) during the hydrolysis and condensation of the alkoxy groups, which is explicitly disclosed in Yamazaki, and also the final condensation reaction product would be the same in any case whether the silane starts with alkoxy or hydroxyl groups. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Furthermore, the number of CH2 groups in the elected species is prima facie obvious based on the compounds of Yamazaki because it is obvious to add or remove a CH2 linking group. See MPEP 2144.09 II. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Applicant has stated that the basic and novel characteristics of the invention include the permanent marker property of claim 17, therefore the consisting essentially of aspect will be given weight but the prior art still does not include any ingredients that would materially change these “basic and novel characteristics” as explained below in the discussion of claim 17. See MPEP 2111.03.
The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. . . . . . . If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention.
Yamazaki does not explicitly teach applying writing, and removing such writing, to the above coated article as claimed. However, Tanaka is also directed to soil and fog resistant hydrophilic coatings (see abstract, [0002]) and teaches that such coatings may be used to easily remove oily ink (considered a type of legend, [0329]) as in claims 17. Thus, it would have been obvious to have used the article of Yamazaki in such a way (applying and then removing ink legends) because Tanaka teaches that coated substrates with hydrophilic functionality may provide such utility as part of their overall soil-resistance.
Also, although permanent marker properties from claim 17 are not explicitly disclosed, given that the coating of Yamazaki is substantially the same as the coating in the present disclosure, the coating of Yamazaki is inherently capable of achieving the properties of claim 17 (claim 17 appears to recite a property of the coating itself, not a required aspect of the method, i.e., it does not appear to limit the method to performing that test). The above inherency rationale also applies to the dry eraseability property of claims 19 and 25.
In addition to Tanaka rendering obvious the writing and removing limitations of claim 17 in combination with Yamazaki, both of Matsumoto and Keller disclose removable markers (as in claim 19, and like the marker used in Tanaka) that may be easily removed from marking boards (like the signboard of Yamazaki) given that Tanaka teaches that marker removal is part of the “soil resistant” usage mentioned by Yamazaki (See Matsumoto, see abstract, col. 5, lines 50-65, disclosing an ink that can be easily wiped off from general surfaces, even if the surface is not designed to allow easy removal of such markings; See Keller, see abstract, col. 1, lines 5-15, providing details regarding an eraser for such removable markers and confirming that removing the marking allows the board to be written on again, as is already obvious anyway as explained above). Thus, Matsumoto and Keller provide further teachings related to specific types of removable (“dry eraseable”) inks and erasers that make the method steps of writing and then removal of markings on soil resistant hydrophilic signboard of modified Yamazaki (as in claims 17 and 19) further obvious by providing evidence of the demand for such a rewritable board/marker/eraser combination.
Claim(s) 11-14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamazaki et al. (WO 2009/119690, see Applicant’s provided translation from the parent application), in view of Tanaka et al. (U.S. 2008/0176085) in view of Matsumoto et al. (U.S. 4,256,492) in view of Keller (U.S. 5,855,442), as applied to claim 17 above, and further in view of Cramer et al. (U.S. 2003/0148684).
Regarding claims 11-14, Yamazaki discloses all the above subject matter and also discloses that various inorganic layers may be between the substrate and the hydrophilic coating, including inorganic coatings that function to improve adhesion ([0130]-[0131], [0136]-[0141]), but does not disclose the primer layer as claimed. However, Cramer is also directed to hydrophilic coatings and teaches that an outer zwitterionic compound containing layer (like the coating of Yamazaki) may be provided over a charged inorganic particle layer that is provided on the substrate as a primer, with the inorganic particles being provided as alkali metal silicates (of which lithium is one such alkali metal, resulting in lithium silicate, as in claim 12), and/or silica as in claim 13, to increase durability of the hydrophilic properties (see abstract, [0018], [0042], [0046]-[0049], [0055] [0058]-[0065], [0070]-[0072], [0085]). Cramer also shows that lithium silicates have hydroxyl groups (such that the primer layer would have hydroxyl groups) ([0047]-[0048]). As explained above, during the polymerization/condensation reaction of alkoxysilanes (as recited in claim 14), siloxane bonds form that replace the alkoxy groups (with such groups being first hydrolyzed to hydroxyl groups before being condensed).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Thus, it would have been obvious to have used the inorganic lithium silicate and/or silica based primer of Cramer between the substrate and the zwitterionic coating of modified Yamazaki in order to provide the article with improved hydrophilic durability (and especially since Yamazaki calls for an inorganic primer between the substrate and coating).
Claim(s) 16, 26, is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamazaki et al. (WO 2009/119690, see Applicant’s provided translation from the parent application), in view of Tanaka et al. (U.S. 2008/0176085) in view of Matsumoto et al. (U.S. 4,256,492) in view of Keller (U.S. 5,855,442), as applied to claim 17 above, and further in view of Kato et al. (U.S. 2007/0275200).
Regarding claims 16, 26, modified Yamazaki teaches all of the above subject matter, including that the substrate bearing the coating discussed above may be a film and also that the coating provided on such a film provides easy cleaning (anti soil) properties.
Modified Yamazaki does not disclose an adhesive on the opposite side of the film as the easy clean coating, however, Kato is also directed to films that bear easy cleaning coatings (antifouling coatings, see abstract) and teaches that a removable adhesive may be applied to the opposite side of the film (and therefore also opposite the face on which the hydrophilic coating is provided as explained above) to allow the film to be re-applied to different surfaces to benefit from such easy clean properties (e.g., display devices) ([0001]). Thus, it would have been obvious to have used an adhesive on the easy clean film of modified Yamazaki as taught by Kato in order to allow the film to be re-applied to different surfaces in order to provide easy clean properties to such surfaces.
Claim(s) 28 and 30 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yamazaki et al. (WO 2009/119690, see Applicant’s provided translation from the parent application), in view of Tanaka et al. (U.S. 2008/0176085) in view of Matsumoto et al. (U.S. 4,256,492) in view of Keller (U.S. 5,855,442), as applied to claim 17 above, and further in view of Sato (JP 2005-134495, see machine translation).
Regarding claims 28 and 30, modified Yamazaki teaches all of the above subject matter, including suggesting colloidal nanosilica for strength ([0117]) and tetralkoxysilane as crosslinker ([0105]-[0106]), but does not disclose the particular silicates as claimed. However, Sato is also directed to hydrophilic coatings with antifog properties and teaches that self-crosslinking may be achieved and hardness increased via the use of colloidal silica such as methyl/ethyl silicates (another name for tetramethoxy/tetraethoxy-silane, like already taught in Yamazaki) or sodium silicate (see [0001], [0014]-[0016]) such that it would have been obvious to have used sodium silicate in Yamazaki as an alternative to the tetralkoxysilane crosslinkers because sodium silicate is disclosed in Sato as such an alternative for providing the desired functionality (i.e., crosslinking) and/or to have used the sodium silicate as a form of colloidal silica as sought in Yamazaki because Sato teaches that sodium silicate colloid can increase hardness (analogous to the film strength desired in Yamazaki).
It is further noted that lithium/sodium/potassium silicate are merely reactants used to form the claimed reaction product (i.e., the hydrophilic coating), and the reaction product of silicates (whether alkali metal silicates as in claim 28/30 or ethyl silicates/tetralkoxysilane as in claim 17) would be the same crosslinked siloxane structure (via the condensation reaction) because both types of silicates have 4 hydrolyzable groups per silicon atom that condense to form 4 siloxane bonds. Thus, the claimed silicates do not appear to affect the final structure of the claimed hydrophilic coating compared to the tetralkoxysilane compounds of claim 17, and instead are merely product by process limitations (i.e., related to the composition that forms the claimed hydrophilic coating). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
The previous 112 issues are resolved by Applicant’s amendment.
Applicant continues to argue that the hydrophilic polymers of Yamazaki are precluded by the consisting essentially of phrase but the previous admission that some amount of organic polymer would not affect the basic and novel feature is still not addressed and appears confirmed in Applicant’s current remarks (i.e., “much lower organic content”, and “appreciable amounts of organic polymers”) which indicate that such polymers do not need to be omitted entirely. Absent some evidence/declaration as to what numeric amount of hydrophilic polymer would affect the basic and novel feature, the mere presence of such a hydrophilic polymer (which may be as low as 5wt% solids, and further diluted with solvent, in Yamazaki) is not outside the claimed “consisting essentially of” limitation based on Applicant’s admission.
Applicant discusses the previous declaration, but it is maintained that previous declaration is deficient for the reasons previously set forth.
Applicant mentions long felt need, but there is no evidence/support for this assertion and the claims are not commensurate in scope with the examples anyway.
Applicant argues that the examples of Yamazaki do not fall within the claimed scope, but the reference is not limited to the examples and the broader disclosure of Yamazaki does indeed overlap the claimed scope and those overlapping embodiments in Yamazaki would inherently have the claimed properties as explained above. Applicant argues that the hydrophilic polymer of Yamazaki would have to be completely omitted to achieve the claimed properties, but as explained above this is contradicted by Applicant’s previous statements regarding some amount of hydrophilic polymers.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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