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, 19-20, 22-30 are pending. Applicant’s previous election of Group II, and the following species, still applies and no claims are currently withdrawn.
PNG
media_image1.png
83
370
media_image1.png
Greyscale
PNG
media_image2.png
145
733
media_image2.png
Greyscale
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/03/25 has been entered.
Claim Rejections - 35 USC § 112(a)/first paragraph
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.
Claim(s) 3, 5-8, 10-14, 16-17, 19-20, 22-30 is/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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 17 recites a permanent marker property that does not appear to be supported. The permanent marker eraser stroke property is discussed in the examples, but for specific types of permanent marker, eraser, and aqueous solutions. Also, the property does not appear to ever have been performed 100 times, but rather it appears that certain permanent markers were applied and removed with windex and a paper towel (but not after waiting 24 hours) 100 times, and then the 24 hour permanent marker test was performed. The property as claimed is thus broader than the disclosure.
Claim 27 recites an abrasion property that does not appear to be supported. The abrasion property is discussed in the examples, but for specific types of eraser, passes per minute, and eraser weight. Furthermore, the subsequent permanent marker removal test after abrasion was not based on the number of eraser strokes but instead is based on percentage removed with water and windex. The property as claimed is thus broader than the disclosure.
Claims 24 and 29 recites a 1:1 to 20:1 ratio which does not appear to be supported.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same new matter issue(s) via their dependency.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 24 and 28-30 is/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.
Claim 24 recites a 1:1 to 20:1 ratio of first hydrophilic silane compounds and second compounds but then recites “based on the aqueous coating composition and condensation reaction product thereof” which is vague because it is unclear how the ratio of the two compounds can be based on the composition and the reaction product thereof since the compounds are only recited for the composition. The aqueous coating composition also has improper antecedent basis.
Claim 29 recites a 1:1 to 20:1 ratio of first hydrophilic silane compounds and second compounds but then recites “based on the aqueous coating composition” which is vague because it is unclear how the ratio of the two compounds is affected by them being in an aqueous coating composition (which also lacks proper antecedent basis).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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) 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:
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.
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, 19-20, 22-25, 29 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, 19-20, 22-25, and 29 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]).
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, and given that the methodology of claim 17 may include different types of “permanent” marker and removal conditions (e.g., types of “permanent” marker, types of eraser, amounts of pressure applied to eraser, and type and temperature of aqueous solution), 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 waiting 24 hours or using an eraser 7-9 times between writing and removal and then repeating the writing and removal 100 times). Claim 20 provides further limitation regarding the property of claim 17, but the aqueous solution is still broad in terms of the amount and type of solvent in the aqueous solution (and the same inherency rationale still applies). The above inherency rationale also applies to the dry eraseability property of claims 19 and 25 and the abrasion property of claim 27 (discussed below).
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, 27 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, 27 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. The abrasion property of claim 27 is inherent for the same reasons set forth above (see above regarding claim 17, 19, and 25). That is, the coating of Yamazaki is substantially the same as the coating in the present disclosure, and given that the methodology of claim 27 may include different types of “permanent” marker and removal conditions (e.g., types of “permanent” marker, types of eraser, amounts of pressure applied to eraser, and temperature of water), the coating of Yamazaki is inherently capable of achieving the properties of claim 27.
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. Remarks which are still deemed relevant are addressed below and are not persuasive.
Regarding the 112 rejections, Applicant argues that the weight of water would be accounted for in determining the ratio of the two claimed ingredients. This is not true. The weight ratio of the two ingredients would be based on the weights of the two ingredients. If applicant means that the weight ratio is the weight ratio of the two ingredients in the aqueous coating composition that forms the hydrophilic coating composition (instead of “based on the aqueous coating composition…), then this should be recited (with proper antecedent basis for “the aqueous coating composition”). The “and condensation reaction product thereof” clause should be omitted because it does not make sense. This would not affect the lack of support for the range endpoints, which has not been addressed by Applicant.
Applicant then argues that Yamazaki’s examples fail to inherently have the claimed property, but the reference is not limited to the examples. Applicant argues that the Yamazaki would have to completely omit the hydrophilic polymer to achieve the claimed property. However, Applicant has previously admitted that some amount of organic polymer would not affect the basic and novel feature.
Applicant then argues that acrylamide is carcinogenic which is irrelevant.
The declaration has been considered but is supposedly based on the composition of Tanaka, which is irrelevant because the rejection is based on the composition of Yamazaki, with Tanaka merely rendering obvious the method steps of writing and removing marker from a hydrophilic soil resistant surface. The declaration is also not even really representative of Tanaka because a substitution was made that puts the tested composition outside the scope of Tanaka. The declaration therefore appears to have no relevance to the rejection.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787