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 .
In view of the amendment, previous 112(b) rejections on claims 1-15, previous 112(b) rejection on claims 10 and 13 and previous 112(b) rejection on claim 14 are hereby withdrawn.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Claim Objections
Claim 15 is objected to because of the following informalities: on line 2, applicant need to change “an article of claim 1” to --- the coated natural or synthetic sponge of the article of claim 1 --- (so as to make the meaning of claim 15 clearer – see the 2nd paragraph, pg.3 of present specification for the support). On line 4, applicant need to change “sponge” to --- sponge of the article ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claims 1 and 11, from which claims 3 and 12 depend, recite that the phase change material has a heat of fusion within the temperature range of 25-37oC of at least 100 J/g and up to 200 J/g (as measured by differential scanning calorimetry). However, all of the natural or synthetic wax materials listed in the dependent claims 3 and 12, except for petroleum wax and paraffin wax, have melting temperatures above 38oC, which means that these wax materials cannot have “a heat of fusion within the temperature range of 25-37oC . . .” because they do not melt at the temperature range of 25-37oC.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-9, 11, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann et al (US 2010/0015869 A1) in view of OH et al (US 2016/0242529 A1), Evans et al (US 2013/0122204 A1), James et al (US 2015/0010711 A1), Bryant et al (5,366,801) and Hartmann et al (US 2016/0223269 A1) (with an internet article on “Nonadecane” by NIST Chemistry WebBook, SRD 69, as obtained from the website: https://webbook.nist.gov/cgi/cbook.cgi?ID=C629925&Units=SI&Mask=7 , which is being cited here as an evidentiary reference merely to support the Examiner’s assertion that nonadecane has a Mw of 268.52 g/mol and a heat of fusion of 42.7 kJ/mol at 304.4K as measured by DSC).
Hartmann teaches ([0093], claims 22-23) a precursor for the production of an article, wherein the precursor comprises a functional polymeric phase change material (“FP-PCM”) and at least one other ingredient, which examples include an aqueous solvent, microcapsules comprising phase change material (“mPCM”), binders, additives or combinations thereof.
Hartmann teaches (see [0093] and Fig. 1 in which “R” represents reactive functional groups) that the FP-PCM can be based on a (meth)acrylate backbone with crystallizable side chains based on long chain alkyl groups or long chain ether groups. It would have been obvious to one skilled in the art to use a FP-PCM based on a (meth)acrylate backbone with crystallizable side chains based on long chain alkyl groups as Hartmann’s FP-PCM with a reasonable expectation of success. Hartmann’s FP-PCM based on the (meth)acrylate backbone teaches a water-insoluble, elastomeric non-silicone polymer, wherein the non-silicon polymer is a homopolymer or copolymers of an acrylate monomer (see pg.5 of present specification, lines 5-6 and the first 5 lines in the 3rd paragraph). Hartmann further teaches (see claim 24 and [00159]) a method of producing an article comprising: providing a precursor comprising its FP-PCM, providing a substrate, and combining the FP-PCM of the precursor with the substrate by coating the substrate with the precursor containing FP-PCM. Specifically, Hartmann teaches (see the working example in [0190]) a method of coating a substrate with the precursor containing FP-PCM and then heating and drying the coated substrate. Such process would yield a cured coating of the precursor containing FP-PCM (instant solid, water-insoluble, elastomeric non-silicone polymer) – see the last 2 lines on pg.9 and the first 6 lines of pg.10 of present specification. Thus, Hartmann teaches a cured coating of a solid, water-insoluble, elastomeric non-silicone polymer adhered to at least one surface of the substrate, wherein the non-silicone polymer is a homopolymer or copolymers of an acrylate monomer.
Hartmann does not explicitly teaches that its substrate is a natural or synthetic sponge. However, Hartmann teaches (abstract, [0111], [0125] and [0134]) that its substrates can be chosen from polyester and also teaches that its coated article (as discussed above) can be used in cosmetic industries. As evidenced by Oh (abstract, [0002]-[0004] and [0279]), it is well known in the art that a sponge made of polyester is commonly used in cosmetic vessels (for example, a sponge impregnated with liquid cosmetics). It would have been obvious to one skilled in the art to use Hartmann’s polyester substrate as a sponge commonly used in a cosmetic vessel with a reasonable expectation of success. Thus, Hartmann in view of Oh teaches instant article comprising a synthetic sponge and a cured coating of a solid water-insoluble, elastomeric non-silicone polymer adhered to at least one surface of the sponge (the non-silicone polymer being a homo- or copolymers of an acrylate monomer).
Hartmann in view of Oh does not teach instant (i) at least one silicone polymer having a kinematic viscosity of a least 1 million mm2/s at 25oC and/or a Williams plasticity number of at least 30 as measured according to ASTM 926. Evans ([0002]) and James ([0001]) teach that silicone gums generally consist of linear chains of poly(dimethylsiloxane) that typically possess kinematic viscosities greater than 1 million cSt at 25oC (i.e., greater than 1 million mm2/s at 25oc). Evans and James teach that silicone gum emulsions are important in the coating industry as they function as slip and anti-mar additives for both aqueous and non-aqueous coatings. Since Hartmann ([0147] and [0149]) indicates its desire for protection of the FP-PCM against abrasion or wear during use and durability of its article during processing or use, it would be obvious to one skilled in the art to incorporate the silicone gum as discussed above in Hartmann’s pre-cursor containing FP-PCM with a reasonable expectation of improving wear or abrasion resistance and durability of Hartmann’s article. The silicone gum discussed above teaches instant (i) at least one silicone polymer having a kinematic viscosity of a least 1 million mm2/s at 25oC and/or a Williams plasticity number of at least 30 as measured according to ASTM 926, and thus, when Hartmann’s pre-cursor containing FP-PCM and the silicone gum is coated onto the polyester substrate (sponge), heated and dried, the resulting cured coating would contain instant (i) at least one silicone polymer having a kinematic viscosity of a least 1 million mm2/s at 25oC and/or a Williams plasticity number of at least 30 as measured according to ASTM 926.
With respect to instant (ii) particles of an encapsulated phase change material having a melting or glass transition temperature of 25-37oC, as already discussed above, Hartmann teaches that its precursor containing FP-PCM further comprises at least one other ingredient, which examples include microcapsules comprising phase change material (“mPCM”). Thus, it would have been obvious to one skilled in the art to further include mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of success. As to instant melting or glass transition temperature range for the particles of an encapsulated phase change material, Hartmann does not teach the melting or glass transition temperature for the mPCM, however, Hartmann refers to other references (see [0004]-[0005]), including Bryant (US Pat. No. 5,366,801) for the details of the mPCM, and Bryant teaches (abstract; col.3, lines 35-36 and the table shown in col.3; claims 4 and 9) microcapsules containing a temperature stabilizing phase change material such as nonadecane (instant paraffin wax of claim 3), which has a melting point of 32.1oC. It would have been obvious to one skilled in the art to use nonadecane (having the melting point of 32.1oC) as a mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of stabilizing the temperature of its article. With respect to the newly added limitation as to the phase change material having a heat of fusion within the temperature range of 25-37oC of at least 100 J/g and up to 200 J/g as measured by differential scanning calorimetry, as evidenced by the internet article “Nonadecane” by NIST Chemistry WebBook, SRD 69 (see the 1st and 4th pages), nonadecane has a Mw of 268.52 and a heat of fusion (i.e., enthalpy of fusion) of 42.7 kJ/mol at 304.4K (i.e., 31.3oC) as measured by DSC (differential scanning calorimetry). This converts to 159 J/g as calculated by the Examiner (42.7 divided by Mw of nonadecane, then multiplied by 1000 (since 1 kJ = 1000 J). Thus, the nonadecane taught by Hartmann in view of Bryant teaches instant (ii) particles of an encapsulated phase change material having a melting or glass transition temperature of 25-37oC and a heat of fusion within the temperature range of 25-37oC of at least 100 J/g and up to 200J/g as measured by DSC.
With respect to instant (iii) ceramic particles having a particle size of up to 50 mm, as evidenced by Hartmann’269 ([0258], [0260], [0046], [0050] and [0092]), it is known in the art that conductive fillers, such as boron nitride, are frequently added to phase change materials in order to improve their heat dissipation properties (by spreading heat from a high-temperature environment to a lower temperature environment). It would have been obvious to one skilled in the art to add conductive filler, such as boron nitride (instant ceramic particles of claim 6) to Hartmann’s precursor containing FP-PCM with a reasonable expectation of achieving improved heat dissipation properties for its articles. Hartmann’269 teaches ([0264[) that the particle size for the conductive fillers ranges from 0.1 nm to 1mm (i.e., 0.0001 mm to 1000 mm). Such range overlaps with instant range “up to 50mm” of claim 1 as well as with instant range of “at least 100 nm and up to 20mm” of claim 6, thus rendering instant ranges prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Thus, Hartmann in view of Hartmann’269 teach instant (iii) ceramic particles having a particle size of up to 50 mm.
With respect to instant range 2.5-30 wt.% for the amount of the silicone polymer, Evans (claim 10 and [0066]) and James (claims 1 and 2) teach that the silicone gum emulsions can be used in the amount of 0.01-20 wt.% in a coating composition. Evans (claim 3) and James ([0101]) further teach that the silicone gum emulsions contain 60-65 wt.% silicone gums, which means that there is 0.0060 – 13 wt.% of silicone gums (instant silicone polymer) as calculated by the Examiner. Under such guideline given by Evans and James, instant range for the amount of the silicone gum (instant silicone polymer) included in Hartmann’s precursor (containing FP-PCM (instant non-silicone polymer), silicone gum (instant silicone polymer), mPCM (instant encapsulated phase change material) and boron nitride (instant ceramic particles)) would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. With respect to instant range 10-70 wt.% for the amount of the encapsulated phase change material, Bryant (which teaches microcapsules containing a temperature stabilizing phase change material such as nonadecane as discussed above) teaches (col.2, lines 19-21, lines 43-50, col.4, lines 14-17) that such microcapsules containing a temperature stabilizing phase change material can be contained in the amount of 30-80 wt.% in a polymer coating. Under such guideline given by Bryant, instant range for the amount of the encapsulated phase change material would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. With respect to instant range up to 25 wt.% for the amount of the ceramic particles, Hartmann’269 (which teaches the use of conductive fillers such as boron nitride as discussed above) teaches ([0263]) that such conductive fillers can be used in the amount of 2 – 95 wt.% of thermal management material (which is equivalent to Hartmann’s precursor containing FP-PCM). Under such guideline given by Harmann’269, instant range for the amount of the ceramic particles would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra.
Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claim 1.
With respect to instant claim 2, as discussed above, Hartmann teaches coating a substrate with the precursor containing FP-PCM and then curing it. However, Hartmann is silent as to the thickness of the cured coating. Hartmann’269 teaches ([0376]) that such coating applied to the substrate can have a thickness in the range of up to 200 mm. Such range overlaps with instant range 100 to 2500 mm, thus rendering instant range prima facie obvious. In re Wertheim, supra. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claims 2, 3 and 6 (nonadecane taught by Bryant is a paraffin wax as claimed in claim 3). With respect to instant claims 7-9 (which also depend from claim 2), for the reasons already explained above (in relation to instant ranges of claim 1 for the amount of the silicone polymer, encapsulated phase change material and ceramic particles), instant ranges of claims 7-9 for the amount of the phase change material particles, ceramic particles and silicone polymer would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claims 7-9.
With respect to instant claim 4, as discussed above, Evans and James teach that silicone gums generally consist of linear chains of poly(dimethylsiloxane) that typically possess kinematic viscosities greater than 1 million mm2/s at 25oC. Such open-ended range overlaps with instant viscosity ranges (10-75 million mm2/s as well as greater than 75 million mm2/s and up to 200 million mm2/s), thus rendering instant ranges prima facie obvious. In re Wertheim, supra. Alternatively, under the general guideline given by Evan and James, instant viscosity ranges of claim 4 would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claim 4. Furthermore, Evans teaches ([0015], [0018] and [0019]) that its silicone gums can be hydroxyl-terminated polydimethylsiloxanes, dimethylvinylsiloxy-endblocked dimethylpolysiloxanes (instant vinyl-terminated poly(dimethylsiloxane) or a mixture thereof. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claim 5.
With respect to instant claims 11, 12 and 14, as already explained above, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 teaches instant coating composition of claim 11 except for (i) water and/or one or more other compounds that are liquid at 23oC and having a boiling temperature at standard pressure of 40-100oC; (ii) a water-insoluble elastomeric, non-silicone polymer being dispersed in the liquid phase in the form of particles or droplets, and (iii) instant silicone polymer, instant particles of encapsulated phase change material and ceramic particles being dispersed in the liquid phase. Hartmann teaches (claims 22-23) that its precursor comprising FP-PCM contains at least one other ingredient, which examples include an aqueous solvent (water). Thus, it would be obvious to one skilled in the art to include water as the at least one other ingredient in Hartmann’s precursor with a reasonable expectation of success. Thus, Hartmann teaches instant water having a boiling temperature at standard pressure of 100oC. Furthermore, once the water is further included in Hartmann’s precursor (as modified by the teachings of the other cited prior arts) comprising FP-PCM (instant water-insoluble elastomeric, non-silicone polymer), silicone gums (instant at least one silicone polymer), mPCM (instant particles of encapsulated phase change material), and conductive fillers such as boron nitride (instant ceramic particles), the FP-PCM, silicone gums, mPCM and conductive fillers such as boron nitride would naturally be dispersed in the water (instant liquid phase containing water). Furthermore, Hartmann’269 teaches ([ [0122]) that the FP-PCM may be in the form of particles. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claims 11, 12 and 14 (the newly added limitation of claim 11 was already addressed above).
With respect to instant claim 15, as discussed above, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 teaches instant article of claim 1 comprising a synthetic sponge (made of polyester) and a cured coating formed from instant components. As already discussed above, Hartmann teaches its coated article can be used in cosmetic industries, and as also discussed above, Oh indicates that it is well known in the art that a sponge made of polyester is commonly used in cosmetic vessels (for example, a sponge impregnated with liquid cosmetics). Furthermore, Hartmann’269 teaches ([0130]) that when applied to a skin, the coated article (such as Hartmann’s coated and cured article formed from its precursor comprising FP-PCM) produces a cooling effect on the skin and may be infused with cosmetic compositions for various benefits. Based on the teachings of these cited prior arts, it would have been obvious to one skilled in the art to use Hartmann’s coated and cured article (having polyester substrate) as a carrier for cosmetics to apply the cosmetic to a skin by applying the cosmetic to the article and then contacting the article (that has been applied with the cosmetic) to the skin so that the cosmetic can be transferred from the article to the skin with a reasonable expectation of providing a cooling effect to the skin. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269 renders obvious instant claim 15.
Claim(s) 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann et al (US 2010/0015869 A1) in view of OH et al (US 2016/0242529 A1), Evans et al (US 2013/0122204 A1), James et al (US 2015/0010711 A1), Bryant et al (5,366,801) and Hartmann et al (US 2016/0223269 A1), as applied to claims 2 and 12 above, respectively, and further in view of Yokozeki et al (US 2014/0242127 A1).
Hartmann in view of the other cited references does not teach instant hydrophilic polymer of claims 10 an 13. However, Hartmann teaches ([0159], [0162], [0163]) that its precursors comprising FP-PCM may contain other additives for use in moisture management, such as hydrophilic or polar materials, which examples include glycols. Yokozeki teaches (abstract) a cosmetic composition (for topical application to the skin) comprising at least one phase change material in combination with a cosmetically compatible carrier and methods for maintaining the skin of a wearer of a cosmetic product at a comfortable temperature. Yokozeki teaches ([0146]) that it would be desirable for such composition to include humectants, such as polyethylene glycols having 4-200 repeating ethylene oxide units (instant hydrophilic polymer that is a liquid at 23oC) . Since Hartmann teaches that its precursors comprising FP-PCM may contain hydrophilic or polar materials, such as glycols, for use in moisture management, it would be obvious to one skilled in the art to include polyethylene glycols having 4-200 repeating ethylene oxide units in Hartmann’s precursors as a humectant with a reasonable expectation of providing successful moisture management. As calculated by the Examiner, polyethylene glycols with 4-200 repeating ethylene oxide units would have a Mw range of 176 to 8800 g/mol. Such range overlaps with instant Mw range 350-8000, thus rendering instant range prima facie obvious. In re Wertheim, supra. As to instant range (0.1-15 wt.%) for the amount for the hydrophilic polymer, Yokozeki teaches ([0146]) that such humectants can be used in the amount of 0.001-25 wt.% of the total composition. Under the guideline given by Yokozeki, instant range (0.1-15 wt.%) for the amount of the hydrophilic polymer based on the total weight of the elastomeric polymer, encapsulated phase change material particles, ceramic particles and hydrophilic polymer would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Hartmann in view of Oh, Evans, James, Bryant and Hartmann’269, and further in view of Yokozeki renders obvious instant claims 10 and 13.
Response to Arguments
Applicant first argue that Hartmann teaches a coating with functional polymeric phase change material (FP-PCM) which has to bond to a substrate while applicant use encapsulated phase change material (mPCM) which does not bond to a substrate. Applicant argue that although Hartmann teaches mPCM which may be used as an optional additive in its coating, it does not teach (i) that mPCM is the primary source of latent heat storage, (ii) that mPCM can replace FP-PCM, or (iii) the high-loadings (10-70 wt.%) of mPCM required in present claim. Applicant argue that Hartmann does not teach mPCM particles that have a heat of fusion ranging from 100 J/g to 200 J/g and that Hartmann’s FP-PCM has a much lower heat of fusion. Applicant argue therefore that Hartmann does not teach instant claim 1. The Examiner disagrees. First of all, whether FP-PCM or mPCM bonds or not to the substrate is irrelevant here because bonding or non-bonding of the FP-PCM or mPCM is not claimed in instant claims. Besides, Hartmann never teaches that its mPCM has to bond to a substrate. Secondly, instant claim language does not exclude the presence of Hartmann’s FP-PCM, nor does it require the mPCM to be the primary source of latent heat storage. Furthermore, although Hartmann alone does not teach the high-loadings (10-70 wt.%) of mPCM, the Examiner already explained above that since Bryant teaches that the microcapsules containing a temperature stabilizing phase change material can be contained in the amount of 30-80 wt.% in a polymer coating, under such guideline given by Bryant, instant range for the amount of the encapsulated phase change material would have been obvious to one skilled in the art before the effective filing date of the claimed invention since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, supra. Thus, Hartmann in view of Bryant renders obvious instant 10-70 wt.% mPCM. With respect to the newly added limitation as to the heat of fusion ranging from 100 J/g to 200 J/g within the temperature range of 25-37oC, the Examiner first established above that in view of Bryant’s teaching, it would be obvious to one skilled in the art to use nonadecane (having the melting point of 32.1oC) as a mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of stabilizing temperature of its article. The Examiner then established that since nonadecane has a Mw of 268.52 and a heat of fusion of 42.7 kJ/mol at 304.4K (i.e., 31.3oC) as measured by DSC (differential scanning calorimetry), this gives the heat of fusion to be 159 J/g, and therefore, the nonadecane taught by Hartmann in view of Bryant teaches instant (ii) particles of an encapsulated phase change material having a melting or glass transition temperature of 25-37oC and a heat of fusion within the temperature range of 25-37oC of at least 100 J/g and up to 200J/g as measured by DSC.
Applicant argue that although Bryant teaches mPCM, it does not teach that it may be incorporated into Hartman’s FP-PCM framework nor does Bryant teach the heat of fusion as claimed in instant claim 1. The Examiner disagrees. First of all, Hartmann itself teaches ([0093], claims 22-23) that its precursor containing FP-PCM further comprises at least one other ingredient, such as mPCM, and it refers to other references including Bryant for the details of the mPCM. As explained above, Bryant teaches microcapsules containing a temperature stabilizing phase change material such as nonadecane having a melting point of 32.1oC. Thus, based on the teachings of Hartmann in view of Bryant, it would have been obvious to one skilled in the art to add nonadecane as a mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of stabilizing the temperature of its article. Secondly, applicant’s argument that Bryant does not teach the heat of fusion as claimed in instant claim 1 was already addressed in the paragraph above (i.e., the nonadecane taught by Bryant teaches instant (ii) particles of an encapsulated phase change material having a melting or glass transition temperature of 25-37oC and a heat of fusion within the temperature range of 25-37oC of at least 100 J/g and up to 200J/g as measured by DSC).
Applicant argue that Hartmann teaches the advantages of its FP-PCM over mPCM and argue that its reported coating performance depends on the use of FP-PCM that chemically integrate into the coating and bond to the substrate rather than discrete mPCM particles. Applicant thus argue that there is no motivation to substitute mPCM for FP-PCM in Hartmann nor is there any reasonable expectation of success that substituting mPCM for FP-PCM will result in a coating that has integrity, flexibility and functional performance. However, applicant’s argument is not persuasive because, as already addressed above, the Examiner never asserted that it would be obvious to substitute mPCM for FP-PCM in Hartmann. Hartmann itself teaches that its precursor containing FP-PCM further comprises at least one other ingredient, such as mPCM, and Bryant teaches microcapsules containing a temperature stabilizing phase change material, such as nonadecane. Thus, based on the teachings of Hartmann in view of Bryant, it would have been obvious to one skilled in the art to add nonadecane as a mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of stabilizing the temperature of its article.
Applicant argue that there is no motivation to add instant high viscosity silicone polymer having the claimed rheological properties into Hartmann’s precursor containing FP-PCM and that the high viscosity silicon polymer would be compatible with or beneficial to Hartmann’s precursor containing FP-PCM. Applicant further argue that neither Evans nor James teaches the claimed kinematic viscosity or Williams plasticity number of at least 30 as measured by ASTM 926. The Examiner disagrees. As already discussed above, Evans and James teach that silicone gums generally consist of linear chains of poly(dimethylsiloxane) that typically possess kinematic viscosities greater than 1 million cSt at 25oC (i.e., greater than 1 million mm2/s at 25oc) (thus, Evans and James teach instant silicone polymer having the claimed kinematic viscosity), and Evans and James teach that silicone gum emulsions are important in the coating industry as they function as slip and anti-mar additives for both aqueous and non-aqueous coatings. Since Hartmann ([0147] and [0149]) indicates its desire for protection of the FP-PCM against abrasion or wear during use and durability of its article during processing or use, it would be obvious to one skilled in the art to incorporate the high viscosity silicone gum as taught by Evans and James in Hartmann’s pre-cursor containing FP-PCM with a reasonable expectation of improving wear or abrasion resistance and durability of Hartmann’s article. Also, since Evans and James teach that the silicone gum emulsions function as slip and anti-mar additives for both aqueous and non-aqueous coatings, it is the Examiner’s position that these silicon gum emulsions would be compatible with Hartmann’s precursor containing FP-PCM (which can be either aqueous or non-aqueous).
Applicant argue that there is no objective reason to combine Oh, Evans, James, Bryant and Hartmann’269 with Hartmann, and even if combined, the combination does not teach substituting mPCM for FP-PCM. Applicant argue that substituting mPCM for FP-PCM goes against Hartmann’s teaching and that modification of Hartmann’s FP-PCM utilizes impermissible hindsight. However, the Examiner already explained in detail the reasons for combining the secondary prior arts. Also, applicant’s argument is unpersuasive because as already discussed above, the Examiner never asserted that it would be obvious to substitute mPCM for FP-PCM. Hartmann itself teaches that its precursor containing FP-PCM further comprises at least one other ingredient, such as mPCM, and Bryant teaches microcapsules containing a temperature stabilizing phase change material, such as nonadecane. Based on the teachings of Hartmann in view of Bryant, it would have been obvious to one skilled in the art to add nonadecane as a mPCM in Hartmann’s precursor containing FP-PCM with a reasonable expectation of stabilizing the temperature of its article.
Applicant then argue that the experimental data in present application demonstrate unexpected results over the cited prior arts. Applicant argue that the data reported in present Tables 2 and 3 show that cosmetic sponges coated according to the claimed invention exhibits improvements in thermos-performance, mechanical behavior and cosmetic transfer efficiency that would not have been predicted from the prior arts. However, applicant’s argument of unexpected superior results is not found to be persuasive. First of all, the coating compositions 1 and 2 (shown in Table 1) represent the preferred embodiments of dependent claims. For example, (i) Silicone Emulsion A (kinematic viscosity of 30 million mm2/s) represents the preferred embodiment of dependent claim 4 (i.e., 4(a) at least one polydimethylsiloxane having a kinematic viscosity of 10-75 million mm2/s) whereas Silicone Emulsion B (kinematic viscosity of at least 120 million mm2/s) represents the preferred embodiment of dependent claim 4(b). (ii) PCM 1, PCM 2 and PCM 3 (microencapsulated paraffin wax) represent the preferred embodiments of dependent claims 3 and 12 while the PCM contents (47.6 wt.% and 43.2 wt.%) represent the preferred embodiment of dependent claim 7. BN (boron nitride having a longest dimension of about 1-3 mm represent the preferred embodiment of dependent claim 6 while the BN content (5.8%) represent the preferred embodiment of dependent claim 8. The silicone content in Coating 2 (15.4%) represents preferred embodiment of dependent claim 9. Thus, applicant’s data to show unexpected results are not commensurate in scope with the broadest claim. See MPEP 716.02(d). Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Secondly, the results shown in present Table 2 with respect to thermal cooling and thermal persistence are not unexpected because Bryant, which teaches the use of instant mPCM, already demonstrates that the article containing the mPCM particles exhibits enhanced thermal stability when subjected to heat or cold (see claim 1) (for example, by selecting an appropriate phase change material for the glove-liner, the glove can remain cool even when handling hot objects – see col.5, lines 3-17). Furthermore, the superior result in terms of “sliding resistance” and “adhesive tack” is also expected because Evans and James already teach that silicone gums (linear chains of poly(dimethylsiloxane) with the kinematic viscosities greater than 1 million mm2/s at 25oC as discussed above) function as slip additives for both aqueous and non-aqueous coatings, which implies less sliding resistance and thus less adhesive tack. Also, even though present Table 3 show additional superior result in terms of make-up absorption and make-up release, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.) See MPEP 2145 (II). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed that an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention."). Therefore, for the reasons stated above, applicant’s argument of unexpected superior results is found to be unpersuasive.
Lastly, applicant argue that Hartmann teaches away from the use of mPCMs and does not provide any working example of its invention with mPCM. However, as already discussed above, Hartmann clearly teaches (see claim 22 and 23) that its precursor containing FP-PCM further comprises at least one other ingredient, which examples include microcapsules comprising phase change material (“mPCM”). Also, as to applicant’s argument that Hartmann does not provide any working examples of its invention with mPCM, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments, Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 UPQ 423 (CCPA 1971). See MPEP 2123 (I) and (II).
Therefore, for the reasons stated above, instant 103 rejections still stand.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
May 23, 2026
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