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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-12, in the reply filed on December 16, 2025 is acknowledged.
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 16, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Considering Claim 4: Claim 4 recites that Y1 is “at least one selected from a hydrocarbon group having one carbon atom, -C6H4-, -0-, -C (=0)-, -S (=0) 2-, or -NH-, provided that a hydrocarbon group is excluded”. The claim therefore both recites a hydrocarbon group as a possible Y1 group and also excludes hydrocarbon groups from the possible Y1 groups. It is not clear from the language if hydrocarbon groups are allowed or excluded by the claim language, and as such, the scope of the claim is indefinite. For the purpose of further examination, the claim will be considered to allow for hydrocarbon groups having one carbon atoms, to provide the broadest possible reasonable interpretation.
Considering Claim 5: Claim 5 recites the limitations "X1" and “R1” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, the claim is being interpreted as depending from claim 4 to provide proper antecedent basis for the variables.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 8, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto et al. (JP 2000-104007) as evidenced by NIST Chemistry WebBook, SRD 69 (https://webbook.nist.gov/cgi/cbook.cgi?ID=C126863&Mask=2000). Note: The machine translation provided by the applicant on July 6, 2023 is being used for JP 2000-104007.
Considering Claims 1, 3, 4, 6, 8, 9, and 11: Goto et al. teaches a fluorene free polymer composition comprising a fluorene free polymer comprising a low-polarity vinyl monomer that is a (meth)acrylic acid ester having a alkyl chain with 4 to 22 carbon atoms and a high-polarity vinyl monomer having a carboxyl group that is preferably (meth)acrylic acid (¶0005-07), where the example uses lauryl methacrylate and methacrylic acid (¶0024); and an acetylenic diol (¶0020), with Surfynol AK-02 (a acetylenic diol) being used in the example (¶0024).
NIST teaches Surfynol AK 02 as having the structure
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.
Considering Claim 5: Goto et al. teaches the low polarity vinyl monomer as being stearyl acrylate (¶0006).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Uesugi (US 2010/0093919) in view of Kawabe et al. (EP 3431517).
Considering Claims 1-6, 8, 9, and 11: Uesugi teaches an oil repellant composition comprising a copolymer comprising a perfluorinated monomer, a polyalkyleneglycol (meth)acrylate/acrylic monomer having a hydrophilic group, and a monomer having a cation-donating group (¶0014) that is preferably dimethylaminoethyl (meth)acrylate (¶0160).
Uesugi does not teach the polymer as being fluorine free. However, Kawabe et al. teaches an replacing perfluorinated monomers with long chain acrylate esters monomers having a C18-30 hydrocarbon group (¶0010). The monomer has the structure
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, where A11 is hydrogen, methyl, or halogen and A12 is a C18-30 alkyl group (¶0027). The polymers are used in oil repellant compositions (¶0002). Uesugi and Kawabe et al. are analogous art as they are concerned with the same field of endeavor, namely oil repellant compositions. It would have been obvious to a person of ordinary skill in the art to have replaced the perfluorinated monomers of Uesugi with the long chain hydrocarbon monomer of Kawabe et al., and the motivation to do so would have been, as Kawabe et al. suggests, fluoroalkyl compounds are an environmental hazard (¶0003-04).
Uesugi does not teach adding an acetylene alcohol to the composition. However, Kawabe et al. teaches adding acetylene alcohol to the oil repellant composition (¶0099-0104). Kawabe et al. teaches the acetylene alcohol as having the same formula as Formula 1 (¶0102). It would have been obvious to a person of ordinary skill in the art to have added the acetylene alcohol of Kawabe et al. to the composition of Uesugi, and the motivation to do so would have been, as Kawabe et al. suggests, to reduce the dynamic surface tension of the emulsion and to allow for the emulsion to permeate into the substrate (¶0099).
Considering Claim 7: Uesugi teaches the hydrophilic monomer as having the structure
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(¶0111).
Considering Claim 10: Uesugi teaches the hydrophobic monomer as being 50 to 80% by weight (¶0109).
Considering Claim 12: Kawabe et al. teaches adding the acetylene alcohol as being added at 0.1-20 parts per 100 parts of polymer (Claim 12).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767