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 .
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 1-11 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). Kawabe et al. teaches adding the acetylene alcohol as being added at 0.1-20 parts per 100 parts of polymer (Claim 12).
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).
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the proposed modification of Uesugi with Kawabe et al. would eliminate an essential component of Uesugi and change the mode of operation is not persuasive. While the fluorine containing monomer of Uesugi is required in the invention to provide oil repellency to the polymer (¶0017-19), the combination of Uesugi and Kawabe et al. show that the same effect can be provided by the non-fluorinated monomer of Kawabe et al. Kawabe et al. teaches that oil repellency can be provided by a long chain acrylate ester (¶0031), and this effect can be obtained without the use of environmentally harmful fluorine compounds (¶0003-04). As such, the proposed modification maintains the function of the fluorinated monomers, and thus is not changing the mode of operation of the polymer.
B) The applicant’s argument that the proposed modification would render the polymer unsuitable for its intended purpose is not persuasive. Both the polymer of Uesugi and Kawabe et al. are intended for providing soil release to a textile material. Kawabe et al. teaches that oil repellency can be provided by a long chain acrylate ester (¶0031), and this effect can be obtained without the use of environmentally harmful fluorine compounds (¶0003-04). As both the fluorinated and non-fluorinated monomers can be used for provided oil repellency in soil release compositions, the substitution of one for the other would still allow for the polymer to be used in soil release agents.
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 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.
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
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