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 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 1-4, 6-7, 9, 11-13, 15-17, 20-23, 26, 29-33, 35-44 are pending. Applicant’s previous election of Group I, claims 1-4, 6-7, 9, 11, 13, 15-16, 22-23, 26, 29-33, 35-44 and hydrocarbon backbone/oleophobic coating on both sides species still applies and claims 12, 17, 20-21 remain withdrawn.
Response to Amendment
Applicant’s amendment of 06/02/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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) 1-4, 6-7, 9, 11, 13, 15-16, 22-23, 26, 29-33, 35-44 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Please note- the following scope of enablement rejection is similar to the scope of enablement rejection from the office action of 12/05/24, and is being reintroduced because Applicant has removed the language that was previously introduced into the claims to obviate the scope of enablement rejection (i.e., “each pendant group of the plurality of pendant groups is covalently bonded to at least one backbone wherein each of the pendant groups is chosen from…” emphasis added).
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Claims 1, 15, and 40 recites an oleophobic property (the AATCC property) of the oleophobic coating layer which is only enabled in scope for certain embodiments in the present disclosure (e.g., the examples), while the claims are significantly broader in scope in terms of the type and amount of ingredients used to form the oleophobic coating layer, such that there would be an undue amount of experimentation required to experiment with the full scope of the claimed oleophobic coating to arrive at the embodiment that achieve claimed oleophobic property (i.e., an undue amount of experimentation given the breadth of the type and amount of ingredients within the claimed scope). There does not appear to be any guidance in the present specification regarding how to predict which embodiments within the claimed scope (in terms of type and amount of ingredients) can achieve the claimed property.
The claimed scope would require an undue amount of experimentation because the claims allow for any amount of pendant groups other than those being claimed (claims 1, 15, and 40 recite that the coating layers “consist” of the claimed polymers but then recite the polymers with open ended language, i.e., “comprising” in claims 1 and 15 and “formed by polymerizing” in claim 40). The claims thus allow for the claimed polymer to have any amount of the claimed pendant groups, including extremely small/negligible amounts of pendant groups, and allow for any amount of unclaimed pendant groups (of which there are countless possibilities). Based on the above, one would have to experiment with all possible amounts of the claimed pendant groups and all possible amounts and types of other pendant groups in a given coating composition to determine which embodiments within the claimed scope are able to achieve the claimed oleophobic property. Such an amount of experimentation is unreasonable/undue. Therefore, the claims are not enabled in scope in relation to the oleophobic property of claims 1, 15, and 40.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon applying the Wands factors to claims 1, 15, and 40, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the amount of the claimed pendant groups in the claimed polymer, and the amounts and types of other pendant groups, relative to the much narrower teachings of the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the oleophobic property (the AATCC property) as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various coating compositions from within the claimed scope to see if they meet the property limitation, without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain embodiments, see e.g., the examples, without any corresponding direction provided for achieving the claimed AATCC oleophobic property with the broader coating composition as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
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.
If 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.
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.
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 35 U.S.C. 103 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.
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) 1-4, 6-7, 9, 11, 13, 15-16, 22-23, 26, 29-33, 35-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. 2011/0311769) in view of Xiong et al. (U.S. 2011/0015099) in view of Brennan (U.S. 2010/0226943).
Regarding claims 1-4, 6-7, 9, 11, 13, 15-16, 22-23, 26, 29-33, 35-44, Chen teaches a hydrophobic/antifouling article, which may have a textile substrate (e.g., clothing, [0130], [0161], as in claim 16) of materials such as in claim 6, which may be used in biomedical applications to prevent bioadhesion, and with the starting substrate inherently being hydrophobic or hydrophilic to at least some degree as in claim 13, and with reactive groups being provided on the substrate to promote bonding between the substrate and the hydrophobic coating as in claim 9, and also with the hydrophobic coating have engineered/molecular roughness (considered re-entrant as in claims 11 and 26 because it provides additional roughness) (see abstract, FIG. 1-2, [0008], claim 6, [0028]-[0036], [0052], [0155], [0161]). Chen also teaches that the coating may be applied to both the inside and outside of the textile ([0162]), as in claims 15 and 30, which would have independently been obvious to one of ordinary skill in the art given that the coating provides antifouling/anti-bioadhesion properties and thus all sides would benefit from such properties. Similarly, the amount/thickness of antifouling/antibioadhesion coating applied to the respective surfaces would have been obvious to adjust (to values within claim 29) as part of optimizing the degree of antifouling/antibioadhesion being provided by the coating to the article (this is further obvious in view of Brennan as discussed below).
Chen does not disclose the particular material used for the hydrophobic anti-bioadhesion coating. However, Xiong teaches a hydrophobic/antifouling coating that is biocompatible (i.e., suitable to use in biomedical applications like in Chen) and also prevents bio-adhesion and may be used in medical articles (see abstract, [0005], [0018], [0020]) that comprises a hydrocarbon polymer backbone (by polymerizing unsaturated/acrylate groups, as in claims 1 and 15, the backbone forms a saturated hydrocarbon chain) having the claimed pendant groups (e.g., formed by [tris(trimethyl)siloxysilyl]propyl methacrylate, creating the pendant group of claim 1 with the third linking group in claim 4, as in claims 2-4, see [0033]-[0034]) and also comprising crosslinking groups (e.g., methacryloxypropyltrimethoxsilane, and hydroxyethylmethacrylate, [0036]-[0038]) thus curing to form crosslinks (as in claims 43 and 44) across multiple backbone polymer chains, as in claim 7, and results in branching as in claim 26 (see abstract, [0028]-[0038]).
More specifically, one embodiment in Xiong forms the polymer with the same repeating units as in the present example (see below from Xiong, page 7, showing the same unpolymerized reactants as claimed, e.g., tris(trimethylsiloxy)silyl propyl methacrylate, methacryloxypropyltrimethoxsilane, and hydroxyethylmethacrylate, via a method as in claim 31, 33).
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Xiong also discloses that the first reactant (tris(trimethylsiloxy)silyl monomer) is a hydrophobic monomer that contributes to the hydrophobic properties of the polymer ([0032]-[0033]) and the second reactant (trimethoxysilane monomer/hydroxyethyl monomer) are a crosslinking monomer that increases mechanical strength ([0036]-[0038]). Thus, the relative amount of these monomers in the formation of the overall polymer is an art-recognized result effective variable that would have been obvious to adjust, including to the ratio of hydrophobic/crosslinking monomers in claims 36-39 and 41-42, as part of optimizing the degree of hydrophobicity and mechanical strength desired for the final coating.
In addition to the ratio of monomers used in the present examples being obvious based on result effective variable, Xiong also teaches that the ratio may be 10:1 (“10:1:0”, [0039], with the last zero in the ratio referring to an optional third monomer in Xiong) which matches the ratio in Example 1 of the present application and claims 36-39 and 41-42.
Xiong does not disclose the ratio of trimethoxysilane monomer/hydroxyethyl monomer but discloses that a combination of crosslinkers may be used ([0038]) such that one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio of the two crosslinking monomers absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
It would have also been obvious to use ethoxy groups instead of the methoxy groups illustrated above, because both methoxy and ethoxy groups are interchangeable in Xiong as hydrolyzable groups. Furthermore, the method limitations are given limited patentable weight. “[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 hydrophobic coating of Xiong as the hydrophobic coating generally called for in Chen because Xiong teaches that it is suitable for use with medical applications to provide anti-bioadhesion as sought by Chen.
Accordingly, modified Chen renders obvious a hydrophobic coating formed of a polymer that overlaps the same polymer in the present examples (via Xiong), applied to a fabric substrate from Chen as in the present examples, which inherently achieves the oleophobicity properties as in the present examples (and as in claims 1, 15, 32, 35, and 40). Thus, these overlapping embodiments of modified Chen would have the same oleophobicity property as the overlapped examples of the present application (and within the scope of the AATCC property being claimed).
Regarding claims 22 and 23, fluorine is not required in the fabric or coating layer of modified Chen.
Regarding the thickness of claim 29, this is already obvious as discussed above, but Brennan additionally teaches an antifouling/antibioadhesive coating for textiles and medical articles with an engineered roughness and a hydrophobic coating (see abstract, [0008], [0010], [0190], [0198]-[0199]) and teaches that a suitable thickness of the hydrophobic polymer coating overlaps claim 29 ([0111]), such that it would have been obvious to have used such a thickness for the hydrophobic coating in Chen because Brennan teaches that it is a suitable thickness for the same desired application (antifouling/hydrophobic/anti-bioadhesion medical articles).
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.
Applicant argues that Xiong discloses too many polymers to render obvious the claimed polymers that produce the claimed property when applied to a fabric substrate. This is not true, and the overlapping scope of Xiong properly renders obvious the claimed scope of polymer. The lists of possible hydrophobic and crosslinking monomers in Xiong are not so long as to render the claimed monomers non obvious. Overlapping teachings between the prior art and the claims is a proper basis for prima facie obvious.
It is further noted that Xiong discloses the claimed monomers with more specificity that merely listing them amongst many others. The claimed monomers are specifically illustrated (see below) in the examples. Although the disclosed lists in Xiong are narrow enough to render obvious the claimed monomers on their own, even if they were not (arguendo), then the more specific and exemplary disclosures in Xiong for the claimed monomers makes the claimed monomers all the more obvious because exemplified monomers are considered preferred.
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Applicant then argues that the lack of disclosure of oleophobicity in Xiong negates the obviousness. In this regard, Applicant states the following:
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This is an incorrect statement of law. It is one of the most well established and foundational aspects of US patent law that “SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY” and “INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE RELEVANT TIME” (see MPEP 2112 I and II, capitalization from the MPEP). This is the very basis of inherency and if these principals did not apply (as Applicant asserts) then inherency would never be possible.
Applicant cites In re Rijckaert to supposedly support this mistaken interpretation, however, Applicant is misinterpreting this case. When “what is not known” is mentioned in Rijckaert in the context of inherency, it is mentioned with respect to a structural limitation that is missing in the prior art, not with respect to a property limitation that is missing in the prior art. In other words, Rijckaert found a lack of inherency because the prior art did not disclose/teach one of the structural aspects necessary to inherently achieve the property and thus that structural aspect was “not known” in the prior art and could not support the inherency rationale. In this application, every monomer as claimed and their amounts as claimed are rendered obvious in the prior art. Therefore, the claimed article is not “not known” in the prior art.
Furthermore, to the extent Applicant is arguing that an inherency rejection cannot be made based on a combination of references, attention is directed to MPEP 2112 [R-3] which states that "[T]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir.1995).” Further attention is directed to MPEP 2112 V which states that "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same" The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596(CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977))". Finally, "[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)", (See also MPEP 2112.01, I & II.).
Furthermore, regarding using inherency in a 103 rejection, if, as Applicant appears to argue, inherency could not be relied upon in a 103 rejection, a completely obvious (hypothetical) invention would otherwise become patentable merely by the inventors measuring a property of the invention in a unique way that could only be addressed via inherency. Such a legal interpretation of inherency would bypass the non-obviousness (103) requirement for patentability. For example, arguendo, if a hypothetical invention was directed to a composition that was not anticipated, but clearly obvious over the prior art, the inventors could simply measure a property of the composition in a unique way (e.g., measure the property at some esoteric temperature) in order to obtain a patent. In this case, even though every aspect of the hypothetical composition was obvious over the prior art, including the aspects that result in the esoteric property, the invention would be patentable merely because the esoteric property of the invention was measured in a way that could only be addressed via inherency. The discussion above in this paragraph was purely for the sake of legal argument and was based on a hypothetical composition (not Applicant’s composition).
Applicant then mistakenly cites MPEP 716.02(e)(III) as being related to evidence against inherency. Actually, this section of the MPEP has to do with a 1.132 declaration used for “Comparison With Closest Prior Art” in the context of “Allegations of Unexpected Results” (see MPEP 716.02 and 716.02(e)).
Applicant then argues that despite their evidence against, the Examiner “has not rebutted this evidence.” This is false and Applicant’s declaration was addressed/rebutted in the previous office action. Applicant argues that the declaration shows that the polymers of Xiong would not necessarily have the claimed property, but this is only if they are applied to smooth glass (the declaration showed that the polymer has the property if applied to fabric but not to glass). Thus, the declaration completely ignores the teachings of the combined references which indicate that use on a fabric substrate (as in the present invention) was entirely obvious in medical applications (i.e., bandages) to provide anti-bioadhesion (i.e., to prevent the bandage from sticking to the wound when removed).
Applicant also repeatedly describes the rejection as “cobbled together” and cites many cases describing the need for motivation from the prior art to support a rejection. Curiously, Applicant then states that they “do not address the merits of this purported motivation.” The motivation to combine Chen with Xiong is sound and well articulated. It is not merely that Chen seeks hydrophobic coatings and Xiong provides one (although that alone would be sufficient), it is additionally that Chen seeks a coating for medical applications to provide anti-bioadhesion and Xiong provides even this more specific functionality. Thus, there is more than enough motivation in the prior art and the rejection is not based on hindsight.
Applicant then again argues that the claimed properties would not be expected/predicted in the prior art, which is not required as explained above (prior art does not need to explicitly recognize the claimed properties when they are inherent).
Applicant then argues that the reasonable expectation of success aspect of patent law requires that the claimed property is reasonably expected (i.e., explicitly predicted) in the teachings of the prior art. This is again an incorrect statement of law. Reasonable expectation of success is related to how the references are being combined, not the resulting inherent properties. Here, Chen seeks a hydrophobic coating and Xiong provides one. There is no doubt as to the “success” in applying a coating onto fabric. One just applies the coating onto the fabric and then cures/crosslinks it. Interpreting the “expectation of success” requirement to extend to the claimed property (i.e., to require that the prior art explicitly expects/predicts the claimed property) would negate the entire inherency aspect in patent law (see above, “SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY” and “INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE RELEVANT TIME”).
Applicant also argues that the references do not use the claimed property (oleophobicity) as a criteria for selecting the polymer. This is not required as explained above. The prior art may arrive at the claimed invention for a different reason (i.e., hydrophobicity and anti-bioadhesion).
Applicant then argues that all the result effective variable rationales in the office action are improper without explaining why. Each of such rationales is proper and also supported by an alternative rationale (i.e., overlapping ranges). For example, the thickness as claimed is a result effective variable (based on the degree of antifouling/hydrophobic properties imparted to the fabric) and is also overlapped based on Brennan. Likewise, the relative amount of monomers is a result effective variable based on the functionality provided by the respective monomers (hydrophobicity vs mechanical strength) and is also obvious based on overlapping ranges.
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.
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).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights