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, 6-13, 15-23, 26, 29-35 are pending. Applicant’s previous election of Group I, claims 1-4, 6-11, 13, 15-16, 22-23, 26, 29-35 and hydrocarbon backbone/oleophobic coating on both sides species still applies and claims 12, 17-21 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/18/25 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) 1-4, 6-11, 13, 15-16, 22-23, 26, 29-35 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.
Claims 1 and 15 recite OH pendant groups which is not supported because these are only disclosed as crosslinking groups.
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) 1-4, 6-11, 13, 15-16, 22-23, 26, 29-35 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.
Claims 1 and 15 recite OH pendant groups which is vague because it is unclear if this implies that the OH groups are directly attached to the backbone or if they may be present via a linking groups (as in, e.g., claim 31, where the OH group is present via an ethylene linking group).
The OH groups are also vague because the claims are directed to a final product and yet the OH groups would be reactive/crosslinking groups that are only present in the coating composition prior to it curing (with such OH groups condensing/curing/crosslinking under ambient conditions). It is therefore unclear if the claims are literally directed to an article only for the brief period of time between when the coating is applied and when the coating is cured, or if the claims are instead intended to be directed to the article comprising the cured coating (in which case the layer could be recited as being “formed from” a polymer having the OH groups).
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.
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, 6-11, 13, 15-16, 22-23, 26, 29-35 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, 6-11, 13, 15-16, 22-23, 26, 29-35, 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 via the claimed linking groups (e.g., formed by [tris(trimethyl)siloxy]vinylsilane, creating the last pendant group in the markush group of claim 1 with an alkyl linking group in claim 3, and/or [tris(trimethyl)siloxysilyl]propyl methacrylate, creating the last pendant group in the markush group of claim 1 with the fourth linking group in claim 4, as in claims 2-4, see [0033]-[0034]) and also comprising a crosslinking group which may be, e.g., a unsaturated carbon-carbon group ([0038]) thus forming the first crosslinking moiety of claims 8-10 (when, e.g., two vinyl unsaturated groups are polymerized) that crosslinks multiple backbone polymer chains, as in claims 7-10, and results in branching as in claim 26 (see abstract, [0028]-[0038]). The last crosslinking group as in claim 8 and 10 would also be formed when a combination of crosslinkable groups from formula II ([0033]) are used with one crosslinkable group having R10-R12 as alkoxy groups and one crosslinkable group having R10 as an alkoxy group and R11-R12 as methyl groups.
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 used in the present examples, e.g., tris(trimethylsiloxy)silyl propyl methacrylate, methacryloxypropyltrimethoxsilane, and hydroxyethylmethacrylate), when R is the first option illustrated below, to form the same resulting polymer as in the present examples, and from monomers and via a method as in claim 31, 33, and 34).
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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) is 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 the present examples, 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.
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, and 35). 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. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues, via the accompanying declaration, that the coating of Xiong only produces oleophobic effect if applied to fabric, not on glass. However, this is piecemeal analysis. The rejection is not based only on Xiong but instead is based on using the explicitly hydrophobic coating from Xiong as the hydrophobic coating in Chen applied to a fabric substrate as taught by Chen. Thus, the motivation in the references is based on expected hydrophobicity of the coating from Xiong (as sought by Chen) and having applied the hydrophobic coating from Xiong to the fabric of Chen (which is obvious based on the explicit teachings of the references), the resulting article would have oleophobic properties as claimed. The declaration and arguments do not invalidate this combination of references because they only show that oleophobic properties are not present if the coating is applied to glass, which is not the basis for the rejection. Also, the prior art does not need to “expect” such oleophobic properties. It is sufficient for such oleophobic properties to be inherent via the application of the coating onto the fabric for an alternative motivation (i.e., hydrophobicity) disclosed by the prior art. As explained in the rejection above, the coating and fabric of the prior art overlapping the same coating and fabric as in the present examples (and thus support the inherency rationale). Such unexpected oleophobic properties may form the basis for unexpected results, but the claims are not commensurate in scope with the examples based on the broader type and amount of ingredients and types of fabric substrate in the claims as compared to the examples.
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.
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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