DETAILED ACTION
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.
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.
The factual inquiries 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.
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.
Claim(s) 1-3, 5-8, 10-17, and 17-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara et al. (JP 2007090653, “Yoshihara” a machine translation of which has been made of record 2/22/23, and is used as the citation copy unless otherwise noted).
Regarding claims 1 and 2, Yoshihara teaches a coatable polymeric composition comprising a first polymeric block (block B, corresponding to claimed block A1, [0009] – [0015], and see p. 6 of untranslated document) and a second polymeric block (block A, corresponding to the claimed block A2, e.g., [0029], [0017]). Yoshihara additionally teaches that the compound B may include component corresponding to claimed compound a1-1 (see, e.g., [0017] and p. 6 of untranslated document showing chemical formula 3). Yoshihara additionally teaches that the ratio of block A to block B (corresponding to the ration of claimed components A2 to A1) may be on the range of from 5:95 to 60:40, thus reading on the claimed range ([0042], [0043], and see [0026], molecular weight distribution of blocks is in the range of 1 to 2). While Yoshihara teaches the inclusions in mol % terms, the amounts described by Yoshihara would read on the majority of the components being block A in terms of mass. The Examiner notes that in the case where the claimed ranges "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). Please see MPEP 2144.05. Yoshihara additionally teaches that the number average molecular weight of the copolymer may be on the range of from 8000 to 50000 ([0017], [0053]).
Regarding claims 3 and 13, Yoshihara additionally teaches that the number value of p, corresponding to the n of claimed formulas a1, may read on the range of from 1 to 70 ([0017], wherein p is from 1 to 4)
Regarding claims 5 and 14, Yoshihara additionally teaches that a component of the A block may read on the claimed a2 component (e.g., ethylhexyl acrylate, [0029]).
Regarding claims 6, 7, 15, and 16, Yoshihara additionally teaches that the copolymer may be a diblock copolymer (and thus that the copolymer comprises greater than 80% of the first and second blocks together, see, e.g., [0009]).
Regarding claims 8 and 17, Yoshihara additionally teaches that the composition may include silicon elements and/or fluorine elements which may be considered to mean that the composition may include silicon elements or fluorine elements, and thus needs not include fluorine elements ([0009]).
Regarding claims 10-12 and 19-21, Yoshihara additionally teaches that the composition may form a coating composition ([0008], [0009]), which may be used to form an article ([0008], [0009]), including a type of resist (in this case, an anti-fouling hardcoat layer that resists fouling, [0008], [0009]).
Response to Arguments
Applicant’s arguments filed 11/11/25 are considered moot in light of the new grounds of rejection, which were necessitated by Applicant’s amendments. Arguments that are relevant to the current rejections are addressed below.
Applicant argues that the cited molecular weights of Yoshihara refer only to fluorinated polymers. But this does not appear to be correct. For example, the portions of p. 6 of the untranslated document corresponding to the cited portions of the translated document (i.e., [0017]) appear to refer to a silicone-based polymer and wherein the block copolymer has a number average molecular weight of from 8,000 to 50,000 (see JP 2007090653, p. 6, chemical formula 3 and [0017]). “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Please see MPEP §2123. The Examiner therefore maintains that Yoshihara teaches that the number average molecular weight of the copolymer may be on the range of from 8000 to 50000 ([0017], [0053]).
Therefore, claims 1-3, 5-8, 10-17, and 19-21 are rejected as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782