DETAILED ACTION
Claims 1-9 were rejected in the Office Action mailed 09/09/2025.
Applicant filed a response, amended claim 9, and added new claims 21-40 on 03/09/2026.
Claims 1-20 are pending, of which claims 10-20 are withdrawn.
Claims 1-9 are rejected.
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
Newly submitted claims 22-29 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Newly submitted claims 22-29 and claims 1-9 lack unity of invention because even though the inventions of these group require the technical feature of:
A treated substrate comprising a fibrous substrate and a treatment composition applied on the fibrous substrate, wherein the treatment comprises a) about 20-99.5% by weigh of a silicone polyether polymer, and b) about 0.5-4% by weight of at least one surfactant selected from at least one cationic surfactant or a mixture of at least one cationic and at least one nonionic surfactant, all based on the total dry weight of the treatment composition; wherein the silicone polyether polymer has about 6 to about 100% by weight of repeat units formed from silicone polyether (meth)acrylate compounds or silicone polyether di(meth)acrylate compounds.
This technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the 35 U.S.C. 103 rejection set forth below.
Newly submitted claims 30-40 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Newly submitted claims 30-40 and claims 1-9 lack unity of invention because even though the inventions of these group require the technical feature of:
A treatment composition applied on a fibrous substrate, wherein the treatment comprises a) about 20-99.5% by weigh of a silicone polyether polymer, and b) about 0.5-4% by weight of at least one surfactant selected from at least one cationic surfactant or a mixture of at least one cationic and at least one nonionic surfactant, all based on the total dry weight of the treatment composition; wherein the silicone polyether polymer has about 6 to about 100% by weight of repeat units formed from silicone polyether (meth)acrylate compounds or silicone polyether di(meth)acrylate compounds.
This technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the 35 U.S.C. 103 rejection set forth below.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22-40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-4, 8, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jogikalmath et al. (US 2014/0170313) (Jogikalmath) in view of Takahashi et al. (US 2020/0377774) (Takahashi).
Regarding claims 1-4 and 8
Jogikalmath teaches a fibrous web impregnated with an acrylate-functionalized silicone polymer such as Silmer ACR D208 or Silmer ACR Di-1508 in order to provide hydrophobicity. The acrylate-functionalized silicone polymer is emulsified with an anionic surfactant. See, e.g., abstract and paragraphs [0024] and [0039-0040]. Applicant’s specification recognizes Silmer ACR D208 and Silmer ACR Di-1508 as suitable polyether silicone polymers possessing 100% by weight of repeat units from formula (I) or formula (II). See, e.g., paragraphs [0011] and [0049] of Applicant’s specification.
Jogikalmath does not explicitly teach the use of at least one cationic surfactant or a mixture of at least one cationic surfactant and at least one nonionic surfactant or the amount of surfactant and silicone polymer present.
With respect to the difference, Takahashi teaches an aqueous emulsion surface treatment comprising a water repellent oil repellent silicone polymer. The water-repellent composition preferably comprises a combination of a nonionic and cationic surfactant in an amount from 0.2 to 10 parts by weight, based on 100 parts by weigh of the polymer. See, e.g., abstract and paragraphs [0093] and [0266-0310]. The nonionic and cationic surfactant is present in an amount of about 0.2% to about 9% by weight (0.2/100=0.2%; 10/110=9%).
Takahashi and Jogikalmath are analogous art as they are both drawn to aqueous emulsion surface treatment comprising a water repellent silicone polymer.
In light of the disclosure as provided by Takahashi, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include 0.2% to 9% of a nonionic and cationic surfactant in place of the anionic surfactant in the composition of Jogikalmath, in order to an emulsified water repellent treatment with predictable success, as Takahashi teaches a combination of nonionic and cationic surfactant is desirable, and thereby arrive at the claimed invention.
It should be noted 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 21
Jogikalmath in view of Takahashi teaches all of the limitations of claim 1 above. It is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Jogikalmath in view of Takahashi meets the requirements of the claimed product, as discussed in item #9 above, Jogikalmath in view of Takahashi clearly meets the requirements of the present claim.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Jogikalmath et al. (US 2014/0170313) (Jogikalmath) in view of Takahashi et al. (US 2020/0377774) (Takahashi), as applied in claim 1 above, and further in view of Atsushi et al. (JP 2016199712A) (Atsushi).
Regarding claims 5-6
Jogikalmath in view of Takahashi teaches all of the limitations of claim 1 above, however does not explicitly teach comonomer units outside of formula (I) or formula (II) in the silicone polyether polymer.
With respect to the difference, Atsushi teaches a non-fluorinated water repellent composition comprising a silicone polymer. The silicone polymer can improve the durable water repellency of the textile product and improve the feel of the resulting textile product by including a glycidyl (meth)acrylate monomer and a dimethylaminoethyl (meth)acrylate monomer. The monomers are present in the silicone polymer in an amount from 1 to 30 mass% based on the total amount of monomer components. See, e.g., abstract and paragraphs [0013-0016], [0040], [0067], [0086-0094], and [0109].
Atsushi and Jogikalmath in view of Takahashi are analogous art as they are both drawn to non-fluorinated water repellent treatments for fabrics.
In light of the motivation as provided by Atsushi, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the silicone polymer of Jogikalmath in view of Takahashi to include 1 to 30 mass% based on the total amount of monomer components of repeat units of a glycidyl (meth)acrylate monomer and a dimethylaminoethyl (meth)acrylate monomer, in order to provide durable water repellency and improved feel to the treated fibrous substrate, and thereby arrive at the claimed invention.
It should be noted 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Jogikalmath et al. (US 2014/0170313) (Jogikalmath) in view of Takahashi et al. (US 2020/0377774) (Takahashi), as applied in claim 1 above, and further in view of Brown et al. (WO 2018085217) (Brown).
Regarding claims 7 and 9
Jogikalmath in view of Takahashi teaches all of the limitations of claim 1 above, however does not explicitly teach the presence of a hydrophobic surface effect agent.
With respect to the difference, Brown teaches a non-fluorinated coating composition comprising a silicone polyether polymer. The coating composition further comprises a hydrophobic surface effect agent such as a fatty acid ester of cyclic or acyclic polyols, fatty esters of polycarboxylic acids, partially fluorinated urethanes, hydrophobic non-fluorinated urethanes, cationic partially fluorinated acrylic polymers or copolymers, fluorinated phosphates, fluorinated ethoxylates, fluorinated or non- fluorinated organosilanes, silicones, waxes, and mixtures thereof. The hydrophobic surface effect agent is present in ana mount from 10 to 70% by weight of the coating. The hydrophobic surface effect agent provides surface effects such as moisture control, strength, anti-slip, antistatic, anti-snag, anti-pill, stain repellency, stain release, soil repellency, soil release, water repellency, oil repellency, odor control, antimicrobial, sun protection, anti-blocking, cleanability, dust resistance, leveling, corrosion resistance, acid resistance, anti-fog, or anti-ice, and similar effects. See, e.g., abstract, page 3, line 2 – page 5, line 2, page 5, lines 7 – page 6, line 15, page 11, line 31 – page, 12, line 25.
Brown and Jogikalmath in view of Takahashi are analogous art as they are both drawn to non-fluorinated water repellent treatment compositions.
In light of the disclosure of Brown, it therefore would have been obvious to one of ordinary skill in the art to include a hydrophobic surface effect agent in the coating composition of Jogikalmath in view of Takahashi in an amount from 10 to 70% by weight, in order to provide surface effects such as moisture control, strength, anti-slip, antistatic, anti-snag, anti-pill, stain repellency, stain release, soil repellency, soil release, water repellency, oil repellency, odor control, antimicrobial, sun protection, anti-blocking, cleanability, dust resistance, leveling, corrosion resistance, acid resistance, anti-fog, or anti-ice, and similar effects as taught by Brown, and thereby arrive at the claimed invention.
Response to Arguments
In view of the amendments to claim 9, the previous 35 U.S.C. 112(b) rejection is withdrawn.
In view of Applicant’s response on page 13 of the remarks filed 03/09/2026, it is agreed Brown does not meet the presently claimed and therefore the 35 U.S.C. 103 rejections over claims 1-9 based on the teachings of Brown are withdrawn.
The previous rejection of claims 1-9 over Jogikalmath et al. (US 2014/0170313) are substantially maintained.
Applicant's arguments filed 03/09/2026 regarding Jogikalmath have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues Jogikalmath and Takahashi utilize different processes and substrates. These differences result in different wetting mechanisms, solution penetration into the substrate, and different surfactant needs. The surfactants employed are used for different purposes. One skilled in the art would recognize anionic surfactants as behaving very differently than cationic surfactants and would not expect them to wet the substrates similarly without undue experimentation. One skilled in the art would not seek to replace the surfactants of Jogikalmath with those of Takahashi with an expectation of full success, without undue experimentation. Remarks, page 14.
The Examiner respectfully disagrees, as follows:
Firstly, the fact remains Jogikalmath and Takahashi are both drawn to aqueous emulsion surface treatments for rendering a fabric substrate water repellent, as discussed in the rejection mailed 09/09/2025 and repeated in the rejection above. In addition, Jogikalmath teaches the fibers of its substrate are natural or synthetic. Paragraph [0011]. Takahashi teaches its substrate utilizes natural or synthetic fibers. Paragraph [0338]. The aqueous emulsion of Jogikalmath teaches the use of an anionic surfactant. Takahashi teaches a preferable surfactant is a combination of a nonionic surfactant and a cationic or anionic surfactant, preferably a cationic surfactant. Since Takahashi teaches a combination of a nonionic surfactant and cationic surfactant is preferable, it follows one of ordinary skill in the art would be motivated to use the combination in place of an anionic surfactant in Jogikalmath, in order to produce an emulsified water repellent treatment for a fabric substrate with predictable success, since Jogikalmath and Takahashi are both drawn to producing aqueous emulsion surface treatments for rendering a fabric substrate water repellent and since both teach their fabric substrates comprise natural or synthetic fibers.
Secondly, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the difference in process and substrate requiring different surfactants for different purposes must be supported by a declaration or affidavit. In other words, Applicant has not provided evidence that a combination of nonionic surfactant and cationic surfactant would not be successful as a surfactant in Jogikalmath. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant further argues applicant has found that the use of cationic surfactants in the claimed aqueous formulation of silicone polyether polymers serves to enhance wetting of the treatment solution into the fibrous substrate and enhance durable water and oil repellency. Remarks, page 14.
The Examiner respectfully disagrees, as follows:
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In other words, the prior art is not required to teach the specific advantage recognized by the invention of the pending claims.
Applicant further argues to arrive at the present invention of claims 5-6, one skilled in the art would need to 1) choose to use silmer monomers in Example 8, although no data has been shown to indicate enhanced performance, 2) select to use the monomers/polymer and surfactant in claimed amount, 3) choose to modify the formulation to change an anionic surfactant for a surfactant of opposite effect (cationic), and then 4) choose to form a copolymer rather than a homopolymer and 5) choose specific comonomers from those claimed in claims 5-6. One of ordinary skill in the art would not know or be motivated to make the number of modifications required to arrive at the claimed invention recited in claims 5-7 and 9, and they would not expect such a combination to work without undue experimentation. Remarks, pages 15-16.
The Examiner respectfully disagrees, as follows:
Firstly, the fact remains Jogikalmath teaches a fibrous web impregnated with an acrylate-functionalized silicone polymer such as Silmer ACR D208 or Silmer ACR Di-1508. For the reasons set forth on pages 14-15 of the rejection mailed 09/09/2025 and repeated above, one of ordinary skill in the art would look to Takahashi to modify the surfactant of Jogikalmath to include about 0.2% to about 9% by weight of the surfactant, in order to produce an emulsified water repellent treatment with predictable success. For the reasons set forth on pages 5-6 of the rejection mailed 09/09/2025 and repeated above, one of ordinary skill in the art would look to Atsushi to modify the silicone polymer of Jogikalmath in view of Takahashi to include 1 to 30 mass% based on the total amount of monomer components of repeat units of glycidyl (methyl)acrylate monomer and a dimethylaminoethyl (meth)acrylate monomer, in order to provide durable water repellency and improved feel to the fibrous substrate.
Secondly, it is unclear why one of ordinary skill in the art would not know or be motivated to make the number of modifications required to arrive at the claimed invention recited in claims 5-7 and 9, and they would not expect such a combination to work without undue experimentation. As discussed above, Jogikalmath teaches a fibrous web impregnated with a silicone polymer that reads on the claimed silicone polyethylene polymer. Takahashi teaches a combination of a cationic and nonionic surfactant is a preferable component for an emulsified water repellent treatment. Atsushi teaches including 1 to 30 mass% based on the total amount of monomer components of repeat units of glycidyl (methy)acrylate monomer and a dimethylaminoethyl (meth)acrylate monomer provides durable water repellency and improved feel. Therefore, it is the Examiner’s opinion one of ordinary skill in the art would be motivated to make these modifications with predictable success.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINE X NISULA whose telephone number is (571)272-2598. The examiner can normally be reached Mon - Fri 9:30 - 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, Marla McConnell can be reached at (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
Prosecution Insights