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
Applicant's election with traverse of Group I, claims 1-10 and 12 and the species of compounds of Formula (a1-vii) and diallylmelamine in the reply filed on 12/26/2025 is acknowledged. The traversal is on the ground(s) that Senzaki describes preferred embodiments inconsistent to what is claimed and the claimed invention exhibits unexpected results. This is not found persuasive because the prior art is not solely limited to preferred embodiments and applicant’s allegation of unexpected results is unpersuasive at least because the claims at issue are not commensurate in scope with the evidence Applicant offers in support thereof. Also, the claims are anticipated by prior art below. Allegations of unexpected results are irrelevant toward anticipation rejections and cannot overcome rejections so based.
The requirement is still deemed proper and is therefore made FINAL.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected process, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/26/2025.
A prior art search was conducted in accordance with Applicant’s species election and prior art was not found that anticipates/obviates the species at issue. Per the protocol of MPEP 803.02, examination of the claims was extended and, as a result, prior art that either anticipates and/or obviates alternative species was found. The prior art search was not extended unnecessarily to cover all nonelected species. Accordingly, prior art rejections pertaining to the newly found species are presented below with any claims not readable on the found species being withdrawn from further consideration.
Claim Rejections - 35 USC § 112
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.
Claims 1, 3-10, and 12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 indicates the nitrogen-containing heterocyclic groups has a valency of n+1 where n is 1 or 2. Ordinarily, valency of organic moieties/radicals denotes points of non-hydrogen attachment (e.g. divalent alkylenes such as ethylene: -CH2CH2-). However, the “n” groups of claim 1 explicitly encompass hydrogen (see RA2 = single bond and RA3 = hydrogen). The contradiction leads to ambiguity as to the intended scope of the claim since it is uncertain whether applicant means to limit (a-2) monomers to those that only possess 2 or 3 hydrogens and/or substituents. For example, in the case of 2-vinyl-4-aminopyridine, is this within (2 valency owing to vinyl and amino substituents) or outside (5 valency owing to vinyl group and 4 “n” groups that are hydrogens and amino) the scope of the claim?
As claims 3-10 and 12 depend on claim 1, they are rejected for the same issue discussed above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogiwara (JP2018-135312A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1 and 4, Ogiwara teaches coating compositions of antibacterial agents (Abstract; Examples) and describes liquids of ethyl acetate / ethanol solvent and resin of the structure:
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(¶ 105-109).
Case law holds that even 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The imidazolium betaine moiety is no different in structure than a constituent unit derived from a betaine monomer having a cationic group, an anionic group, and an ethylenic double bond. The pyridinium moiety is no different in structure than a constituent unit derived from a compound represented by formula (a-2) where RA1 is organic group with ethylenic double bond, X = divalent nitrogen-containing heterocyclic group, n=1, RA2 = C1 alkylene, and RA3 is carboxylic group.
Ogiwara applies the composition to a PET surface (¶ 109), reading on the composition being a “surface treatment liquid”. Alternatively, as there is no perceivable difference in structure between the compositions claimed and those taught by Ogiwara, such compositions are seen to be capable of performing the intended use of a surface treatment liquid.
Regarding Claim 3, the imidazolium nitrogen is construed as a quaternary nitrogen cation group. Alternatively, Ogiwara teaches other examples where betaine monomer contains quaternary nitrogen cationic group (¶ 103).
Regarding Claim 7, Ogiwara teaches the copolymer is obtained from 9.6 pbw vinylpyridine (molecular weight: 105.1), 34.4 pbw vinylimidazole (molecular weight: 94.1), 3.3 pbw acrylic acid (molecular weight: 72.1), and 52.7 pbw butyl acrylate (molecular weight: 128.2) (Table 2), equivalent to the resulting copolymer having 10 mol% of pyridinium (a2) units.
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) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogiwara (JP2018-135312A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Ogiwara teaches coating compositions of antibacterial agents (Abstract; Examples) and describes liquids of ethyl acetate / ethanol solvent and resin of the structure:
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(¶ 105-109).
Case law holds that even 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The imidazolium betaine moiety is no different in structure than a constituent unit derived from a betaine monomer having a cationic group, an anionic group, and an ethylenic double bond. The pyridinium moiety is no different in structure than a constituent unit derived from a compound represented by formula (a-2) where RA1 is organic group with ethylenic double bond, X = divalent nitrogen-containing heterocyclic group, n=1, RA2 = C1 alkylene, and RA3 is carboxylic group.
Ogiwara applies the composition to a PET surface (¶ 109), reading on the composition being a “surface treatment liquid”. Alternatively, as there is no perceivable difference in structure between the compositions claimed and those taught by Ogiwara, such compositions are seen to be capable of performing the intended use of a surface treatment liquid.
Regarding Claim 8, while the content with Ogiwara examples lie outside the range claimed, Ogiwara teaches the compositions can have 1-50 wt% solids (¶ 94), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ogiwara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ogiwara. See MPEP 2123.
Regarding Claims 9 and 10, while organic solvent is used within Ogiwara’s examples, Ogiwara teaches the solvent used can be either aqueous or organic (¶ 78). Accordingly, it would have been obvious to one of ordinary skill in the art to substitute organic solvents with water, thereby predictably affording workable antibacterial/antifungal coatings in accordance with the teachings of Ogiwara. Ogiwara teaches the inclusion of various metal ions (¶ 89-90), construed as electrolytes.
Claim(s) 1, 3, 4, 7-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuguchi (U.S. Pat. No. 4,116,912).
Regarding Claims 1, 3, 4, 10, and 12, Mizuguchi teaches aqueous resin dispersions comprising resins obtained by polymerizing ampho-ionic monomers (Abstract) and describes embodiments where polymers are created with betaine monomer:
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(Col. 6, Lines 4-10). Mizguchi teaches other pyridinium ampho-ionic monomers can be used such as 4-vinylpyridinium ethanecarboxylate (Col. 3, Lines 5-29), consistent with (a-2) where RA1 is organic group with ethylenic double bond, X = divalent nitrogen-containing heterocyclic group, n=1, RA2 = C2 alkylene, and RA3 is carboxylic group. The particular embodiments of Mizguchi’s examples differ only by the use of combinations of such monomers. In this regard, Mizguchi expressly teaches both monomers can be used solely or in combination (Col. 3, Lines 30-31). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize combinations of such monomers, thereby predictably affording workable aqueous compositions for forming durable films in accordance with the teachings of Mizguchi (Abstract).
As the dispersions of Mizuguchi form films on surfaces, they are construed as surface treatment liquids. Alternatively, as there is no perceivable difference in structure between the compositions claimed and those taught by Mizguchi, such compositions are seen to be capable of performing the intended use of a surface treatment liquid.
Regarding Claim 7, Mizguchi teaches the amount of ampho-monomer ranges widely, such as 0.1-50 wt% (Col. 3, Lines 57-60). While not expressing in terms of moles, the other monomers used within the examples are of molecular weights of substantially the same order and thus, it is inferred the mol% values would overlap the broad 0.1-70 mol% range claimed. Also note the pyridinium monomers themselves satisfy all requirements with respect to both (a1) and (a2). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Mizguchi suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Mizguchi. See MPEP 2123.
Regarding Claim 8, Mizguchi teaches 5-100 pbw of resin relative to the water content of aqueous resin dispersion (Col. 5, Lines 15-24; note Mizguchi indicates relative to the “resin content” of the aqueous dispersion, but this is seen to be an obvious error instantly recognizable to one of ordinary skill in the art; “water content” being the appropriate correction). Thus, Mizguchi teaches overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Mizguchi suggests the claimed range. A person of ordinary skill would be motivated to use the claimed
Regarding Claim 9, various salts (potassium persulfate, sodium hydrogensulfate) are used to create dispersion (Col. 6, Lines 35-59), the byproducts of which are seen to be electrolytes.
Allowable Subject Matter
Claims 5 and 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759