Prosecution Insights
Last updated: April 19, 2026
Application No. 18/042,843

SURFACE TREATMENT LIQUID AND HYDROPHILIZING TREATMENT METHOD

Non-Final OA §102§103§DP
Filed
Feb 24, 2023
Examiner
FOSS, DAVID ROGER
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Tokyo Ohka Kogyo Co., Ltd.
OA Round
1 (Non-Final)
72%
Grant Probability
Favorable
1-2
OA Rounds
3y 6m
To Grant
99%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
78 granted / 108 resolved
+7.2% vs TC avg
Strong +42% interview lift
Without
With
+41.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
38 currently pending
Career history
146
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
50.1%
+10.1% vs TC avg
§102
16.1%
-23.9% vs TC avg
§112
24.2%
-15.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 108 resolved cases

Office Action

§102 §103 §DP
DETAILED ACTION Summary Th is is a non-final office action for application 18/043,843 filed on 24 February 2023. Claims 1-11 are pending. 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. Claim Interpretation Claim 1 recites that the polymerizable compound (A) comprises (a1), (a2), and/or (a3). Because a list is recited which includes “and/or”, it is interpreted that only one of (a1), (a2), (a3) is required. Claim Rejections - 35 USC § 102 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 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. Claims 1-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FUKAGAWA (US-20180142119-A1). The FUKAGAWA (US-20180142119-A1) reference is in the IDS dated 24 February 2023. Regarding Claim 1 , FUKAGAWA teaches a curable composition of a coating containing at least one betaine monomer (Abstract). FUKAGAWA characterizes its betaine structures as a compound with an internal salt which has a positive charge and a negative charge positions not adjacent to each other where a hydrogen atom is not bonded to an atom having a positive charge ([0067]). FUKAGAWA teaches that its betaine monomer is selected from General Formula (IV) to (VI) (Abstract, [0069], [0081], [0091]): where M4 and M5 are both defined as SO3- or COO- ([0076], [0088]). These all satisfy the requirements of the betaine monomer (a1) as is recited by the claim because they all contain an ethylenic unsaturated double bond, and anionic group and a cationic group. The claim recites (a1), (a2), and/or (a3) which is interpreted as requiring only one of those three components. FUKAGAWA teaches examples which only include the (a1) monomer and polyfunctional (meth)acrylamides (Abstract, [0059]) which do not satisfy (a1), (a2) and (a3) which satisfy the claim ( e.g. Example 14 in Table 2). FUKAGAWA does teach other monomers ([0102]) including several hydroxy-functional (meth)acrylates ([0104]) which satisfy the (a3) component of the claim where the polar group is a hydroxy group as well as (meth)acrylic acid ([0104]) which satisfies the (a3) component of the claim where the polar group is a carboxylic group. FUKAGAWA exemplifies hydroxyethyl methacrylate (HEMA) ([0254], Table 2). FUKAGAWA teaches that its composition may further contain a solvent [0134]) and teaches many specific solvents ([0135]). FUKAGAWA exemplifies a methanol solvent ([0213]). FUKAGAWA teaches that its composition can be used as a coating such as a paint, varnish or ink. These uses satisfy the intended use of a surface treatment liquid. FUKAGAWA teaches that its composition preferably contains an initiator ([0112]) which can be a thermal initiator ([0114]). FUKAGAWA exemplifies the thermal initiator V-50 ([0257], Table 2). Regarding Claim 2 , FUKAGAWA teaches the invention of Claim 1 where FUKAGAWA teaches betaine monomers with a quaternary nitrogen cation group (Abstract, See images of general formulas IV-VI in the Claim 1 rejection above). Regarding Claim 3 , FUKAGAWA teaches the invention of Claim 3 where FUKAGAWA teaches the betaine monomers represented by General Formulas IV-VI) where Formula IV and V contain either SO3- or COO- ([0076], [0088]) which are a sulfonic acid anion group or a carboxylic acid anion group, respectively. Regarding Claim 4 , FUKAGAWA teaches the invention of Claim 4. FUKAGAWA teaches that its composition also contains a polyfunctional (meth)acrylamide monomer (Abstract). FUKAGAWA teaches several specific compounds for this component (Formulas I,II,II in Abstract, plus [0059]) which does not satisfy the requirements of (a1), (a2), (a3) as recited by the claim as it does not contain cationic/anionic groups, hydrolyzable silyl groups, or any of the recited polar groups for (a3). FUKAGAWA teaches that its polyfunctional (meth)acrylamide monomer and its betaine monomer together represent 80% or more, preferably 90-99% of the solid content of the composition ([0101]). FUKAGAWA teaches that the ratio of its polyfunctional (meth)acrylamide to its betaine monomer is preferably in a range of 10:90 to 90:10, or more preferably 10:90 to 50:50 ([0099]). These teachings together calculate to an amount of betaine monomer in the solid content of 0.1*0.8 to 0.9*1.0 or 8-90% by mass, preferably 0.5*0.8-0.9*0.99, or 40-89 wt%. The claim recites mol% rather than mass%. If the monomers were of comparable molecular weights, the teachings of FUKAGAWA would largely overlap the range recited by the claim. In Example 14 (Table 2), FUKAGAWA teaches 67 parts by mass ([0213 for “by mass”]) of betaine compound 6 which is represented by Formula (IV-1)([0198])(306.43 g/mol) and 30 parts of compound 1 (structure above [0177])(508.62 g/mol). Using a 1 g per part basis, this calculates to 0.219 mol of the betaine monomer and 0.0590 mol of the polyfunctional (meth)acrylamide for a mol% of the betaine monomer of 78.8 mol% which is within the recited range of 50-99 mol%. Regarding Claim 5 , FUKAGAWA teaches the invention of Claim 1. Claim 5 recites a limitation of an optional component of Claim 1. Only one of (a1), (a2) and (a3) is required (see Claim Interpretation above). FUKAGAWA teaches compositions which contain only the (a1) betaine monomer and polyfunctional (meth)acrylamides which do not satisfy (a1), (a2) or (a3)(Example 14, Table 2). Since this embodiment satisfies Claim 1 without the (a2) component, it also automatically satisfies Claim 5. Regarding Claim 6 , FUKAGAWA teaches the invention of Claim 1. Claim 6 recites a limitation of an optional component of Claim 1. Only one of (a1), (a2) and (a3) is required (see Claim Interpretation above). FUKAGAWA teaches compositions which contain only the (a1) betaine monomer and polyfunctional (meth)acrylamides which do not satisfy (a1), (a2) or (a3)(Example 14, Table 2). Since this embodiment satisfies Claim 1 without the (a3) component, it also automatically satisfies Claim 6. Regarding Claim 7 , FUKAGAWA teaches the invention of Claim 7. FUKAGAWA teaches that its composition also contains a polyfunctional (meth)acrylamide monomer (Abstract). FUKAGAWA teaches several specific compounds for this component (Formulas I,II,II in Abstract, plus [0059]) which does not satisfy the requirements of (a1), (a2), (a3) as recited by the claim as it does not contain cationic/anionic groups, hydrolyzable silyl groups, or any of the recited polar groups for (a3). FUKAGAWA exemplifies this monomer (Table 2). This satisfies the requirement of a polyfunctional monomer (a4) other than the (a1), (a2) or (a3) monomers. Regarding Claim 8 , FUKAGAWA teaches the invention of Claim 1. FUKAGAWA teaches that its solvent is present in 0.1-99 mass% of its composition, preferably 1-90 mass% ([0137]) with the solid content representing the remaining components of the composition. FUKAGAWA teaches that its polyfunctional (meth)acrylamide monomer and betaine monomer are present in amounts of 80-100%, preferably 90-99% the composition ([0101]). This corresponds to broad amount of monomers of 0.8-99.9 mass% which encompasses the range recited by the claim. In the examples, FUKAGAWA teaches adding 400 parts of methanol solvent to the components listed in Table 2 ([0213], Table 2). Most of the examples teach about 100 parts monomers (Table 2), which calculates to about 100/(100+400), or about 20 mass% monomers in the composition. For Example 14, this calculation is 30+67 = 97 parts monomers out of 400 parts solvent 97 parts monomers and 3 parts initiator (Table 2) for a total of 500 total parts. This calculates to 97/500 ≈19.4 mass% which is within the 2-50 mass% range recited by the claim. Regarding Claim 10 , FUKAGAWA teaches the invention of Claim 1. FUKAGAWA teaches a number of coating methods for applying its composition to a base material ([0155]). FUKAGAWA teaches a number of methods for heating the composition including using a blast dryer, an oven infrared dryer or a heating drum ([0156]). Claims 1- 6 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KAMIZONO (US-20200017652-A1). Note on reference : The effective filing date of the claim is treated as 2 8 July 202 1 because applicant cannot rely upon the certified copy of the foreign priority application because a translation of said application has not been made of record in accordance with 37 CFR 1.55. See MPEP § § 215 and 216. If applicant provides a translation of the foreign priority application, the 16 January 2020 publication date of the KAMIZONO reference would still constitute it as prior art under 35 U.S.C. 102(a)(1) because it names an inventor (KAMIZONO) who is not an inventor of the instant application. The 102(b)(1) exception rules could apply because the KAMIZONO reference has a common author/inventor with the instant application. This rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the publication was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1)(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C.102(b)(1)(B). Regarding Claim 1 , KAMIZONO teaches a surface treatment liquid (Abstract) containing a resin (A) and a solvent (S) which includes a constituent unit (a1) that includes a quaternary ammonium cation group and having a sulfonic acid anion at the terminal (Abstract) which is derived from an N-substituted (meth)acrylamide monomer ([0020]). KAMIZONO teaches this its (a1) unit is derived from a monomer having the formula ([0023]) where R5 is hydrogen or methyl, R2-R3 is a hydrocarbon with 1-10 carbon atoms and R1 and R4 are divalent hydrocarbons having 1-10 carbon atoms ([0023]). This structure satisfies the (a1) monomer recited by the claim as it contains a cationic group, an anionic group, an ethylenically unsaturated double bond and its betaine because the atoms with formal charges are not adjacent and the positively charged nitrogen is not bonded to a hydrogen. KAMIZONO exemplifies this monomer ([0079]): The claim only requires one of (a1), (a2) and (a3) (See Claim Interpretation section) so this satisfies the (A) requirement of the claim. KAMIZONO teaches that its composition may contain an arbitrary polymerization initiator ([0061]) which can be a thermal polymerization initiator ([0062]). KAMIZONO teaches many specific azo polymerization initiators ([0061]). Here the specification of the current invention is used as evidence to disclose that the azo polymerization initiators taught by KAMIZONO are thermal initiators (cur spec: [0081]). KAMIZONO exemplifies azo polymerization initiators ([0079]). Regarding Claim 2 , KAMIZONO teaches the invention of Claim 1 where KAMIZONO teaches that its (a1) monomer includes a quaternary ammonium nitrogen cation (Abstract, [0023]. [0079]). Regarding Claim 3 , KAMIZONO teaches the invention of Claim 1 where KAMIZONO teaches that its (a1) monomer contains a sulfonic acid anion group (Abstract, [0023], [0079]). Regarding Claim 4 , KAMIZONO teaches the invention of Claim 1. KAMIZONO teaches that the amount of (a1) monomer is preferably 70 mol% or more ([0027], Claim 4) which overlaps the recited range of 50-99 mol%. KAMIZONO teaches examples that have examples within the recited range such as resin liquid 4 (Table 1) which has 89.3 mol% of the (a1) monomer. Regarding Claim 5 , KAMIZONO teaches the invention of Claim 1. Claim 5 recites a limitation of an optional component of Claim 1. Only one of (a1), (a2) and (a3) is required (see Claim Interpretation above). KAMIZONO teaches compositions which contain only the (a1) betaine monomer is present (Table 1). Since this embodiment satisfies Claim 1 without the (a2) component, it also automatically satisfies Claim 5. Regarding Claim 6 , KAMIZONO teaches the invention of Claim 1. Claim 6 recites a limitation of an optional component of Claim 1. Only one of (a1), (a2) and (a3) is required (see Claim Interpretation above). KAMIZONO teaches compositions which contain only the (a1) betaine monomer is present (Table 1). Since this embodiment satisfies Claim 1 without the (a3) component, it also automatically satisfies Claim 6. Regarding Claim 9 , KAMIZONO teaches the invention of Claim 1. KAMIZONO teaches that its solvent may be water, an organic solvent or an aqueous solution of an organic solvent ([0059]). KAMIZONO exemplifies water (Table 1). Regarding Claim s 10 -11 , KAMIZONO teaches the invention of Claim 1. KAMIZONO teaches applying the surface treatment liquid to the surface of a treatment target ([0065]) to create a coating having a film thickness ([0070]) and then heating the coating ([0073]) before rinsing the film ([0073]) with a rinse liquid ([0072]). KAMIZONO exemplifies this sequence of film application, subjecting to a heat treatment, and rinsing ([0082]). 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. Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over FUKAGAWA (US-20180142119-A1) . Regarding Claim 9 , FUKAGAWA teaches the invention of Claim 1. FUKAGAWA teaches that its solvent can include water, organic solvents ([0135]) and that multiple solvents can be used in combination ([0135]). FUKAGAWA does not exemplify water, exemplifying methanol instead ([0213]), but it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of FUKAGAWA and use a solvent which includes water based on the teachings of the specification. Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over FUKAGAWA (US-20180142119-A1) in view of SENZAKI ( WO-2018110461-A1 ). The SENZAKI (WO-2018110461-A1) reference is used for its 21 June 2018 publication date. Family member US-20190329292-A1, included in the IDS dated 13 October 2023, is used for translation and paragraph numbering. Regarding Claim 11 , FUKAGAWA teaches the invention of Claim 10 above where FUKAGAWA teaches a method of applying a coating film ([0155]) and heating it ([0156]). FUKAGAWA does not teach a ri n se step. SENZAKI, in an invention of a surface treatment liquid comprising a resin and a solvent where the resin contains constituent units with cationic groups and constituent units with anionic groups (Abstract), teaches that after its surface treatment is applied and heated ([0102]), that it may be rinse with a liquid which is similar to the solvent ([0104]). SENZAKI teaches that its rinse step removes resin which has not been attached or bonded to the surface in order to reduce the influence of the resin on the surface property of the treatment target ([0103]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of FUKAGAWA with the teachings of SENZAKI and include a rinse step with a liquid similar to the solvent for the purpose of washing away resin which has not been bonded to the surface to reduce the influence of the resin on the surface property. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . Claim s 1 -2, 5-6 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim s 7 and 11 of U.S. Patent No. 12,281,188 in view of FUKAGAWA (US-20180142119-A1) . Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims in view of FUKAGAWA contain all of the limitations of the instant claims . The mappings of the instant claims to the issued claims are as follows: Regarding Claim 1 , issued Claim 7 recites a surface treatment liquid comprising a polymerizable compound (A), a polymerization initiator (B) and a solvent (S). Issued Claim 7 recites that the polymerizable compound (A) has an ethylenically unsaturated double bond. Issued Claim 1 recites that the polymerizable compound (A) comprises a hydrophilic polymerizable compound (A1) which is a polymerizable betaine monomer : which contains a nitrogen cation and where R is an anionic group. This satisfies the (a1) component of Instant Claim 1. In instant Claim 1, only one of (a1), (a2), (a3) is required (see Claim interpretation section above). Issued Claim 7 does not recite that the polymerization initiator (B) is a thermal polymerization initiator. FUKAGAWA, in an invention of a coating composition with at least one betaine monomer (Abstract), teaches that its composition preferably contains an initiator ([0112]) which can be a thermal initiator ([0114]). FUKAGAWA exemplifies the thermal initiator V-50 ([0257], Table 2). A polymerization initiator which is a thermal initiator is an obvious modification of the issued claims based on the teachings of FUKAGAWA. One would have been motivated to do so because it would be nothing more than using a known compound in a typical manner to achieve predictable results. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). Regarding Claim 2 , Issued Claim 7 already recites that its betaine monomer contains a positively charged nitrogen in a heterocycle ring which includes the recitation of heterocycles which contain quaternary nitrogen cationic groups. Regarding Claim 5 ,instant claim 5 modifies the optional (a2) monomer recited by instant Claim 1. Issued Claim 7 automatically satisfies Instant Claim 5. Regarding Claim 6 , instant claim 6 modifies the optional (a3) monomer recited by instant Claim 1. Issued Claim 7 automatically satisfies Instant Claim 6. Regarding Claim 10 , Issued Claim 11 recites a method of hydrophilizing a surface by applying the surface treatment liquid of Issued Claim 7 to form coating film and then heating the film. This matches the recitation of Instant Claim 10 using the surface treatment liquid of Instant Claim 1. Claim s 1 , 5-6 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 10 of U.S. Patent No. 12, 180 , 317 in view of FUKAGAWA (US-20180142119-A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims in view of FUKAGAWA contain all of the limitations of the instant claims . The mappings of the instant claims to the issued claims are as follows: Regarding Claim 1 , issued Claim 10 recites a hydrophilizing treatment method for hydrophilizing a surface of an object by applying the polymerizable composition according to Issued Claim 1 to form a coating film. Issued Claim 1 recites that polymerizable composition comprises a polymerizable compound (A), a polymerization initiator (B), and a solvent (S) where the polymerizable compound (A) comprises a polymerizable betaine compound (A1) and an adhesive polymerizable compound (A2). Because the polymerizable composition contains a solvent and is being applied to create a film on the surface of an object for the purpose of a hydrophilizing treatment, it can be interpreted as a surface treatment liquid. Issued Claim 1 recites that its initiator is a radical polymerization initiator, so it can be presumed that its monomers contain ethylenically unsaturated double bonds. By the plain meaning of a betaine compound, it has an anionic group and a cationic group on non-adjacent atoms which matches the recitation of the (a1) component of Instant Claim 1. Issued Claim 1 recites that its (A2) monomer contains an adhesive group selected from the group consisting of a hydrolysable silyl group, an amino group, a carboxy group and a hydroxyl group. This would satisfy either the (a2) or (a3) monomers recited by Instant Claim 1. In instant Claim 1, only one of (a1), (a2), (a3) is required (see Claim interpretation section above). Issued Claim 1 does not recite that the polymerization initiator (B) is a thermal polymerization initiator. FUKAGAWA, in an invention of a coating composition with at least one betaine monomer (Abstract), teaches that its composition preferably contains an initiator ([0112]) which can be a thermal initiator ([0114]). FUKAGAWA exemplifies the thermal initiator V-50 ([0257], Table 2). A polymerization initiator which is a thermal initiator is an obvious modification of the issued claims based on the teachings of FUKAGAWA. One would have been motivated to do so because it would be nothing more than using a known compound in a typical manner to achieve predictable results. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). Regarding Claim 5 ,instant claim 5 modifies the optional (a2) monomer recited by instant Claim 1. The recitation of Issued Claim 1 where the (A2) monomer does not contain a hydrolyzable silyl group which satisfies (a2) of instant Claim 1 automatically satisfies Instant Claim 5. Regarding Claim 6 , instant claim 6 modifies the optional (a3) monomer recited by instant Claim 1. The recitation of Issued Claim 1 where the (A2) monomer does not contain a one of the polar group recited for (a3) of instant Claim 1 automatically satisfies Instant Claim 6. Regarding Claim 10 , Issued Claim 10 already recites a method of hydrophilizing a surface by applying the composition of Issued Claim 1, to form a film and heating it. Claim s 1 - 6 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim s 1, 4-5 and 16 of U.S. Patent No. 1 1 , 066 , 531 in view of FUKAGAWA (US-20180142119-A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims in view of FUKAGAWA contain all of the limitations of the instant claims . The mappings of the instant claims to the issued claims are as follows: Regarding Claim 1 , Issued Claim 1 recites a surface treatment liquid comprising a resin (A) and a solvent (S) comprising an organic group containing a quaternary ammonium cation group and a sulfonic acid anion group being derived from an N-substituted (meth)acrylamide . By the plain meaning of quaternary ammonium, it is presumed that none of the four attachments are hydrogen which makes N-substituted acrylamide recited by Issued Claim 1 a betaine monomer. This satisfies the requirements of (a1) recited by Instant Claim 1 of a betaine monomer having an ethylenically unsaturated double bond and anionic and cationic groups. In instant Claim 1, only one of (a1), (a2), (a3) is required (see Claim interpretation section above). Issued Claim 1 does not recite that a thermal polymerization initiator (B). FUKAGAWA, in an invention of a coating composition with at least one betaine monomer (Abstract), teaches that its composition preferably contains an initiator ([0112]) which can be a thermal initiator ([0114]). FUKAGAWA exemplifies the thermal initiator V-50 ([0257], Table 2). A polymerization initiator which is a thermal initiator is an obvious modification of the issued claims based on the teachings of FUKAGAWA as a means of deriving the constituent units from its N-substituted (meth)acrylamide monomers. One would have been motivated to do so because it would be nothing more than using a known compound in a typical manner to achieve predictable results. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). Regarding Claim 2 , Issued Claim 1 already contains the limitation that the cationic group is a quaternary ammonium (nitrogen) cation group. Regarding Claim 3 , Issued Claim 1 already contains the limitation that its (a1) unit contains a sulfonic acid anion group. Regarding Claim 4 , Issued Claim 5 adds the limitation to Issued C l aim 3 that includes Issued Claim 1 that the ratio of constituent unit (a1) to all the constituent units is 70 mol% or above. This largely overlap s the limitation that Instant Claim 4 adds to Instant Claim 1 that the amount of betaine monomer is between 50-99 mol%. Regarding Claim 5 ,instant claim 5 modifies the optional (a2) monomer recited by instant Claim 1. Issued Claim 7 automatically satisfies Instant Claim 5. Regarding Claim 6 , instant claim 6 modifies the optional (a3) monomer recited by instant Claim 1. Issued Claim 7 automatically satisfies Instant Claim 6. Regarding Claim 9 , Issued Claim 16 adds the same requirement that the solvent (S) comprises water than Instant Claim 9 adds to Instant Claim 1. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT DAVID R FOSS whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-4821 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 8:00 - 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, FILLIN "SPE Name?" \* MERGEFORMAT ARRIE L REUTHER can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)270-7026 . 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. /D.R.F./ Examiner, Art Unit 1764 /KREGG T BROOKS/ Primary Examiner, Art Unit 1764
Read full office action

Prosecution Timeline

Feb 24, 2023
Application Filed
Dec 19, 2025
Non-Final Rejection — §102, §103, §DP (current)

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ADHESIVE COMPRISING POLYVINYL ACETATE AND A MIXTURE OF GLUCOSE AND FRUCTOSE
2y 5m to grant Granted Mar 17, 2026
Patent 12569410
PHOTOCURABLE COMPOSITION AND DENTAL PRODUCT
2y 5m to grant Granted Mar 10, 2026
Patent 12570844
THERMOPLASTIC RESIN COMPOSITION
2y 5m to grant Granted Mar 10, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
72%
Grant Probability
99%
With Interview (+41.7%)
3y 6m
Median Time to Grant
Low
PTA Risk
Based on 108 resolved cases by this examiner. Grant probability derived from career allow rate.

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